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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

8 July 2020 (*)

(EU trade mark — Opposition proceedings — Application for a figurative EU trade mark allegedly containing the word element ‘TOTU’ and coloured red and black — Earlier EU trade marks TOTTO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

In Case T‑633/19,

Essential Export SA, established in San José (Costa Rica), represented by A.B. Padial Martínez, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,

defendant,

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

Shenzhen Liouyi International Trading Co. Ltd, established in Shenzhen (China),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 July 2019 (Case R 362/2019-2), relating to opposition proceedings between Essential Export and Shenzhen Liouyi International Trading,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, F. Schalin and P. Škvařilová-Pelzl (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 24 September 2019,

having regard to the response lodged at the Court Registry on 5 December 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 17 May 2017 the other party before the Board of Appeal, Shenzhen Liouyi International Trading Co. Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) by virtue of 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        The mark in respect of which registration was sought was the figurative sign reproduced below, claiming the colours red and black:

3        The goods covered by the application for registration which are relevant to the present dispute are in Class 18 within the meaning 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: ‘Umbrellas; parasols; mountaineering sticks; alpenstocks; canes; walking sticks; walking stick seats; walking stick handles; walking cane handles; luggage tags; trunks [luggage]; business card cases; purses; school bags; school satchels; tool bags, empty; net bags for shopping’.

4        The EU trade mark application was published in European Union Trade Marks Bulletin No 2017/96 of 24 May 2017.

5        On 22 August 2017, the applicant, Essential Export SA, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following signs:

–        the figurative EU trade mark reproduced below, filed on 20 August 2007 and registered on 15 February 2012, under number 6 212 451, in particular for ‘leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags and briefcases; umbrellas, parasols and walking sticks except those intended for sports’, included in Class 18:

and

–        the figurative EU trade mark reproduced below, filed on 15 March 2016 and registered on 22 August 2016, with a claim for the colours black, red and yellow, under number 15 213 457, in particular for ‘leather and imitation leather, trunks (luggage), valises, carrying cases, portfolio bags, wallets, haversacks; umbrellas and parasols, walking sticks, except haversacks intended for practising sports and except goods intended for practising sports’, included in Class 18:

7        The grounds relied on by the applicant were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8        On 30 January 2019, the Opposition Division rejected the opposition for all the goods referred to in paragraph 3 above, on the ground that the marks at issue were different and that, accordingly, one of the necessary conditions for a finding of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, was absent in the present case.

9        On 12 February 2019, the applicant filed a notice of appeal with EUIPO, in accordance with Article 72 of Regulation 2017/1001, against the decision of the Opposition Division.

10      By decision of 22 July 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO confirmed the decision of the Opposition Division and, accordingly, rejected the appeal and ordered the applicant to pay the costs.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the application for registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above, in Class 18;

–        order EUIPO to pay the costs.

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of the action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

14      For the purposes of the application of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal began by stating, in paragraph 16 of the contested decision, that, for reasons of procedural economy, it would take as its basis the premiss that the goods at issue were identical.

15      Next, in paragraph 17 of the contested decision, the Board of Appeal noted that, in so far as the earlier marks were EU trade marks, the relevant territory was that of the European Union.

16      Then, in paragraph 19 of the contested decision, the Board of Appeal stated that the goods in question were intended for the general public, whose level of attention could vary from average to high depending on the price of each of those goods.

17      With regard to the comparison of the signs at issue, the Board of Appeal began by recalling, in paragraph 23 of the contested decision, that the comparison was to be made between those signs as they had been registered or appeared in the application for registration and not as they were used by their proprietors or set out in the database.

18      In paragraph 25 of the contested decision, the Board of Appeal next found that the signs at issue did not contain dominant elements, in the sense of visually striking elements.

19      In paragraphs 27 to 29 of the contested decision, the Board of Appeal held that the signs at issue were visually different, in that the mark applied for would be perceived as an abstract figurative sign, composed of black lines and red dots, or possibly as the figurative representation of the word elements ‘ro’ and ‘ril’ (with a reversed capital ‘l’) or ‘ro’ and ‘rij’, while the earlier marks would be perceived as figurative representations of the term ‘totto’. In its view, those signs were not comparable either phonetically, inasmuch as the mark applied for was a purely figurative sign, or conceptually, inasmuch as that mark was a sign devoid of meaning.

20      In consequence, after having noted, in paragraph 32 of the contested decision, that the earlier marks had a normal degree of distinctive character, since it had not been alleged that they had acquired a greater distinctive character through use and that, moreover, they did not have any obvious meaning, to the relevant public, in relation to the goods at issue, the Board of Appeal confirmed, in paragraphs 33 to 35 of that decision, the assessment of the Opposition Division that one of the conditions necessary for a finding of the existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, was absent in the present case.

21      According to the applicant, the Board of Appeal erred in the application of Article 8(1)(b) of Regulation 2017/1001 at the stage of the comparison of the signs at issue, which led it wrongly to rule out, in the contested decision, the existence of a likelihood of confusion, within the meaning of that provision.

22      In the opinion of the applicant, the mark applied for is not a purely figurative mark, composed of black lines and red dots, as EUIPO claims, because the lines and dots present in that mark form, successively, the capital letters ‘T’, ‘O’, ‘T’ and ‘U’. Accordingly, that mark contains the word element ‘totu’. That is confirmed by the registration application form, in which the other party to the proceedings before the Board of Appeal clearly stated that the mark in question was a figurative mark containing the word element ‘totu’. That mark is, furthermore, referenced by that word element in the databases managed by EUIPO, such as eSearch plus or TMview.

23      Next, the applicant argues that, in accordance with the case-law, the word element ‘totu’ of the mark applied for, like the word element ‘totto’ of the earlier marks, will have more impact in the overall impression produced by those marks than their figurative elements, which are relatively simple and commonplace. Since their word elements share the same series of the capital letters ‘T’, ‘O’ and ‘T’, placed in the same order and the same position, the signs at issue are visually and phonetically similar to a very high degree. The very high phonetic similarity between those signs is all the greater since everyday commercial activities generally involve spoken exchanges. In the present case, since the goods at issue are identical, the earlier marks have a normal intrinsic distinctive character and the relevant public, consisting of the general public and professionals, has a level of attention varying between average and high, the Board of Appeal should have concluded, after a global assessment of all the relevant factors, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

24      EUIPO refutes, in essence, the applicant’s arguments alleging errors vitiating the assessments of the Board of Appeal as regards the lack of similarity of the signs at issue as unfounded and the applicant’s arguments directed against the assessments of the Board of Appeal as regards the similarity of the goods at issue and the global assessment of the likelihood of confusion as ineffective, in that similarity of the signs at issue is an essential condition for a finding of the existence of a likelihood of confusion, and claims that the single plea in law raised by the applicant should be rejected.

25      With regard to the application made by the Board of Appeal, in the contested decision, of Article 8(1)(b) of Regulation 2017/1001, none of the parties, whether or not they seek the annulment of that decision, calls into question the assessments of the Board of Appeal that the goods at issue may be deemed to be identical (paragraph 14 above), the relevant territory is the territory of the European Union (paragraph 15 above) and the relevant public corresponds to the general public, whose level of attention will vary from average to high (paragraph 16 above).

26      Those findings are free of error and may be upheld by the Court.

27      In the present case, the applicant complains that the Board of Appeal rejected, in the contested decision, any existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the sole ground, which the applicant alleges is incorrect, that the signs at issue are different.

28      In that regard, it must be borne in mind that, under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, registration of the trade mark applied must be refused 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 two 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.

29      The existence of a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered. Those conditions are cumulative (see judgment of 12 October 2004, Vedial v OHIM, C‑106/03 P, not published, EU:C:2004:611, paragraph 51).

30      It follows that, where the signs at issue are different, the opposition must be rejected on that ground, irrespective of the presence of other relevant factors, such as the degree of similarity or the identity of the goods and services covered (see, to that effect, judgment of 12 September 2018, Pelikan v EUIPO — NBA Properties (NEW ORLEANS PELICANS), T‑112/17, not published, EU:T:2018:528, paragraph 59).

31      Furthermore, it is clear from the case-law that two marks are similar, within the meaning of Article 8(1)(b) of Regulation 2017/1001, 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 17 December 2009, Notartel v OHIM — SAT.1 (R.U.N.), T‑490/07, not published, EU:C:2009:522, paragraph 47 and the case-law cited). As is clear from the case-law, the visual phonetic and conceptual aspects are relevant, since the assessment of the similarity must be based on the overall impression produced by the marks, taking into account in particular their distinctive and dominant elements (see judgment of 17 December 2009, R.U.N., T‑490/07, not published, EU:C:2009:522, paragraph 48 and the case-law cited).

32      In the present case, the applicant bases its arguments on the premiss that the relevant public will be able to identify the word element ‘totu’ in the mark for which registration is sought.

33      In that regard, it must be recalled that, in accordance with the case-law, average consumers normally perceive a mark as a whole and do not engage in an analysis of its various details, unless, when perceiving a word sign, they are able to break it down into word elements which, for them, suggest a specific meaning or which resemble words with which they are familiar. Identifying word elements which consumers can understand is relevant to the assessment of the visual, aural and conceptual similarity between the signs at issue (see, to that effect, judgment of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑548/12, EU:T:2015:478, paragraph 37 and the case-law cited).

34      It has also been held that the relevant public was able to understand the meaning produced by signs composed of several word elements, reproduced separately, by grouping those elements to form terms which, for that public, evoked a precise meaning or which resembled words with which it was familiar, where such understanding did not require any particular intellectual effort (judgment of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 62; see also, to that effect, judgment of 6 September 2013, Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraphs 101 to 109).

35      As EUIPO submits, the Board of Appeal was therefore correct to hold, in the contested decision, that the relevant public would not identify the word element ‘totu’ in the mark for which registration was sought.

36      In the mark applied for, the red dots are clearly distinguishable from the black lines because of their different colour and shape, which will be immediately perceptible to the relevant public. That public will be more likely to perceive the red dots as elements separating and highlighting the elements formed by the black lines than as elements complementing those black elements to form capital letters making the term ‘totu’. Such a perception of that mark by that public is all the more probable since that term has no obvious meaning, in relation to the goods in question, which could help the consumer to identify that term in that mark. Consequently, as EUIPO argues, there are no elements within the trade mark in question that invite or assist the relevant public to identify the term in the trade mark.

37      In light of that finding, it does not appear necessary, in the context of the present case, to adopt a position on whether the elements contained in the mark applied for would be perceived by the relevant public as mere figurative motifs or as terms, ‘ro’ and ‘ru’ or ‘ro’ and ‘rij’ or ‘ril’ (with an reversed capital ‘l’), and on EUIPO’s argument that purely figurative signs are customary in the economic sector concerned.

38      As regards the applicant’s argument that the other party to the proceedings before the Board of Appeal indicated, in its description of the mark applied for, that it contained the word element ‘totu’, it is appropriate to recall, as EUIPO has done in its written submissions, that such a description, as such, does not affect the assessment of the perception of the mark concerned by the relevant public. The possibility, provided for by Rule 3(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), for an applicant for an EU trade mark to attach to the application a description of the trade mark provides information on the perception of the trade mark by the trade mark applicant, but not at all on its perception by the relevant public. The likelihood of confusion between trade marks must be assessed by reference to the perception of those trade marks by that public (judgments of 22 March 2011, Ford Motor v OHIM — Alkar Automotive (CA), T‑486/07, not published, EU:T:2011:104, paragraph 58, and of 14 July 2016, Monster Energy v EUIPO — Mad Catz Interactive (Representation of a black square with four white lines), T‑567/15, not published, EU:T:2016:408, paragraph 27).

39      Consequently, the applicant’s argument based on the description of the mark applied for in the application for registration of that mark must be rejected as ineffective.

40      The applicant’s argument based on the manner in which the mark applied for is referenced in databases managed by EUIPO, such as eSearch or TMview, is also ineffective and must be rejected as such. The inclusion in those databases of the information contained in the applications for registration provides information only on the perception of the marks applied for by those applying for them, but not at all on their perception by the relevant public.

41      Since the relevant public will not identify the word element ‘totu’ in the mark applied for, the applicant’s argument that, in accordance with the case-law, that word element has more impact, in the overall impression produced by that mark, than the figurative elements, which are relatively simple and commonplace, lacks foundation in fact and, on that ground, must be rejected.

42      Since all the other arguments put forward by the applicant concerning the comparison of the signs at issue are based on the incorrect premiss that the relevant public will be able to identify the word element ‘totu’ in the mark applied for, they must also be rejected as lacking any foundation in fact.

43      On all the foregoing grounds, the single plea in law relied on in support of all the heads of claim in the present action must be rejected and, accordingly, the action must be dismissed in its entirety.

 Costs

44      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.

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

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Essential Export SA to pay the costs.

Delivered in open court in Luxembourg on 8 July 2020.

E. Coulon S. Papasavvas

*      Language of the case: English.

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