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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

24 April 2018 (*)

(EU trade mark — Opposition proceedings — Application for EU word mark ZOOM — Earlier EU figurative and word marks ZOOM — Relative ground for refusal — Likelihood of confusion — Similarity of goods — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑831/16,

Kabushiki Kaisha Zoom, established in Tokyo (Japan), represented by M. de Arpe Tejero, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, K. Sidat Humphreys and D. Walicka, acting as Agents,

defendant,

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

Leedsworld, Inc., established in New Kensington, Pennsylvania (United States),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 September 2016 (Case R 1235/2015-5) relating to opposition proceedings between Kabushiki Kaisha Zoom and Leedsworld,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 28 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 13 March 2017,

further to the hearing on 9 January 2018,

gives the following

Judgment

 Background to the dispute

1        On 24 April 2013, Leedsworld, 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 trade mark was sought for the word sign ZOOM.

3        The goods in respect of which registration was sought are in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organising audio, computer, connection, electrical, electronic, power, printer, stereo and video cables; carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; and battery chargers and power banks; none of the aforementioned products relating to music technology products’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 31/2004 of 11 June 2013.

5        On 10 September 2013, the applicant, Kabushiki Kaisha Zoom, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based, first, on the EU word mark ZOOM, registered on 22 December 1999 under No 227157, covering goods in Classes 9 and 15 and corresponding, for each of those classes, to the following description:

–        Class 9: ‘Apparatus for reproduction and recording of sounds, namely voice frequency transmitting apparatus, portable communicating apparatus, sound recording apparatus, public address systems, amplifiers; synchronising and auto locating systems for video tape recorders (VTR), audio tape recorders (ATR) and musical instruments; audio visual teaching apparatus, namely apparatus for developing, printing, enlarging and finishing of photographs, with the exception of such which have the capability of magnifying or enlarging static or moving images; computers and LSI-circuits (large scale integrated-circuit)’;

–        Class 15: ‘Electronic musical instruments’.

7        The opposition was based, second, on the EU figurative mark registered on 28 April 2008 under No 4888749 and corresponding to the following sign:

8        That mark covers goods in Classes 9 and 15 and corresponding, for each of those classes, to the following description:

–        Class 9: ‘Programmed-data-carrying magnetic discs, downloadable computer program; magnetic disks, optical disks, magneto-optical disks, CD ROMs, digital versatile disk- ROMs, magnetic tapes carrying information of images and/or text data of magazines, books, newspapers, maps and photographic images; all the aforesaid goods being intended for use in connection with musical instruments and sound recording apparatus, and not relating to telephony; laboratory apparatus and instruments; measuring or testing machines and instruments; power distribution or control machines and apparatus; rotary converters; phase; batteries and cells; electric or magnetic meters and testers; electric wire and cables; photographic machines and apparatus; cinematographic machines and apparatus; optical apparatus and instruments; spectacles (eyeglasses and goggles); lifesaving apparatus and equipment; encoded magnetic cards, magnetic sheets, tapes, magnetic compact discs, record; metronomes; electronic circuits and CD-ROMs recorded automatic performance programs for electronic musical instruments; mouse pads for electronic computers; magnetic tapes; electronic machines and apparatus, namely multi-track recorders, hard disc recorders, rhythm machines, drum machines; and sound processors, effect processors, and their parts; electronic publications; ozonisers (ozonators); electrolysers (electrolytic cells); programmed-data carrying electronic circuits, magnetic tapes for computers for video game apparatus for commercial use; sports training simulators; vehicle drive training simulators; electric flat irons; electric hair curlers; electric buzzers; vehicle breakdown warning triangles; luminous or mechanical road signs; fire boats; fire alarms; gas alarms; anti-theft warning apparatus; gloves for protection against accident; fire extinguishers; fire hydrants; fire hose nozzles; sprinkler systems for fire; fire engines; cigar lighters for automobiles; protective helmets; fireproof garments; dust masks; gas masks; welding masks; magnetic cores; resistance wires; electrodes; exposed cinematographic firms; exposed slide films; slide film mounts; receded video discs and video tans; vending machines; coin-operated gates for car parking facilities; cash registers; coin counting or sorting machines; photocopying machines; manually operated computing apparatus; weight belts (for scuba diving); wetsuits (for scuba diving); inflatable swimming floats; protective helmets for sports; air tanks (for scuba diving); swimming flutter boards; regulators (for scuba diving); diving machines and apparatus (not for sports); electric arc welding machines; electric, welding apparatus; programmed-data-carrying electronic circuits, magnetic disks, optical disks, magneto-optical disks, CD-ROMS, digital versatile disk-ROMs, magnetic tapes for computers for video game apparatus for personal use; memory cards for personal use; consumer video games; electronic circuits and CD-ROMs recorded programs for hand-held camas with liquid crystal displays; electric door openers; magnets; permanent magnets; railway signals; marker buoys; cigar lighters for motorcycles; ear plugs’;

–        Class 15: ‘Turning apparatus for music instruments; musical instruments; musical performance auxiliaries, namely, multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic-effects pedals, guitar effect processors, tuning forks’.

9        The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009 (now, respectively, Article 8(1)(b) and Article 8(4) and (5) of Regulation 2017/1001).

10      After Leedsworld requested, on the basis of Article 42(2) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), that the applicant prove that genuine use had been made of the earlier marks, the Opposition Division, by decision of 30 April 2015, upheld the opposition in part in respect of the goods in Class 9 corresponding to the following description: ‘Carrying cases for electronic equipment, namely, media players and hand-held devices; stands for electronic equipment, namely, media players and hand-held devices; none of the aforementioned products relating to music technology products’.

11      However, the application for registration of the contested mark was upheld for the remaining goods, since they were found to be different to the goods covered by the earlier marks in respect of which genuine use had been established.

12      On 29 June 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.

13      By decision of 7 September 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First of all, it held, as regards genuine use of the earlier marks, that the evidence submitted showed that sales of goods covered by the earlier trade marks had taken place in the European Union during the five-year period from 11 June 2008 to 10 June 2013 (‘the relevant period’). Although that evidence did not show a significant volume of sales, it did, however, establish that there had been continuous promotion of the goods, mainly to a specialist audience, with the signs in question having been used as registered.

14      The Board of Appeal took the view that proof of use of the earlier marks had been adduced only in relation to certain goods, namely, first, ‘handy recorders’, that is, hand-held audio/sound recording devices, second, ‘recording devices for live performance recording, interfacing, controlling and sampling’ and, third, ‘guitar effects devices (stomps, pedals) including acoustic, bass and electric guitars’.

15      By contrast, the Board of Appeal considered that, contrary to what the applicant claimed, proof of genuine use had not been established in relation to ‘photographic machines and apparatus; cinematographic machines and apparatus’, ‘portable communicating apparatus’, ‘power distribution and control machines apparatus (AC adapter) and electric wire and cable’ or ‘batteries and cells’.

16      Next, the Board of Appeal took the view that the evidence submitted was not sufficient to establish either the enhanced distinctive character of the earlier marks under Article 8(1)(b) of Regulation No 207/2009, or their reputation under Article 8(5) of that regulation.

17      Lastly, the Board of Appeal upheld the Opposition Division’s analysis as regards the existence of a likelihood of confusion in respect of the goods in question found to be similar, given the similarity between the marks at issue, the nature of the relevant public, which includes the general public deemed to display an average degree of attention, and the comparison of the goods, in particular in terms of their possible complementarity.

 Forms of order sought

18      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the application for registration of the contested mark for goods in Class 9 in its entirety;

–        order EUIPO to pay the costs.

19      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

20      After filing the action, the applicant requested, on 16 December 2016, pursuant to Article 66 of the Rules of Procedure of the General Court, confidential treatment of the documents it had submitted, namely the application and the annexes thereto, since they disclosed important information relating to its commercial activity and information concerning third parties.

 Law

 The request for confidential treatment

21      As regards the request for confidential treatment made by the applicant, it should be noted that, in accordance with Article 66 of the Rules of Procedure, the party making a request for anonymity and the omission of information vis-à-vis the public must give reasons for that request.

22      In the present case, in addition to the fact that it does not identify the elements in the application and its annexes that should, in its opinion, be treated as confidential, the applicant has not stated any reasons to support such a request.

23      The Court is not able, by itself, to discern the reasons why this request might be justified.

24      As a result, the Court rejects the request for confidential treatment of the application and its annexes, inasmuch as they are said to disclose essential information on the business activity of the applicant and information concerning third parties (see, to that effect, order of 30 November 2016, Pico Food v EUIPO — Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11 DEP, not published, EU:T:2016:750, paragraphs 9 to 13).

 The head of claim seeking rejection of the application for registration of the contested mark in respect of the goods in Class 9

25      It is clear from settled case-law that, in an action before the Court against the decision of a Board of Appeal of EUIPO, the latter is required, under Article 65(6) of Regulation No 207/2009 (now, Article 72(6) of Regulation 2017/1001), to take the necessary measures to comply with the judgment of the Court. Accordingly, it is not for the Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (see judgment of 11 July 2007, El Corte Inglés v OHIM (PiraÑAM diseño original Juan Bolaños), T- 443/05, EU:T:2007:219, paragraph 20 and the case-law cited). Therefore, the applicant’s head of claim seeking rejection of the application for registration of the contested mark for the goods in Class 9 is inadmissible.

 Substance

26      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That plea consists of four parts. First, the applicant considers that the Board of Appeal made an error of assessment with regard to the proof of genuine use of the earlier marks in respect of several categories of goods. Second, on the basis of that error of assessment, the Board of Appeal wrongly restricted the scope of protection conferred by those marks. Third, the Board of Appeal incorrectly assessed the similarity of the goods in question. Fourth, the overall likelihood of confusion was also incorrectly assessed.

27      The Court considers it appropriate to deal with the first and second parts together on account of the link between them.

 The first and second parts, alleging an error of assessment of the proof of genuine use in respect of several categories of goods covered by the earlier marks and the protection conferred by those marks

28      The applicant claims that the Board of Appeal wrongly concluded that there was no proof of use of the earlier marks in respect of several categories of goods, which led to a restriction of the scope of protection conferred by those marks. However, there is ample evidence of the use made of the earlier marks demonstrating a serious attempt to develop a market for categories of goods other than those accepted by the Board of Appeal in the contested decision.

29      Use made of the earlier marks has been established for ‘power distribution and control machines apparatus (AC adapter) and electric wire and cable’ because they, in particular AC adapters which supply a suitable and sufficient power supply for the operation of electronic devices, are not merely supplied as the accessories of other goods, but are also marketed independently as finished products, in particular to consumers who already have a device sold under one of the earlier marks, with the result that are not merely ancillary to the applicant’s main business activities. Moreover, the volume of sales of those goods is high. Accordingly, the use made of the earlier marks, in so far as they cover those goods, should be considered sufficient to constitute genuine use.

30      The applicant supports its argument by submitting a list of goods sold with an AC adapter and a USB cable both clearly bearing the figurative mark ZOOM, and a selection of invoices indicating that, in total, 3 286 AC adapters were sold as part of accessory packs or with the applicant’s devices in the United Kingdom and Germany during the relevant period. Accordingly, during that period, the value of sales of AC adapters and electric wire and cable in the United Kingdom came to EUR 41 962 and not GBP 1 000 as was stated in the contested decision. Genuine use made of the earlier marks in respect of electric wire and cable is said to be established by the evidence submitted concerning the sale of the accessory packs ‘APH-1’, ‘APH-2n’, ‘APQ-3HD’, ‘APH-4n’ and ‘APQ-2HD’ which include a USB cable, an AV cable and microphone cables.

31      The Board of Appeal also allegedly failed to take account of an advertisement and catalogue from 2013 presenting a new product — the ‘Q4 Handy Video recorder’ — which included a rechargeable lithium-ion battery bearing the earlier EU figurative mark ZOOM, thus establishing use made of that mark in respect of ‘batteries and cells’.

32      The applicant also submits that, contrary to the finding made by the Board of Appeal, proof of genuine use of the earlier marks in respect of ‘cameras; photographic machines and apparatus; cinematographic machines and apparatus’ and ‘portable communicating apparatus’ had been adduced in view of the sales of the ‘Handy Video Recorder ZOOM Q3HD’, which makes it possible, on the one hand, to record images and sounds and, on the other, to post videos directly on the internet through a computer.

33      The applicant claims that the Board of Appeal’s incorrect assessment of the proof of use led to the registration of the mark applied for in respect of goods that are in close competition with those covered by the earlier marks.

34      EUIPO submits in response, as regards proof of genuine use, that ‘sound recording apparatus; voice frequency transmitting apparatus; portable communicating apparatus; cinematographic machines and apparatus; optical apparatus and instruments; photographic machines and apparatus’ are not categories that are sufficiently precise and narrow because each one includes a wide array of disparate electronic equipment. In particular, the ‘handy recorders’ are reasonably sophisticated video and recording devices which, because they are small, portable and hand-held, are apt for recording concerts or other impromptu events, and constitute only a subcategory of the apparatus and instruments covered by the earlier marks and included in Class 9.

35      EUIPO also submits that, although the applicant’s devices can be connected to a computer, they are not, however, ‘manually operated computing apparatus’ since they do not accept, store, manipulate and generate files like a computer using software.

36      As regards ‘multi-track recorders, hard disc recorders, rhythm machines, drum machines; and sound processors, effect processors, and their parts’, the applicant merely concluded, without offering any specific explanation, that use of the earlier marks in respect of the ‘R8’, ‘R16’ and ‘R24’ multi-track recording devices proves genuine use for all of the goods in that category. In any event, even if it were found that proof of genuine use of the earlier marks had been established for that category of goods, it would have no bearing on the assessment of the similarity of the goods covered by the marks at issue.

37      With regard to ‘batteries and cells’, EUIPO challenges the claim that genuine use of the earlier marks has been established on the basis of only one advertisement and one catalogue for a handy recorder with a rechargeable battery and the fact that the devices marketed by the applicant operate with batteries.

38      As for ‘power distribution or control machines and apparatus’, EUIPO submits that, in so far as AC adapters have a limited function, they form only a subcategory.

39      With regard to ‘AC adapters; electric cables’, EUIPO notes that sales of a main product with its accessories serve to preserve the rights of the proprietor of an EU trade mark covering that product and its accessories. In that regard, it acknowledges that the Board of Appeal made an error of assessment in finding that AC adapters and USB cables were not accessories supplied with the devices marketed by the applicant but were offered only as an option. Nevertheless, EUIPO maintains that, given their dissimilarity to the goods covered by the mark applied for, that error of assessment would have no bearing on the outcome of the proceedings.

40      According to settled case-law, it is clear from Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), read in the light of recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p.1) (now Article 10(3) of Delegated Regulation (EU) 2017/1430 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)), 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 a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess 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 — Wedl & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).

41      There is genuine use of a trade mark where the mark 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 is 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).

42      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 the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares 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 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43; see also, by analogy, judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40).

43      Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (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).

44      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 extensive or very regular, and vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).

45      In addition, if a trademark has been registered for a category of goods or services that is sufficiently broad so that several subcategories subject to being considered autonomously may be distinguished, proof of effective use of that trademark for a part of those goods or services, solely involves protection, in opposition proceedings, of the subcategory or subcategories to which the goods or services belong for those which the trademark has been effectively used. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45).

46      In the present case, the evidence of genuine use of the earlier marks submitted by the applicant must be assessed in order to examine the categories of goods in respect of which the Board of Appeal found that such use had not been demonstrated, despite the applicant’s claim to the contrary.

–       Proof of genuine use of the earlier marks for ‘voice frequency transmission apparatus; portable communicating apparatus, cinematographic machines and apparatus; optical apparatus and instruments; photographic machines and apparatus’

47      The applicant relies on sales of the mobile recorder ‘ZOOM Q3 HD’ in several Member States in order to claim genuine use of the earlier marks with respect to the categories of products corresponding to ‘voice frequency transmission apparatus; portable communicating apparatus, cinematographic machines and apparatus; optical apparatus and instruments; photographic machines and apparatus’. However, in light of the principles derived from the case-law set out in paragraph 45 above, it is apparent that those categories are not sufficiently precise and narrow, in so far as they combine several subcategories capable of being viewed independently. The proof of genuine use of the earlier signs for apparatus and devices marketed by the applicant therefore can apply only to the subcategory of ‘portable recorders’ and provides no basis for extending protection to all the categories claimed by the applicant.

48      In that regard, it should be noted, following the example of the Board of Appeal in paragraph 56 of the contested decision, that the ‘handy recorders’ are reasonably sophisticated video and recording devices, small in size, easily portable and typically used at concerts, small scale events or even impromptu recording sessions. Their area of use is therefore relatively specific and the categories of ‘photographic machines and apparatus; cinematographic machines and apparatus; optical apparatus and instruments’ cannot be assimilated to them. As the Board of Appeal correctly noted in paragraphs 57 and 59 of the contested decision, those categories could include products as diverse as different types of cameras, devices for editing, projection, storage or indexing of photographs or films, for both individuals and film industry professionals.

49      Next, the Court cannot accept the applicant’s argument that the handy recorders make it possible to post videos directly on the internet, with the help of a computer, so the protection conferred by the earlier trade marks should be extended to the category of ‘portable communication devices’. That is because, as EUIPO submits, disseminating data is merely ancillary to the recording function of the applicant’s handy recorders, with the result that the proof of genuine use cannot be accepted for the entire category of goods ‘portable communicating apparatus’, which brings together a significant number of portable personal computing devices such as smart phones, laptops and tablets. Such an interpretation would result in the protection conferred by the earlier marks being extended to a disproportionate range of goods.

50      It follows that, contrary to what the applicant claims, the Board of Appeal did not commit an error of assessment in choosing not to extend the protection afforded by the earlier marks to the entire category of goods ‘voice frequency transmission apparatus; portable communicating apparatus, cinematographic machines and apparatus; optical apparatus and instruments; photographic machines and apparatus’.

–       Proof of genuine use of the earlier marks for ‘manually operated computing apparatus’

51      As regards ‘manually operated computing apparatus’ covered by the earlier figurative mark ZOOM, in respect of which the applicant claims genuine use in view of marketing the ‘R8’, ‘R16’ and ‘R24’ multi-track recording devices, it should be noted that, although the equipment can be connected to a computer so that the user can directly save files on his computer, it does not receive, store, process and manage files like a computer does.

52      In those circumstances, the Board of Appeal did not commit an error of assessment in refusing to consider that the marketing of the applicant’s devices supports a finding of genuine use of the earlier marks for the category ‘manually operated computing apparatus’.

–       Proof of genuine use of the earlier marks for ‘multi-track recorders, hard disc recorders, rhythm machines, drum machines; and sound processors, effect processors, and their parts’

53      As regards the applicant’s request for acknowledgement of genuine use of the earlier marks for the broad category of ‘multi-track recorders, hard disc recorders, rhythm machines, drum machines; and sound processors, effect processors, and their parts’, although the applicant has produced a series of invoices proving the sale of the multi-track recorders R8, R16 and R24 in several Member States, it has not, however, put forward any argument for assimilating them to the entire category in respect of which it claims protection.

54      Consequently, it does not appear that the Board of Appeal erred in considering that the proof of genuine use of the earlier marks was insufficient to claim a use for the whole of the category in question.

–       Proof of genuine use of the earlier marks for ‘batteries and cells’

55      As regards the category of ‘batteries and cells’ that the applicant claims to have marketed through the sale of its devices — in particular the handy recorders, which include a rechargeable lithium-ion battery — it should be noted that it is for the applicant to provide proof of an intention to constitute a market for the category of goods in question. Although some of the evidence submitted suggests that the figurative sign ZOOM was used for the marketing of the applicant’s devices powered by rechargeable batteries, particularly Annex 11 lodged during the opposition proceedings on 28 August 2015, the evidence, taken as a whole, is nevertheless insufficient to prove genuine use of the earlier marks for the product category in question. The mere fact that certain of the applicant’s devices, such as the portable recorders, are battery operated or that a battery is initially provided cannot, in itself, constitute sufficient proof of genuine use. First, the batteries supplied with the applicant’s devices appear to be mere accessories of the latter and, second, the lack of additional evidence of marketing during the relevant period prevents the carrying out of an overall assessment of genuine use of the earlier marks designating the category of goods ‘batteries and cells’, which would demonstrate an intention to constitute a separate market for that category.

56      Therefore, in the light of the lack of relevant evidence before it, the Board of Appeal did not commit an error of assessment in refusing to hold that the earlier marks had been put to genuine use for the category of goods ‘batteries and cells’.

–       Proof of genuine use of the earlier trade mark for ‘power distribution or control machines and apparatus’ as well as ‘electric wire and cable’

57      As regards the marketing of AC adapters by the applicant (see paragraph 30 above), which it believes allows it to establish genuine use of the earlier marks for the category of ‘power distribution or control machines and apparatus’, it is necessary to uphold EUIPO’s view that, in the light of the scope of the product category in respect of which genuine use is claimed, the mere sale of AC adapters, which fulfil only a limited function of transforming electricity, constitutes only a subcategory and is not sufficient to prove genuine use for the whole of the category claimed. Therefore, although the AC adapters do actually fall within the category referred to, they are in reality only a subcategory and cannot, on their own, extend the protection of the earlier marks to all products falling within that category.

58      By contrast, as regards the assessment of the evidence of genuine use of the earlier marks in respect of the applicant’s marketing of AC adapters and various types of cables, it appears, as acknowledged by EUIPO, that the Board of Appeal made an error by not taking into account all the AC adapters and USB, AV and HDMI cables marketed by the applicant. Indeed, the evidence submitted supports the conclusion that, inter alia, AC adapters and USB and AV cables were not only sold in optional accessory packs, but were also supplied with the applicant’s devices, specifically with the ‘handy recorders’. The relevant evidence in this respect, consisting inter alia of the catalogues produced in Annex A 4 to the application, concerns the presence of a USB AC adapter and a USB cable in the ‘APH-1’ pack for the ‘H1’ portable recorder, a remote control with an extension piece, an ‘AD-17 AC’ (USB) adapter and a USB cable in the ‘APH-2’ pack for the ‘H2N’ portable recorder, a HDMI cable, an AC adapter and an AV cable in the ‘APQ-3HD’ pack for the ‘Q3HD’ portable video recorder, as well as a distributor cable and attenuator cable in the ‘APH-4N’ pack for the ‘H4N’ portable recorder. Accordingly, the Board of Appeal ought to have taken that evidence into account for the purpose of assessing the genuine use of the earlier marks for the category ‘power distribution apparatus’, of which AC adapters constitute a subcategory, and for the category ‘electric cables’, to which the USB, AV and HDMI cables can be assimilated.

59      Thus, in paragraphs 63 and 64 of the contested decision, the Board of Appeal did not correctly assess the genuine use of the earlier marks in respect of the categories of goods referred to.

60      It follows that the first plea in law is partly well founded as regards the assessment of genuine use of the earlier marks for the categories ‘power distribution and control machines apparatus’, of which AC adapters form a subcategory, and ‘electric wires and cables’. The consequences of the error committed by the Board of Appeal will be examined in the context of the assessment of the similarity of the goods covered by the marks at issue.

 The third part, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 following an error of assessment of the similarity of the goods covered by the marks at issue

61      The applicant takes issue with the Board of Appeal for having found that some of the goods covered by the mark applied for were dissimilar to those covered by the earlier marks, even though, if only with regard to the goods in respect of which proof of genuine use has been adduced as listed in paragraph 48 of the contested decision, the goods covered by the mark applied for are very similar, indeed complementary. If the scope of protection conferred by the earlier marks were also to be based on genuine use in order to cover AC adapters and AV and USB cables, the similarity of the goods covered by the marks at issue is even clearer.

62      EUIPO contends that the Board of Appeal correctly assessed the similarity of the goods covered by the marks at issue.

63      As a preliminary point, it is necessary to examine the definition of the relevant public used in the contested decision, inasmuch as such a comparison is a prerequisite to the comparison of the goods, in particular as regards the existence of a possible ‘link of complementarity’.

–       The relevant public

64      The Board of Appeal found, in paragraph 99 of the contested decision, that the applicant’s goods were aimed at professional musicians and, more broadly, amateur musicians, so that the relevant public’s level of attention when buying those products had to be regarded as being average.

65      The applicant does not disagree with the definition of the relevant public made by the Board of Appeal in the contested decision.

66      According to 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).

67      Consequently, in the light of these considerations, there is no need to call into question the definition of the relevant public and its degree of attention, as adopted by the Board of Appeal in the present case. In addition, it should be noted that such a definition of the relevant public corroborates the definition of the public by reference to which the Board of Appeal found that the applicant had demonstrated continuous promotion of the earlier marks (see paragraph 13 above), that being, in the present case, a specialised public formed of both professional and amateur musicians.

–       Comparison of the goods covered by the marks at issue

68      It is settled case-law that, in assessing the similarity of the goods or services at issue, all the relevant factors relating to them should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

69      Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods and services intended for different publics cannot be complementary (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

70      It has also been held that, where the goods covered by the earlier mark include the goods covered by the mark applied for, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

71      In the present case a comparison of the goods covered by the marks at issue should be made in order to examine the merits of the Board of Appeal’s findings in the contested decision. In this respect, as mentioned in paragraph 60 above, it must be borne in mind that, contrary to what was held by the Board of Appeal, proof of genuine use must be regarded as having been furnished for the AC adapter and for the USB and AV cables, which must be assimilated to the category of ‘electric cables’.

72      In those circumstances, the comparison must be made by taking into consideration all the applicant’s products for which proof of genuine use of the earlier marks must be considered to have been adduced, namely, on the one hand, the goods mentioned in paragraph 14 above which are, first, portable recorders, otherwise known as ‘hand-held audio/sound recording devices’, second, ‘recording devices for recording, interfacing, controlling and sampling live performances’; and, third, ‘guitar effects devices (stomps, pedals) including acoustic, bass and electric guitars’ and, on the other hand, AC adapters, as a subcategory of ‘machines and apparatus for electric control or distribution’, as well as USB and AV cables which must be assimilated to the category of ‘electric cables’.

73      Furthermore, as regards the list of goods covered by the mark applied for, it is necessary to uphold the considerations set out in paragraph 89 of the contested decision, which are not disputed by the parties, that the limitation in the description of those products — in this case, the statement that none of the products relate to music technology products — does not alter their nature. Indeed, as the Board of Appeal notes, there is no reason to believe that devices for cable management have a specific nature depending on whether or not they are used with music technology products. The Board of Appeal was entitled to conclude that the limitation contained in the list of goods covered by the mark applied for had to be considered relatively neutral in the present case. In any case, the effect of such a limitation must be to prevent continued legal uncertainty as to the scope of protection afforded by the mark; therefore a limitation can only be registered if it makes the list of goods that remain in the register clear and does not have the purpose of excluding goods with certain characteristics (see, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 115).

–       Comparison of ‘cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organising audio, computer, connection, electrical, electronic, power, printer, stereo and video cables’ covered by the mark applied for with the goods covered by the earlier marks for which genuine use has been demonstrated

74      According to the Board of Appeal, although sound recording devices and the applicant’s other products covered by the earlier trade marks can be regarded as similar to cables, and cables can themselves be considered to be similar to cable management devices, there is however no link of similarity along this chain of products since their purpose, their use and their distribution channels are not the same. The Board of Appeal also notes that the goods at issue are neither in competition nor complementary.

75      The applicant claims that the cord and cable management devices covered by the mark applied for are complementary to ‘recording devices for live performance recording, interfacing, controlling and sampling; guitar effects devices (stomps, pedals) including acoustic, bass and electric guitars’ covered by the earlier marks since, in order to function, they require cables to plug them into other devices or musical instruments. Given the multiple inputs and outputs on their devices, users will at some point be in need of a cable management device. It adds that, on the assumption that the Court extends the scope of protection conferred by the earlier marks to ‘electric wire and cables’, there would be a complementary relationship with the ‘cord and cable management devices’ covered by the mark applied for, in so far as one is indispensable or important for the use of the other so that relevant consumers may think that the same undertaking is responsible for manufacturing both goods.

76      EUIPO criticises the applicant’s argument for being too general and takes the view that a close link does not exist between the goods at issue, such that they would be complementary, notwithstanding the fact that they may be used together.

77      In the present case, it is necessary to examine the possibility of a similarity between ‘cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organising audio, computer, connection, electrical, electronic, power, printer, stereo and video cables’ covered by the mark applied for and the applicant’s goods referred to in paragraph 72 above.

78      As it indicates in the application, the applicant produced, both during the opposition proceedings and before the General Court, diagrams detailing the operation of its sound recording devices and extracts from catalogues (Annexes A 4 and A 9), showing that these devices operate in an environment with other equipment such as computers, mixing desks, microphones, acoustic screens, and even musical instruments. The examination of that evidence demonstrates that the connections between all these units are made through wires and cables, whether jack, XLR, USB or AV cables or power cables.

79      As the applicant states in paragraph 37 of the application, the large number of wires and cables, which can be as many as 11 at the same time for the same piece of equipment, makes a cable management system very useful. The cord and cable management devices covered by the mark applied for are intended for wires and cables, particularly audio, computer, connection, electrical, electronic, power, printer, stereo and video cables, which are identical or similar to those required for the operation of the applicant’s devices. It is therefore appropriate to consider that the ‘cord and cable management devices’ are important in the use of equipment marketed by the applicant where a high number of cables is necessary for their use.

80      Thus, the conclusion made in paragraph 93 of the contested decision that there is no close link between the goods at issue, particularly no link of complementarity, appears incorrect.

81      In addition, although account is taken of the use of the earlier marks for designating the category of ‘electric wires and cables’ (see paragraph 58 above), the relationship between the goods at issue appears even more evident, to the extent that there is an undeniable link of complementarity between the latter category of goods and ‘cord and cable management devices’ covered by the mark applied for, the sole purpose of the latter being to be used with the former.

82      In the light of those factors, the Court considers that, in view of their complementary nature, the Board of Appeal erred in its assessment of the similarity of ‘cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organising audio, computer, connection, electrical, electronic, power, printer, stereo and video cables’, covered by the mark applied for, and the goods marketed by the applicant under the earlier marks, and that it wrongly found there to be no similarity.

–       Comparison of ‘carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’ covered by the mark applied for, with the goods covered by the earlier marks for which genuine use has been demonstrated

83      The Board of Appeal found, first, in paragraph 87 of the contested decision, that the ‘carrying cases for electronic equipment’ and ‘stands for electronic equipment’ covered by the mark applied for were essentially accessories of a particular kind.

84      Next, in paragraphs 94 and 95 of the contested decision, it found that, in so far as the applicant’s portable recorders fell within the broader category of ‘media players and handheld devices’ for which the cases and stands for electronic equipment covered by the mark applied for were intended, there was a link of complementarity between the portable recorders, on the one hand, and those cases or stands, on the other hand, which supported a finding of similarity between those goods. The Board of Appeal held, inter alia that ‘stands’ are generally used with the applicant’s recording devices, that they are complementary to them and would be regarded as coming from the same supplier. The same reasoning must be followed as regards the cases.

85      Lastly, the Board of Appeal held that the similarity relating to the existence of a link of complementarity did not extend to cases and stands for electronic equipment since they were intended for other products referred to in the application for registration, namely ‘computers, cell phones, cameras, PDAs, electronic tablets’.

86      The applicant disputes the Board of Appeal’s recognition of only a partial similarity. It submits that there is a link of complementarity on account of similarity or some similarity between its goods and ‘carrying cases for electronic equipment’ and ‘stands for electronic equipment’, not only because they are intended for ‘media players and hand-held devices’, but also to the extent that they are intended for ‘computers, cell phones, cameras, PDAs and electronic tablets’. It claims, for example, that nothing prevents a carrying case for a cell phone or camera from being used with one of its hand-held recording devices. It also states that it manufactures cases for its own products.

87      EUIPO contends that the Board of Appeal was right to find only a partial similarity of the products in question. The handy recorders marketed by the applicant differ from ‘computers, cell phones, cameras, PDAs, electronic tablets’ for which the carrying cases and stands covered by the mark applied for are intended. In particular, the applicant’s handy video recorder cannot be equated to a camera. In addition, the design of a carrying case is often specific to the equipment it is intended to carry, so that carrying cases are specific products, thus removing any doubts as to their commercial origin. Moreover, the applicant sells carrying cases tailored to its products.

88      In the present case, it must be borne in mind that the carrying cases and stands are goods which are useful only in so far as they are used as accessories to other products: the former are mostly composed of materials providing protection against impact, being designed to protect the apparatus which they contain during transport, the latter being intended to fix or stabilise a device of a certain weight in order to facilitate or allow its use. They are therefore neither comparable nor similar to the products covered by the earlier marks in respect of which genuine use has been shown. They can, however, be connected with those products in the context of a link of complementarity owing to the close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57).

89      The products for which the carrying cases and stands are intended, as stated in the list of goods referred to in the trade mark application, are electronic or computer products, specifically ‘computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’, of closely comparable size, including as regards the computers and cameras.

90      The intended use of the carrying cases and stands appear to be identical with regard to all these products, namely to protect them, as regards the carrying cases, or fix and stabilise them, as regards the stands.

91      In this respect, the Board of Appeal’s decision to treat the carrying cases and the stands differently according to whether they are intended for ‘media players and portable devices’ or ‘computers, cell phones, cameras, PDAs, electronic tablets’ appears to be arbitrary and based on an irrelevant distinction. Indeed, those devices, which all belong to the category of electronic devices, are homogeneous in terms of the materials and components with which they are made. The carrying cases and stands are intended to fulfil the same functions with regard to those devices. In those circumstances, since the Board of Appeal acknowledged the existence of a link of complementarity leading to a recognition of similarity between the carrying cases and stands intended for ‘media players and portable devices’, on the one hand, and portable recorders on the other hand, it should also have acknowledged the existence of such a link with those cases or supports when they are intended for ‘computers, cell phones, cameras, PDAs, electronic tablets’.

92      Indeed, as noted by the applicant, those portable recorders could also be used with cases intended for mobile phones. It is of little importance that the portable recorders and cell phones themselves have different functions, as this does not affect the use of the carrying cases. The same reasoning can be followed in relation to the stands.

93      In those circumstances, it appears that the Board of Appeal erred in its assessment of the similarity of the goods at issue by acknowledging only a partial similarity when, taking into account the complementarity with the applicant’s goods, that similarity should have been recognised in respect of all the categories ‘carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’ and’ stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’ covered by the mark applied for.

–       Comparison of the ‘battery chargers and power banks’ covered by the mark applied for, with the goods covered by the earlier marks for which genuine use has been demonstrated

94      The Board of Appeal considered, in paragraph 97 of the contested decision, that the ‘power banks’ covered by the mark applied for, as devices designed to extend the life of internal batteries in many electronic devices, were not similar to the applicant’s devices, since there is nothing to indicate that they are used together. In those circumstances, their purpose is different. The same conclusion was drawn, in paragraph 98 of the contested decision, in relation to ‘battery chargers’. The latter supply energy to a secondary cell or rechargeable battery by pushing an electric current through it, but no similarity can be deduced from the simple fact that the applicant’s devices use electricity in order to function. According to the Board of Appeal, their nature, their purpose, their method of use and their suppliers are also different.

95      The applicant criticises the Board of Appeal for not having properly assessed the complementary relationship between ‘battery chargers and power banks’ covered by the mark applied for and the applicant’s own devices, in particular the hand-held devices. When those latter devices need to be charged or the battery needs replacing, the customer must make a choice between a new battery and an extra power supply provided by an external device such as a charger. The customer would thus be tempted to purchase a charger marketed under the same trade mark as the applicant’s hand-held devices. The applicant also alleges that the Board of Appeal made an error of assessment by failing to identify, on the basis of the evidence submitted, that the ‘Q3HD’ hand-held device is supplied with rechargeable batteries and an AC adapter, which operates as a battery charger. In addition, the applicant invokes the similarity of the goods at issue, covered by the mark applied for, and ‘batteries and cells; power distribution or control machines and apparatus’ covered by the earlier marks.

96      EUIPO argues in response that there is no link of complementarity between the goods in question since it is not necessary to use a rechargeable battery with the applicant’s devices. Furthermore, even if joint use were feasible, there would be no need for simultaneous use whereas, according to the Court’s case-law, a complementary relationship requires simultaneous use of the goods in question.

97      In the present case, it appears to be appropriate to assess the similarity of ‘battery chargers and power packs’, covered by the mark applied for, and AC adapters, as a subcategory of ‘power distribution apparatus’, as well as ‘power cables’, in respect of which the Court considers that proof of genuine use of the earlier marks has been proved (see paragraph 60 above). The intended use of such goods, particularly AC adapters in respect of products marketed by the applicant, consists in supplying electricity to electronic devices either directly or through batteries. In this respect, it should be noted, as the applicant submits, that AC adapters can also be used to supply power to rechargeable batteries, which is akin to charging a battery. The nature, intended purpose and method of use of the goods in question, if they are not completely identical, are nevertheless very close. In those circumstances, contrary to the findings of the Board of Appeal, it must be held that there is similarity between the goods covered by the marks at issue.

98      It follows from the analysis carried out in paragraphs 68 to 97 above that the third part of the single ground of appeal is well founded and that the Board of Appeal made an error of assessment in confining itself to finding a partial similarity of the goods covered by the marks at issue, when it must be found that there is a similarity with all the goods covered by the mark applied for, on the grounds of either identity of the goods in question, or similarity resulting from a link of complementarity.

 The fourth part, alleging an error in the assessment of the overall likelihood of confusion

99      According to settled case-law, the risk that the public might 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).

100    That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgment of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 48, and judgment of 9 July GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraph 32).

101    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, easyHotel, T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

102    The Court will examine, in the light of those considerations, whether the Board of Appeal was right to confirm the decision of the Opposition Division in so far as it concluded that the likelihood of confusion made it possible to uphold the opposition only in part. At the outset, it is necessary to examine the Board of Appeal’s analysis of the similarity of the signs at issue.

–       Comparison of the signs at issue

103    It is settled case-law that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, account being taken, in particular, of their distinctive and dominant components. 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).

104    The Board of Appeal found that the mark applied for and the earlier word mark were identical and that the characteristics of the earlier figurative mark had little effect on the similarity between the marks at issue.

105    The applicant does not dispute that assessment and submits that the comparison of the marks at issue can lead only to the conclusion, first, that the mark applied for and the earlier word mark are identical and, second, that the mark applied for and the earlier figurative mark are almost identical since the figurative component has little effect on the similarity of those marks, as was correctly found by the Board of Appeal.

106    EUIPO submits that the marks at issue are identical.

107    In the present case, it must be held that the mark applied for is identical to the earlier word mark. With respect to the earlier figurative mark, the mark applied for has a very high degree of similarity. Moreover, those findings are not contested by the parties.

–       Global assessment of the likelihood of confusion

108    The Board of Appeal based its global assessment of the likelihood of confusion on the fact that the signs at issue were identical or highly similar and that, as regards the goods found to be similar to the contested goods, the distinctiveness of the earlier marks had to be considered normal. In the light of the evidence submitted, the Board of Appeal considered that the earlier marks did not have a highly distinctive character acquired through use. It found that there was a likelihood of confusion in respect of the goods found to be similar, in the light of the identity or very close similarity of the signs at issue, irrespective of the fact that the product markets in question may differ. Therefore, it confirmed the decision of the Opposition Division.

109    The applicant submits, as regards the global assessment of the likelihood of confusion, that given the identity of the signs at issue, the requirement of similarity between the goods should not be as high as in the case of signs that are merely similar. The likelihood of confusion is increased by the high degree of similarity between the goods in question, so that there is a likelihood of confusion with regard to the commercial origin of the goods on the part of the relevant consumers.

110    EUIPO submits that the contested decision should be upheld, claiming that, so far as concerns the goods covered by the marks at issue which were found to be dissimilar, those differences are such that the relevant public will not believe that the commercial origin of those goods is the same or that they come from economically linked undertakings, especially given the lack of reputation of the earlier marks.

111    In the present case, there is nothing to indicate that there is a particular conceptual link between the majority of the goods covered by the earlier marks in respect of which genuine use has been demonstrated and those marks, nor an enhanced distinctiveness on account of their use during the relevant period. Therefore, in the context of the assessment of the likelihood of confusion, the distinctive character of the earlier marks must be considered to be normal.

112    The signs at issue are identical as regards the earlier word mark and the mark applied for and highly similar as regards the earlier figurative mark and the mark applied for, as has been stated in paragraph 107 above.

113    As regards the comparison between the goods covered by the mark applied for and the goods covered by the earlier marks in respect of which genuine use of those marks must be recognised, as is clear from paragraph 98 above, those goods are similar on the grounds of either identity or a link of complementarity.

114    Accordingly, in view of the degree of similarity between the signs at issue and the goods covered by them, there is a likelihood of confusion owing to the fact that the relevant public might believe the goods in question come from the same undertaking or from economically linked undertakings.

115    In those circumstances, the fourth part and the single plea in law of which it forms part are well founded. Consequently, it is necessary to uphold the applicant’s claim that the contested decision should be annulled in so far as the Board of Appeal dismissed the appeal brought against the decision of the Opposition Division by which it had upheld the opposition only in part.

 Costs

116    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.

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

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Annuls the decision of the fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 September 2016 (Case R 1235/2015-5), relating to opposition proceedings between Kabushiki Kaisha Zoom and Leedsworld, Inc;

2.      Dismisses the action as to the remainder;

3.      Orders EUIPO to pay the costs.

Delivered in open court in Luxembourg on 24 April 2018.

*      Language of the case: English.

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