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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

8 September 2021 (*)

(EU trade mark – Opposition proceedings – Application for EU word mark SFORA WEAR – Earlier EU figurative marks Sfera KIDS and Sfera – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b of Regulation (EU) 2017/1001) – Proof of 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))

In Case T‑493/20,

Sfera Joven, SA, established in Madrid (Spain), represented by J. Rivas Zurdo, lawyer,

applicant,

v

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

defendant,

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

Andrzej Koc, established in Kobyłka (Poland), represented by J. Aftyka, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 15 May 2020 (Case R 2030/2019-1) relating to opposition proceedings between Sfera Joven and Andrzej Koc,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, F. Schalin (Rapporteur) and I. Nõmm, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 28 July 2020,

having regard to the response lodged at the Court Registry on 9 February 2021,

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

1        On 21 September 2016, the other party to the proceedings before EUIPO, Andrzej Koc, 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 SFORA WEAR.

3        The goods for which registration was sought are in Classes 18, 24 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 18: ‘Wallets, purses, briefbags, handbags, casual bags, shopping bags, net bags for shopping, beach bags, holdalls, wheeled bags, bags (game -) [hunting accessories], bags for campers, bags for climbers, chests, backpacks, bookbags, suitcases, pouches, keycases, cases of leather or leatherboard, boxes of leather or leatherboard, waistpacks, bed covers of leathers, bed covers of fur, leather straps, straps for soldiers’ equipment’;

–        Class 24: ‘Bed linen, household linen, table linen, table covers, bedspreads, bath linen, plaids, washing mitts’;

–        Class 25: ‘Clothing for women, men, young people and children, clothing of natural and synthetic materials, knitwear (clothing), work clothing, protective clothing, waterproof clothing, beach clothing, sports clothing, gymnastics clothing; underwear for women, men, young people and children, women’s suits, jackets, dresses, evening dresses, skirts, blouses, sweatshirts, clothing, costumes, uniforms, togas, cassocks, chasubles, suits, tailcoats, waistcoats, shirts, polo shirts, short-sleeve shirts (t-shirts), corsets, vests, jumpers, pullovers; trousers, trousers shorts, bermuda shorts, shorts, astronaut flight suits, tracksuits, overalls, coats, topcoats, coats, trench coats, coats, pelerines, windshirts, socks, leg warmers, stockings, body garments, tights, tights, leggings, pyjamas; robes, aprons clothing, bathrobes, swimming costumes, swimming trunks, suspenders, ties, bowties, scarfs, handkerchiefs, scarves, shawls, neckerchiefs; caps (headwear), berets; veils; gloves; baby bibs, baby sleepsuits, layettes’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 2016/217 of 16 November 2016.

5        On 20 January 2017, the applicant, Sfera Joven, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier marks:

–        The EU figurative mark registered under number 9806481, designating goods in Classes 18 and 25 and corresponding to the following description: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Whips, harness and saddlery’ (Class 18) and ‘Clothing, footwear, headgear’ (Class 25), as reproduced below:

–        The EU figurative mark registered under number 13579172, designating goods in Class 24 and corresponding to the following description: ‘Textiles and textile goods, not included in other classes; Bed covers; Table covers’.

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

8        On 25 June 2018, Andrzej Koc asked, under Article 47(2) and (3) of Regulation 2017/1001, that applicant provide proof that the earlier figurative mark Sfera KIDS had been put to genuine use.

9        On 14 November 2018, the applicant produced evidence for the purpose of demonstrating genuine use of that mark.

10      On 17 July 2019, the Opposition Division partially upheld the opposition based on the earlier figurative mark Sfera, in so far as it concerned some of the goods covered by the mark applied for and referred to in paragraph 3 above, namely, ‘Bed covers of leathers, bed-covers of fur’ (Class 18), ‘Bed linen, household linen, table linen, table covers, bedspreads, bath linen, plaids, washing mitts’ (Class 24) and ‘Aprons [clothing], bathrobes, handkerchiefs; baby bibs’ (Class 25), finding that, in respect of those goods, there existed a likelihood of confusion. However, the opposition based on that earlier mark was rejected in so far as it was directed against the other part of the goods covered by the mark applied for and referred to in paragraph 3 above, those goods and the goods covered by that earlier mark not having been found to be similar. The Opposition Division also rejected the opposition in so far as it was based on the earlier figurative mark Sfera KIDS, on the ground that the applicant had not proved genuine use of that mark.

11      On 11 September 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division, in so far as it had rejected the opposition for the following goods (‘the goods in dispute’):

–        Class 18: ‘Wallets, purses, briefbags, handbags, casual bags, shopping bags, net bags for shopping, beach bags, holdalls, wheeled bags, bags (game -) [hunting accessories], bags for campers, bags for climbers, chests, backpacks, bookbags, suitcases, pouches, keycases, cases of leather or leatherboard, boxes of leather or leatherboard, waistpacks, leather straps, straps for soldiers’;

–        Class 25: ‘Clothing for women, men, young people and children, clothing of natural and synthetic materials, knitwear (clothing), work clothing, protective clothing, waterproof clothing, beach clothing, sports clothing, gymnastics clothing; underwear for women, men, young people and children, women’s suits, jackets, dresses, evening dresses, skirts, blouses, sweatshirts, clothing, costumes, uniforms, togas, cassocks, chasubles, suits, tailcoats, waistcoats, shirts, polo shirts, short-sleeve shirts (t-shirts), corsets, vests, jumpers, pullovers; trousers, trousers shorts, bermuda shorts, shorts, astronaut flight suits, tracksuits, overalls, coats, topcoats, coats, trench coats, coats, pelerines, windshirts, socks, leg warmers, stockings, body garments, tights, tights, leggings, pyjamas; robes, swimming costumes, swimming trunks, suspenders, ties, bowties, scarfs, scarves, shawls, neckerchiefs; caps (headwear), berets; veils; gloves (clothing), baby sleepsuits, layettes’.

12      By decision of 15 May 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal and confirmed the decision of the Opposition Division. In essence, first, it found that no genuine use of the earlier figurative mark Sfera KIDS had been demonstrated in respect of the goods in Classes 18 and 25 covered by that mark. Secondly, as regards comparison of the goods covered by the earlier figurative mark Sfera, in Class 24, with the goods in dispute covered by the mark applied for, the Board of Appeal held that those goods did not display any similarities between them. Accordingly, it found that there was no likelihood of confusion as regards the mark applied for and the earlier figurative mark Sfera.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

14      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

15      As a preliminary point it should be noted, having regard to the date on which the application for registration at issue was filed, namely 21 September 2016, which is determinative for the purposes of identifying the applicable substantive law, that the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, in so far as, according to settled case-law, the procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.

16      Consequently, in the present case, in so far as the substantive rules are concerned, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to the identical wording in Article 8(1)(b) of Regulation No 207/2009.

17      In support of its action, the applicant relies on two pleas in law. The first alleges infringement of Article 10(4) of Commission Delegated Regulation 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430, in that the Board of Appeal erred in finding that proof of genuine use of the earlier figurative mark Sfera KIDS had not been provided. The second alleges infringement of Article 8(1)(b) of Regulation No 207/2009, in that the Board of Appeal erred in ruling out the existence of a likelihood of confusion as regards the mark applied for and the earlier figurative mark Sfera.

 The first plea in law, alleging infringement of Article 10(4) of Delegated Regulation 2018/625

18      The applicant submits, in essence, that, as regards genuine use of the earlier mark Sfera KIDS, the Board of Appeal called only for quantitative evidence of an economic nature, such as invoices, and disregarded the possibility of its genuine use being proved by the production of catalogues, newspaper advertisements or even photographs. Such an approach is contrary to the case-law stemming from the judgment of 8 July 2010, Engelhorn v OHIM – The Outdoor Group (peerstorm) (T‑30/09, EU:T:2010:298, paragraph 44), in which it was recognised that a means of evidence such as catalogues is sufficient to prove the use of a mark, even in the absence of information about the volume of goods sold. Furthermore, the Board of Appeal did not make an overall assessment of all the evidence produced by the applicant whereas, if it had made such an assessment, it would have recognised that the fact that some of the evidence came from websites other than that of the El Corte Inglés group, to which the applicant belongs, demonstrated the use and distribution of the earlier mark Sfera KIDS.

19      Lastly, the Board of Appeal contradicted itself in stating, on the one hand, in paragraph 43 of the contested decision, that the catalogues were not ‘sufficient’ to prove genuine use of the earlier mark Sfera KIDS, and, on the other hand, in paragraph 44 of the contested decision, that that evidence could be sufficient. Similarly, the Board of Appeal contradicted itself by stating that the El Corte Inglés group has a reputation but ultimately decided not to take it into account.

20      EUIPO disputes the applicant’s arguments.

21      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).

22      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 exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM – Espadafor (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).

23      As to the extent of the use to which the earlier trade mark has been put, 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).

24      In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made, taking account of all the relevant factors in the particular case. That assessment implies a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by a high intensity or a certain constancy in time of the use of that trade mark or 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).

25      Lastly, 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 actual and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).

26      It is in the light of those considerations that it must be determined whether the Board of Appeal erred in its assessment in finding that the evidence produced by the applicant did not demonstrate genuine use of the earlier mark Sfera KIDS for the goods in Classes 18 and 25 that it designates.

27      As the other party to the proceedings before EUIPO filed its EU trade mark application on 21 September 2016, the five-year period referred to in Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001) runs from 21 September 2011 to 20 September 2016 (‘the relevant period’).

28      The evidence produced by the applicant before EUIPO and intended to demonstrate that, during the relevant period, the earlier mark Sfera KIDS had been put to a use conducive to ensuring the preservation of the rights it conferred consist, in essence, of printouts of pages from websites containing pictures of children wearing different types of clothing, a printout of a page from the website of El Corte Inglés, a picture of a shop mentioning the earlier mark Sfera and documents showing the turnover of Spanish undertakings, including that of the El Corte Inglés group.

29      The Board of Appeal found in paragraph 32 of the contested decision that, with the exception of four pieces of evidence which either did not relate to the relevant period or were not dated, all the evidence produced related to the relevant period. In paragraphs 39 to 56 of the contested decision it found, as regards the goods designated by the earlier mark Sfera KIDS, that there was no evidence of its use for goods in Class 18 and little or no evidence of use for the ‘footwear, headgear’ goods in Class 25. Likewise, it observed that, although the evidence could demonstrate a link between the earlier mark Sfera KIDS and the ‘Clothing’ in Class 25 covered by that mark, there was insufficient evidence to establish the extent of its use. In conclusion, the Board of Appeal found that the applicant had not succeeded in proving genuine use of the earlier mark Sfera KIDS.

30      Having regard to the evidence in the file, it must be held that the Board of Appeal made a correct assessment of the facts of the case.

31      First, as regards the Annexes A.7 to A.10 produced by the applicant in order to prove genuine use of the earlier mark Sfera KIDS, the Board of Appeal was entitled to find that they did not contain any information that could be linked to the relevant period, so that no inference could be drawn from them as to the genuine use of that mark. Secondly, as regards Annexes A.1 to A.6, it should be observed, as the Board of Appeal noted, that they all consist of printouts from websites, showing images of children wearing different clothing, but that none of those annexes contains any information as to the marketing of the goods covered by the earlier mark Sfera KIDS, such as their price or the way in which they were marketed, and that there is no information regarding their exposure to the public. Lastly, as regards the documents produced by the applicant that concern the El Corte Inglés group, to which it belongs, the Board of Appeal did not err in finding that they were all irrelevant. Those documents refer to the ranking of Spanish undertakings and of their turnover but do not permit the volume of sales or the turnover in relation to the goods covered by the earlier mark Sfera KIDS to be established.

32      The applicant submits, in essence, that the Board of Appeal disregarded the possibility of use being proven by pieces of evidence other than quantitative evidence of an economic nature. However, that finding is based on a misinterpretation of the contested decision. As is apparent from paragraphs 44 and 45 thereof, the Board of Appeal acknowledged the possibility of proving genuine use of a mark by means of evidence such as catalogues. However, it considered that, in the present case, those items of evidence did not contain sufficient information capable of establishing genuine use of the earlier mark Sfera KIDS and that, in the absence of other items such as evidence of sales, invoices or orders, it had to be found that proof of genuine use of that mark had not been provided. Contrary to what the applicant is claiming, there are no contradictions in that reasoning.

33      Furthermore, contrary to the applicant’s incorrect interpretation, it does not follow from the judgment of 8 July 2010, peerstorm (T‑30/09, EU:T:2010:298), that the mere production of evidence such as catalogues is sufficient per se to establish a certain extent of use of an earlier right. Indeed, as is apparent from paragraphs 41 to 44 of that judgment, the evidence produced in connection with that case, which consisted essentially of catalogues, was plentiful, displayed the mark concerned on the goods it covered, referred to a large number of items and demonstrated that they were available in 240 stores in the United Kingdom during a significant part of the relevant period. In addition, those catalogues contained specific information about the goods offered for sale under that mark, such as their price and the way in which they were marketed. It was on the basis of that evidence that the General Court found in that case that the abovementioned catalogues sufficiently demonstrated the use of the earlier right for the goods covered by it.

34      In the present case, the evidence submitted which is taken from catalogues does not contain any specific information about the goods or the way in which they are marketed. Similarly, contrary to the applicant’s assertion, the fact that the website printouts featuring among the evidence it has produced originate from undertakings and publications external to the El Corte Inglés group or to the applicant does not, in the present case, allow a finding of external or public use of the earlier mark Sfera KIDS or of its genuine use. In fact, first, those pages are few in number and contain little or no information about the authors of those publications; and, secondly, as the Board of Appeal was correct in finding, they do not allow inferences to be drawn as to their exposure to the public, the circulation of those pages or the extent of that being unknown.

35      Next, as regards the applicant’s argument that there is a contradiction in the contested decision, in that the Board of Appeal recognised the ‘centripetal force’ of the El Corte Inglés group but ultimately rejected it, it should be stated, as EUIPO stated, that that argument stems from a misinterpretation of the contested decision. In fact, the Board of Appeal merely indicated that even if the mark El Corte Inglés was famous in Spain, that was not sufficient to prove genuine use of another mark, in the absence of evidence establishing an ownership relationship, well known by consumers, between those marks, and that, in the present case, the applicant had not furnished such proof. The contested decision is not therefore vitiated by any contradiction.

36      Lastly, contrary to the applicant’s submission, the Board of Appeal did indeed carry out an overall assessment of all the evidence provided, as indeed is expressly apparent from paragraph 44 of the contested decision. The applicant does not raise any argument that is capable of calling that finding into question.

37      It follows from the foregoing that the Board of Appeal did not err in its assessment in finding that genuine use of the earlier mark Sfera KIDS had not been demonstrated.

38      The first plea in law must therefore be dismissed as unfounded.

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

39      The Board of Appeal found, as regards the goods in dispute in Classes 18 and 25 covered by the mark applied for and those in Class 24 covered by the earlier mark Sfera, that even if, in some cases, they could be made from the same materials, they did not have the same intended purpose, method of use and distribution channels. It found therefore that the goods at issue were different and that no likelihood of confusion existed as regards those marks.

40      The applicant submits that there is a close connection between the goods in Class 24 covered by the earlier mark Sfera and the goods in dispute in Classes 18 and 25 covered by the mark applied for, which arises from their nature, complementarity, function and purpose. The existence of that connection is particularly apparent from the criteria relating to the Nice Classification, wherein goods identified in Class 24 are connected to other goods referred to in Classes 18 and 25, which the Board of Appeal did not take into account. By reason of that connection, and of the principle of the interdependence of factors, the Board of Appeal should therefore have recognised the existence of a likelihood of confusion.

41      EUIPO disputes the applicant’s arguments.

42      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 shall not be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark and 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).

43      It must also be borne in mind that, according to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, 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, 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).

44      As a preliminary point, it should be specified that the goods in dispute, covered by the mark applied for and referred to in paragraph 11 above, which are in Classes 18 and 25, must be compared with the ‘Textiles and textile goods, not included in other classes; Bed covers, Table covers’ in Class 24 and covered by the earlier mark Sfera.

45      First, as regards the comparison between the goods in dispute in Class 18, covered by the mark applied for, and the goods in Class 24 covered by the earlier mark Sfera, it must be noted, as EUIPO noted, that they do not have the same intended purpose, since the goods in Class 18 are intended to contain, to collect, to transport or to store things and the goods in Class 24 are fabrics for household use; functional and decorative goods able to serve both practical and ornamental purposes. Also, those two categories of goods do not have the same distribution channels, since the goods covered by the earlier mark Sfera are most often displayed near or on shelving units, whereas the goods covered by the mark applied for are often displayed on shelves or in shops specialising in luggage or in clothing accessories. Furthermore, the manufacturers of those goods are not generally the same and the use of one is not necessary or important to the use of others. Therefore, those goods are not complementary or in competition.

46      Secondly, as regards the comparison between the goods in dispute in Class 25, covered by the mark applied for, and the goods in Class 24 covered by the earlier mark Sfera, it should be noted, as EUIPO also highlighted, that those goods differ in many respects, such as in their nature, intended purpose, origin and distribution channels (see, to that effect, judgment of 9 September 2020, Casual Dreams v EUIPO – López Fernández (Dayaday), T‑50/19, not published, EU:T:2020:407, paragraphs 121 to 124). In that regard, and in so far as the applicant claims that the goods at issue can be made from the same materials, it should be noted that that factor alone is not capable of calling those differences into question (see, to that effect and by analogy, judgment of 25 June 2020, Pavel v EUIPO – bugati (B), T‑114/19, not published, EU:T:2020:286, paragraph 57).

47      Furthermore, it should be noted that the Nice Classification seeks only to facilitate the drafting and processing of trade mark applications, by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category (see judgment of 20 September 2015, Gat Microencapsulation v OHIM – BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 44 and the case-law cited).

48      Nevertheless, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) of Regulation No 207/2009 by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods covered by those two marks (judgment of 30 September 2015, KARIS, T‑720/13, not published, EU:T:2015:735, paragraph 47). Thus, the applicant’s argument that, in essence, there is a close connection between the goods at issue, in so far as, in the Nice Classification, there are goods in Class 24 which are connected to goods in Classes 18 and 25, is irrelevant, since those goods do not correspond to those covered by the earlier mark Sfera and by the mark applied for.

49      It is apparent from the foregoing that the Board of Appeal was entitled to conclude and without disregarding the case-law, that the goods at issue were different, since the applicant, moreover, did not raise any argument capable of calling that assessment into question.

50      In so far as the existence of a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services they cover are identical or similar, the finding of no likelihood of confusion as regards the mark applied for and the earlier mark Sfera must be approved.

51      Consequently, the second plea in law must be rejected as unfounded and, therefore, the action in its entirety.

 Costs

52      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.

53      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 Sfera Joven, SA to pay the costs.

Delivered in open court in Luxembourg on 8 September 2021.

*      Language of the case: English.

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