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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

21 December 2022 (*)

(EU trade mark - Opposition proceedings - Application for EU figurative mark BIMBA TOYS - Earlier international word and figurative marks Simba - Earlier trade name Simba Toys GmbH & Co. KG - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Comparison of the goods - Article 8(4) of Regulation 2017/1001 - Proximity of the economic sectors)

In Case T‑129/22,

Simba Toys GmbH & Co. KG, established in Fürth (Germany), represented by O. Ruhl, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,

defendant,

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

Master Gift Import, SLU, established in Ronda (Spain),

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, R. Norkus (Rapporteur) and W. Valasidis, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure,

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        By its action under Article 263 TFEU, the applicant, Simba Toys GmbH & Co. KG, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 December 2021 (Case R 629/2021-4) (‘the contested decision’).

 Background to the dispute

2        On 22 February 2018, the other party to the proceedings before the Board of Appeal of EUIPO, Master Gift Import, SLU, filed an application with EUIPO for registration of the following figurative sign:

3        The mark applied for covers goods and services in Classes 28, 35 and 39 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. The relevant goods for the purposes of the present action are in Class 28 and correspond to the following description: ‘Gymnastic and sporting articles’.

4        On 30 July 2018, the applicant, Simba Toys GmbH & Co. KG, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

5        The opposition was based on the following earlier rights:

–        the earlier international word mark SIMBA registered in respect of goods in Class 28 corresponding to the following description ‘Toys, with the exception of soft toy animals, games’;

–        the earlier international figurative mark registered in respect of goods in Class 28 corresponding to the following description: ‘Toys, excluding soft-padded cloth animals (toys)’, reproduced below (‘the earlier figurative mark 1’):

–        the earlier international figurative mark registered in respect of goods in Class 28 corresponding to the following description: ‘Games, toys’, reproduced below (‘the earlier figurative mark 2’):

–        the earlier trade name Simba Toys GmbH & Co. KG used in the course of trade in Germany for ‘games, toys’.

6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(4) of 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), read in conjunction with Paragraph 5(2) and Paragraph 15(2) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, and BGBl. 1995 I, p. 156) (‘the Markengesetz’).

7        Following the request made by the other party to the proceedings before the Board of Appeal of EUIPO, EUIPO requested the applicant to adduce evidence of genuine use of the word mark and earlier figurative marks 1 and 2 referred to in paragraph 5 above. The applicant complied with that request within the prescribed period.

8        On 22 March 2021, the Opposition Division upheld the opposition in part on the basis of Article 8(1)(b) of Regulation 2017/1001. By contrast, the Opposition Division rejected the opposition based on that article with regard, in particular, to the goods ‘gymnastic and sporting articles’ in Class 28 covered by the mark applied for, finding that they were, in essence, different from the ‘games, toys’ in Class 28 covered by the earlier figurative mark 2.

9        The Opposition Division also rejected the opposition in so far as it was based on Article 8(4) of Regulation 2017/1001, read in conjunction with Paragraph 15(2) and Paragraph 5(1) and (2) of the Markengesetz. It found, in essence, that, even if the requirements relating to the proximity of the relevant economic sectors under German law were generally lower than those relating to the similarity of the goods under Article 8(1)(b) of Regulation 2017/1001, protection under that right did not go beyond the scope of protection under that article.

10      On 8 April 2021, the applicant brought an action before EUIPO against the Opposition Division’s decision.

11      By the contested decision, the Board of Appeal dismissed the action on the ground that, first, ‘gymnastic and sporting articles’ falling within Class 28 designated by the mark applied for were different from ‘games, toys’ from that class, covered by the earlier figurative mark 2. In taking the view that that was particularly the case concerning the earlier word mark and the earlier figurative mark 1, as those marks covered an even smaller range of products, it found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

12      Secondly, as regards the ground referred to in Article 8(4) of Regulation 2017/1001, the Board of Appeal decided that, in view of the lack of similarity between the goods at issue and the lack of proximity between the relevant economic sectors, there was also no likelihood of confusion, within the meaning of Paragraph 15(2) of the Markengesetz.

 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      In support of its action, the applicant puts forward two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 8(4) of that regulation.

 The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

16      In the first plea in law, the applicant complains, in essence, that the Board of Appeal, first, erred in finding that there was a difference between the goods covered by the earlier marks, namely ‘games, toys’, and the goods covered by the mark applied for, namely ‘gymnastic and sporting articles’, and, secondly, for having found that there was no likelihood of confusion.

17      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks at issue, 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. Under Article 196(1) of Regulation 2017/1001, international registrations designating the European Union are to be subject to opposition in the same way as EU trade mark applications.

18      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

19      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM - easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

 Preliminary observations

20      It should be recalled that, when the Board of Appeal confirms a lower-level decision of EUIPO in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out in full its judicial review as to whether the Board of Appeal’s assessment was well founded (see judgment of 21 November 2013, El Hogar Perfecto del Siglo XXI v OHIM - Wenf International Advisers (Corkscrew), T‑337/12, EU:T:2013:601, paragraph 43 and the case-law cited).

21      In the present case, it follows from the entire context of the contested decision and, in particular, from paragraphs 14, 15, 28 and 39, that, after noting that the applicant disputed only the Opposition Division’s assessments of the existence of a likelihood of confusion for the goods covered by the conflicting signs (see paragraphs 3 and 5 above), the Board of Appeal confirmed the Opposition Division’s decision by focusing, in essence, on the assessment, first, of the comparison of the goods covered by those signs and, secondly, of the existence of a likelihood of confusion.

22      In that regard, it should be noted that the applicant, in its action against the contested decision before the Court, does not dispute the finding of the Opposition Division, confirmed by the Board of Appeal within the meaning of the case-law referred to in paragraph 20 above, according to which, inter alia, the relevant public consists of the general public and the professional public, with a level of attention varying from average to high.

23      Moreover, there is nothing in the documents before the Court capable of calling into question that conclusion set out in paragraph 22 above.

24      That said, it is necessary to examine the applicant’s criticisms of the assessments made by the Board of Appeal in the context, first, of the comparison of the goods covered by the signs at issue and, secondly, of the existence of a likelihood of confusion.

 The comparison of the goods

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

26      In the contested decision, the Board of Appeal found that the goods covered by the mark applied for, namely ‘gymnastic and sporting articles’, were different from those covered by the earlier figurative mark 2, namely ‘Games, toys’, on account, first, of their intended purpose and, secondly, of their producers and distribution channels. Thus, those goods are neither complementary nor in competition with each other. The Board of Appeal found that the fact that all the goods targeted the general public did not constitute a significant factor. It also considered that that conclusion was in line with the case-law arising from the judgments of 4 June 2013, i-content v OHIM - Decathlon (BETWIN) (T‑514/11, EU:T:2013:291), and of 4 December 2019, Billa v EUIPO - Boardriders IP Holdings (Billa) (T‑524/18, not published, EU:T:2019:838). According to the Board of Appeal, the finding relating to the difference between the goods was all the more necessary with regard to the goods covered by the earlier word mark and the earlier figurative mark 1 as those marks covered fewer goods than the earlier figurative mark 2.

27      The applicant submits that the Board of Appeal erred in finding that the goods at issue were different. It takes the view, in essence, that the two general categories of goods covered by the signs at issue include identical specific goods, namely skipping ropes or hula hoops. It adds that there is identity between two broad categories of goods where they overlap, at least in part. In that regard, the applicant refers to the various judgments of the General Court. Thus, the general categories of ‘toys’, covered by the earlier mark 2, and ‘sporting articles’, covered by the contested mark, include similar specific goods, namely balls for children, balls and balls for sports. The applicant concludes that, if those specific goods are, on the one hand, identical and, on the other hand, similar, then there is, as regards the former goods, a partial identity between the two general categories of goods and, as regards the latter goods, a similarity between those same categories.

28      In that regard, the applicant criticises the Board of Appeal, first, for not having taken into account the identical nature of several subcategories included in the general categories of goods covered by the signs at issue.

29      Secondly, the applicant submits that the Board of Appeal incorrectly defined the intended purpose of the goods covered by the mark applied for and the goods covered, inter alia, by the earlier figurative mark 2.

30      Thirdly, the applicant submits that the Board of Appeal wrongly failed to take into account, for the purposes of assessing the similarity of the goods at issue, the identical method of use of those goods.

31      Fourthly, the Board of Appeal wrongly found that the manufacturers and the distribution channels of the goods covered by the signs at issue were different.

32      Fifthly, the applicant claims, in essence, that, in view of the fact that the assessment of the similarity between the goods ‘Games, toys’ and ‘Gymnastic and sporting articles’ is based on the arguments and facts submitted by the parties, the Board of Appeal erred in finding that the case-law arising from the judgments of 4 June 2013, BETWIN (T‑514/11, EU:T:2013:291), and of 4 December 2019, Billa (T‑524/18, not published, EU:T:2019:838), was relevant for the purposes of the comparison of the goods at issue.

33      EUIPO disputes the applicant’s arguments.

34      As a preliminary point, it should be noted that, in order to assess the identity or similarity of the goods at issue, the group or description of the goods protected by the marks at issue must be taken into account and not the goods actually marketed or to be marketed under those marks (see judgment of 20 October 2021, Intis v EUIPO - Televes (TELEVEND), T‑112/20, not published, EU:T:2021:710, paragraph 36 and the case-law cited).

35      As a further preliminary point, it should be noted that it follows, in essence, from the case-law that the goods ‘Games, toys’ and the goods ‘Gymnastic and sporting articles’ are different because they have a different nature, intended purpose and distribution channels, and are not interchangeable or in competition with each other (see, to that effect, judgments of 4 June 2013, BETWIN, T‑514/11, EU:T:2013:291, paragraphs 35 to 39 (not published), and of 4 December 2019, Billa, T‑524/18, not published, EU:T:2019:838, paragraphs 44 to 47).

36      That said, it should be noted, first, that the Board of Appeal took the view that the finding in the judgments referred to in paragraph 32 above that, in essence, there is no similarity between ‘gymnastic and sporting articles’ and ‘games, toys’ was applicable in the present case. In that regard, it must be recalled that there is nothing in principle to prevent the Board of Appeal from following the reasoning of a judgment of the EU judicature, if it considers that it applies to the case in question (judgment of 2 July 2015, BH Stores v OHIM - Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 37).

37      Secondly, and in any event, it follows from the context of the contested decision and, more specifically, from paragraphs 20 to 26, that the Board of Appeal, first, analysed the facts and arguments presented by the parties and, secondly, rightly held that they did not allow a departure from the conclusion resulting from the judgments of 4 June 2013, BETWIN (T‑514/11, EU:T:2013:291), and of 4 December 2019, Billa (T‑524/18, not published, EU:T:2019:838).

38      In that regard, first, the finding that, in the judgment of 4 June 2013, BETWIN (T‑514/11, EU:T:2013:291), the specific goods in the general category of ‘toys, games and playthings’ were compared is irrelevant, since all of those goods fall within the same general category as that covered by the earlier figurative mark 2, namely that of ‘games, toys’, which the Board of Appeal correctly took into account within the meaning of the case-law referred to in paragraph 34 above, for the purposes of comparing the goods covered by the signs at issue. Secondly, in addition to that claim being contradictory to the previous finding, it should be noted that the applicant’s claim that it examined in detail the specific goods and their common purpose covered by the signs at issue is also irrelevant, in the light of that case-law. It is not for EUIPO, when comparing general categories of goods covered by the signs at issue, to rule on certain specific goods which they contain.

39      In the first place, as regards the alleged identity of the goods at issue, first, on account of their composition, which is also allegedly identical, it must be held that it is true that certain goods falling within the general categories of the abovementioned goods may be manufactured using the same materials. However, as is apparent from the examples of the goods referred to by the applicant, namely balls, rackets, skipping ropes, hula hoops, puzzle mats and play guns, which are composed of materials such as plastic, rubber, leather, wood or metal, or ethylene-acetate with regard in particular to puzzle mats, those materials are very varied. The same material can be used to manufacture a wide range of totally different goods (see, to that effect, judgment of 2 July 2015, ALEX, T‑657/13, EU:T:2015:449, paragraph 58), with the result that that fact is not sufficient to establish that the goods at issue are similar.

40      Secondly, as regards the applicant’s argument concerning the alleged identical durability of the goods at issue, in addition to the unsubstantiated nature of that argument, it must be held, as is apparent from paragraph 39 above, that, in the light of the very varied composition of ‘gymnastic and sporting articles’, on the one hand, and that of ‘games, toys’, on the other, their resistance to repeated use over time is also very varied. Therefore, the applicant cannot reasonably claim that the goods covered by the signs at issue will have the same durability, with the result that that characteristic is not capable, in the particular circumstances of the present case, of establishing that the abovementioned goods are identical.

41      Thirdly, as regards the applicant’s argument relating to the identical shape of certain goods allegedly falling within both categories of goods covered by the signs at issue, it must be held that a wide variety of goods, which are, moreover, very different, may share the same shape. In the present case, as is apparent from the evidence produced by the applicant, goods such as balls, rackets, skipping ropes and hula hoops, to take some examples of the goods covered by the earlier figurative mark 2 and referred to by the applicant, are different in appearance on account of the size of their sporting equivalents designated by the mark applied for. That difference in appearance is even greater as regards the play guns, also referred to by the applicant, because those play guns are less technical in comparison with their sporting equivalents.

42      In the second place, as regards the allegedly similar or identical intended purpose of the goods covered by the signs at issue, as claimed by the applicant, even if it cannot be ruled out that a link can be drawn between certain goods within ‘gymnastic and sporting articles’ and those falling within ‘games, toys’, in so far as certain sporting articles can also be used for games and certain games can also be sporting articles (judgment of 4 June 2013, BETWIN, T‑514/11, EU:T:2013:291, paragraph 36 (not published)), such an assumption does not call into question the fact that the intended purpose of those two categories of goods is essentially different. As the Board of Appeal correctly held, with reference to the case-law deriving from the judgments of 4 June 2013, BETWIN (T‑514/11, EU:T:2013:291, paragraph 36 (not published)), and of 4 December 2019, Billa (T‑524/18, not published, EU:T:2019:838, paragraph 45), ‘gymnastic and sporting articles’ had a different intended purpose from ‘games, toys’, since the former were essentially intended to train the body through physical exercise, whereas the latter were intended first and foremost to entertain their users.

43      Contrary to what the applicant claims, the fact that several intended purposes may overlap in the same product does not rule out the possibility of identifying a dominant, or in other words ‘primary’, purpose of a product. The term ‘use’, within the meaning of the case-law referred to in paragraph 25 above, means the generally intended use of the product and not any misuse or occasional use (see, to that effect, judgment of 4 December 2019, Billa, T‑524/18, not published, EU:T:2019:838, paragraph 45 and the case-law cited).

44      In the present case, the applicant has failed to demonstrate that the dominant, or indeed ‘primary’, purpose of the goods covered by the signs at issue is identical, with the result that the applicant’s argument is not such as to invalidate the Board of Appeal’s finding relating to the different intended purpose of the goods covered by those signs.

45      In the third place, as regards the applicant’s claims that the Board of Appeal did not take into account the allegedly identical method of use of the goods covered by the signs at issue, first, it must be stated that, contrary to what the applicant claims, in view of the variety of goods included in the categories of ‘gymnastic and sporting articles’ and that of ‘games, toys’, the way in which some of the goods are used cannot determine the similarity of all the goods covered by the signs at issue.

46      Secondly, and in any event, it must be held that the fact that goods such as those referred to in paragraphs 27 and 39 above are used in the same way, namely with feet, hands or by moving the body continually, is not significant, since that is the case for numerous goods which have a primary purpose other than a sport (manual tools, cleaning and construction instruments, etc.).

47      In the fourth place, it should be noted, contrary to what the applicant claims, that the goods at issue are manufactured, in general, by specialist undertakings and are distributed through different distribution channels, in specialist shops, with the result that those goods are different.

48      First, as regards the applicant’s argument that, for the purposes of the comparison of the goods covered by the signs at issue, the Board of Appeal should have based its analysis on manufacturers such as Schildkröt, Sport-Thieme and Hudora which manufacture all the goods at issue, it must be held that those examples constitute rare phenomena, and as is apparent from the evidence produced by the applicant, in respect of a very limited number of the goods, with the result that those examples are not capable, without other evidence in support, of establishing the identity of the manufacturers for all the products covered by the signs at issue.

49      In any event, it must be held that the applicant’s claim that manufacturers such as Adidas, Puma and Nike also sell mini balls or skipping ropes cannot invalidate the Board of Appeal’s finding that the manufacturers of the goods covered by the signs at issue are different. As is apparent from the evidence, those manufacturers, which, moreover, are not known for the production of ‘games, toys’, sell mini balls or skipping ropes for sporting activities and not, contrary to what the applicant claims, for games.

50      In those circumstances, it must be held that the applicant has failed to demonstrate that the manufacturers of the goods covered by the signs at issue can generally coincide, since a few isolated examples are not sufficient to establish that the manufacturers of those goods are identical.

51      Secondly, as regards the applicant’s argument that the Board of Appeal did not substantiate its conclusion on the difference in the distribution channels of the goods covered by the signs at issue by any finding or evidence, it is sufficient to recall that, in paragraphs 22 and 23 of the contested decision, after referring to the case-law according to which the distribution channels for those goods are generally different and analysing the evidence produced by the applicant, the Board of Appeal concluded that the distribution channels for the goods covered by the signs at issue differed. Therefore, that argument of the applicant must be rejected as unfounded.

52      As regards the evidence on which the applicant relies in order to claim that the goods covered by the signs at issue are distributed through the same channels, it must be held that it does not demonstrate any new or dominant market realities making it possible to establish a general tendency of the identity of the distribution channels of the goods covered by the signs at issue.

53      As regards, first of all, the evidence relating to online sales of skipping ropes and of hula hoops in the category, in essence, of toys on the website of a large retailer ‘vedes.com’, although those goods are placed in the category, in essence, of sporting articles on the websites of large retailers such as Amazon, ‘galaxus.de’ and ‘globetrotter.de’, it must be noted that in the light of the variety of products covered by the categories ‘gymnastic and sporting goods’ and ‘games, toys’, two examples of the products raised by the applicant are borderline cases and, in any event, as submitted by EUIPO in its reply, do not show how those products are displayed or sold to consumers in brick-and-mortar shops.

54      Next, as regards the evidence from an international toy trade fair in Nuremberg (Germany), it must be held that, although gymnastic or sporting articles, intended for children in the form of toys or made up to serve as complementary products for games, are offered in that trade fair, that evidence does not show, contrary to what the applicant claims, that all the goods covered by the signs at issue are commonly presented in toy trade fairs and in catalogues, which are not, moreover, regarded as normal distribution channels.

55      In any event, it must be borne in mind that the relevant public consists, inter alia, of the general public (see paragraph 22 above). Since it is well known that that trade fair is addressed only to the professional public, the evidence relating to the goods which are distributed there is of only very limited, if not non-existent, value in the assessment of the similarity of the goods at issue.

56      Accordingly, it must be held that that evidence, contrary to what the applicant claims, is not such as to invalidate the Board of Appeal’s finding that, as a general rule, the goods of the signs at issue are distributed by different specialised shops or sold in separate specialist departments of department stores.

57      In the fifth place, having regard to the differences noted between the goods covered by the signs at issue, the applicant’s argument that the goods should be regarded as similar, or even identical, when two general categories overlap, at least in part, cannot be accepted.

58      In that regard, it must be found that the various judgments cited by the applicant are irrelevant in so far as they concern different factual situations and, in any event, apply different principles from those relied on by the applicant in support of its arguments.

59      First, concerning the judgments of 9 September 2008, Honda Motor Europe v OHIM - Seat (MAGIC SEAT) (T‑363/06, EU:T:2008:319, paragraph 22), of 17 September 2008, FVB v OHIM - FVD (FVB) (T‑10/07, not published, EU:T:2008:380, paragraph 41), of 10 November 2016, Polo Club v EUIPO - Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN) (T‑67/15, not published, EU:T:2016:657, paragraph 37), of 5 October 2020, X-cen-tek v EUIPO - Altenloh, Brinck & Co. (PAX) (T‑847/19, not published, EU:T:2020:472, paragraph 46), and the order of 21 May 2021, TrekStor v EUIPO - Yuneec Europe (Breeze) (T‑158/20, not published, EU:T:2021:288), it should be noted that, in those judgments, the General Court found that the identity of the goods resulted from the fact that the goods covered by the earlier mark included goods designated by the mark applied for and not the identity of two broad categories of goods because of their partial overlap.

60      Secondly, as regards the other judgments of the General Court, namely the judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE) (T‑106/00, EU:T:2002:43, paragraph 46), of 20 March 2002, DaimlerChrysler v OHIM (TELE AID) (T‑355/00, EU:T:2002:79, paragraph 34), and of 14 September 2004, Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION) (T‑183/03, EU:T:2004:263, paragraph 25), to cite only a few examples relied on by the applicant, those judgments concern the assessment of the descriptive character of an element making up a mark and not the assessment of the similarity of the goods covered by the signs at issue.

61      In any event, within the meaning of the case-law referred to in paragraph 34 above, the applicant is wrong to claim that the broad categories of goods covered by the signs at issue are similar, or even identical, on the basis of a number of specific goods.

62      In the sixth and last place, it must be held that, contrary to what the applicant claims, the Board of Appeal was also right to find, in paragraph 28 of the contested decision, that the finding relating to the difference between the goods covered by the mark applied for and the earlier mark 2 also applied to the earlier word mark and the earlier figurative mark 1 referred to in paragraph 5 above, irrespective of whether proof of use was provided for all the goods for which those earlier marks were registered. In that regard, it is sufficient to note, as the Board of Appeal correctly pointed out, that those marks cover fewer goods, which are, moreover, different from those designated by the mark applied for, as follows from paragraphs 36 to 61 above.

63      In the light of all the foregoing, it must be held that the applicant has not demonstrated that the goods covered by the signs at issue, namely ‘gymnastic and sporting articles’ and ‘games, toys’, were similar or even identical. The applicant’s arguments relating to the comparison of the goods covered by the signs at issue must therefore be rejected.

 The overall assessment of the likelihood of confusion

64      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

65      In paragraphs 27 and 28, read in conjunction with paragraph 39 of the contested decision, after noting that one of the cumulative conditions for the application of Article 8(1)(b) of Regulation 2017/1001, namely the similarity of the goods, was not satisfied, the Board of Appeal found, in essence, that there was no likelihood of confusion.

66      The applicant disputes the Board of Appeal’s finding set out in paragraph 65 above. It considers that the goods covered by the signs at issue are similar, if not highly similar or identical, and that the signs at issue are also highly similar. It also submits that, in view of the at least normal inherent distinctiveness of the earlier mark and a high degree of similarity between those signs, a low degree of similarity between the goods at issue is sufficient not to rule out a likelihood of confusion.

67      EUIPO disputes the applicant’s arguments.

68      It should be recalled, as follows from paragraphs 36 to 63 above, that the Board of Appeal, contrary to what is claimed by the applicant, rightly found that ‘gymnastic and sporting articles’, designated by the mark applied for, and ‘games, toys’, covered by the earlier figurative mark 2, were different. That finding also applies to the other earlier marks referred to in paragraph 5 above, without the applicant having demonstrated the contrary.

69      In that regard, it is sufficient to note that since the goods are different, one of the cumulative conditions for the application of Article 8(1)(b) of Regulation 2017/1001 is not satisfied. Accordingly, it must be held that the Board of Appeal did not err in finding that there was no likelihood of confusion within the meaning of that article, without it being necessary to rule on the applicant’s other arguments summarised in paragraph 66 above.

70      It follows from the foregoing that the applicant’s first plea must be rejected as unfounded.

 The second plea in law, alleging infringement of Article 8(4) of Regulation 2017/1001

71      Under Article 8(4) of Regulation 2017/1001, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for is not to be registered where and to the extent that, pursuant to EU legislation or the law of the Member State governing that sign, first, rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark and, secondly, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

72      Pursuant to Article 8(4) of Regulation 2017/1001, the proprietor of a non-registered trade mark may oppose the registration of an EU trade mark if that non-registered trade mark satisfies four cumulative conditions. The non-registered trade mark must be used in the course of trade; it must be of more than mere local significance; the right to that mark must have been acquired pursuant to the law of the Member State in which the mark was used, prior to the date of application for registration of the EU trade mark; lastly, that mark must confer on its proprietor the right to prohibit the use of a subsequent trade mark. While the first two conditions must be interpreted in the light of EU law, the last two are to be assessed in the light of the law governing the sign concerned (see, by analogy, judgment of 17 January 2019, Turbo-K International v EUIPO - Turbo-K (TURBO-K), T‑671/17, not published, EU:T:2019:13, paragraph 33 and the case-law cited).

73      According to Article 7(2)(d) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), where the opposition is based on an earlier right within the meaning of Article 8(4) of Regulation 2017/1001, it is for the opposing party to provide, inter alia, evidence showing use of that right in the course of trade of more than mere local significance, as well as evidence of its acquisition, continued existence and scope of protection including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

74      As regards the German legislation relied on by the applicant before EUIPO, Paragraph 5 of the Markengesetz provides:

‘1.      Trade signs and work titles shall be protected as trade descriptions.

2.      Trade signs are signs which, in the course of trade, are used as trade names, company names, or specific designations of a commercial activity or undertaking. Trade descriptions comprise all business signs and other specific signs which distinguish one commercial activity from others and which are considered, by the relevant public, to be distinguishing signs of an undertaking.

…’

75      Paragraph 15(2) of the Markengesetz states:

‘Third parties shall be prohibited from using the commercial designation or a similar sign in the course of trade without authorisation in a manner liable to cause confusion with the protected designation.’

76      In paragraphs 30 to 38 of the contested decision, the Board of Appeal decided that, given, first, the lack of similarity between the goods in question and, secondly, the lack of proximity between the relevant economic sectors, there was no likelihood of confusion. In that regard, it found, first of all, in essence, that the applicant had not produced any relevant case-law of German courts or any national publication to rebut the Opposition Division’s finding that, in the present case, proximity of the relevant economic sectors under German law was excluded because the goods in question were different under Article 8(1)(b) of Regulation 2017/1001. Next, the Board of Appeal found that, even applying the requirements of sector proximity under German law as follows from an earlier decision of the Board of Appeal of 14 March 2017 in Case R 2612/2017-1 (babware.net GmbH/babware), the applicant had not demonstrated that the relevant economic sectors of ‘gymnastic and sporting articles’ and ‘games, toys’ are similar under German law. It found that since the goods covered by the signs at issue and those sectors were far removed because of the difference in their intended purpose, producers and distribution channels, there was no likelihood that consumers might attribute the same commercial origin to them. According to the Board of Appeal, the applicant had therefore not satisfied one of the conditions of Paragraph 15(2) of the Markengesetz.

77      The applicant disputes the Board of Appeal’s assessment. It considers, in essence, that it provided sufficient evidence of the German legislation in support of its arguments based on Article 8(4) of Regulation 2017/1001. Relying on an extract from the leading German commentary on the Markengesetz, provided at the stage of bringing its action before the Court, the applicant submits, first, that it acquired an earlier right for the whole of Germany in its trade name, secondly, that that name is dominated by the element ‘simba toys’ which is clearly similar to the mark applied for and, thirdly, that the distinctive element of its trade name, that is Simba Toys, is at least normal.

78      The applicant claims that it operates not only in the production and distribution of toys and games, but also of certain goods which can also be classified as sporting articles. It therefore considers that there is identity in the economic sectors between the goods covered by the mark applied for and those covered by its trade name. In any event, those sectors are at least similar, since undertakings specialising in gymnastic and sporting articles are present at the ‘toy trade fair’ and the public can expect a toy and games manufacturer to extend its field of activity to the sporting articles sector. It concludes that, in view of the similarity of the signs, the identity or, at the very least, the proximity of the sectors and the normal distinctiveness of the trade name, the likelihood of confusion is clearly established.

79      EUIPO disputes the applicant’s arguments.

80      As a preliminary point, it should be noted that, under Article 7(2)(d) of Delegated Regulation 2018/625, referred to in paragraph 73 above, the Board of Appeal was justified in finding, in essence, that the applicant was required to demonstrate the content of the German legislation in order to substantiate the ground of opposition based on an earlier right under German law.

81      According to the case-law, in essence, it is inter alia by the submission of documents containing the national legislative provisions that the obligation imposed by Article 7(2)(d) of Delegated Regulation 2018/625 can be satisfied (judgment of 28 April 2021, Klaus Berthold v EUIPO - Thomann (HB Harley Benton), T‑284/20, not published, EU:T:2021:218, paragraph 142).

82      In the present case, it must be held, as is apparent from the file, that the applicant discharged its burden of proof under Article 7(2)(d) of Delegated Regulation 2018/625, since it set out, during the administrative procedure before EUIPO, the content of the relevant German legislation by providing publications of that content on the website of the Bundesministerium der Justiz und für Verbraucherschutz (Federal Ministry of Justice and Consumer Protection, Germany). In that regard, although that national legislation does not specify the requirements relating to the assessment of the proximity of the economic sectors, the applicant referred, inter alia, to an earlier decision of the Board of Appeal of 14 March 2017 in Case R 2612/2017-1 (babware.net GmbH/babware), which contained information on those requirements by reference to German legal literature.

83      In those circumstances and within the meaning of the case-law cited in paragraph 81 above, it must be held that, in the present case, the applicant has adduced sufficient evidence of the content of the German legislation in order to substantiate the ground of opposition based on an earlier right under that legislation.

84      In the first place, it should be noted that it follows from the contested decision that the relevant factors for the assessment of the likelihood of confusion within the meaning of the national law referred to in paragraphs 74 and 75 above, which were used in essence by the Board of Appeal, are the proximity of the economic sectors in which the signs at issue are used, the similarity of the signs at issue and the inherent distinctiveness of the earlier right.

85      As regards, in particular, the first factor for assessing the likelihood of confusion, namely the proximity of the relevant economic sectors, on which the main dispute between the parties is focused, it must be held that it is apparent from the documents before the Court that the proximity of the economic sectors, within the meaning of the national law referred to in paragraphs 74 and 75 above, is established if the spheres of activity, despite the fact that they are distant, are objectively linked, so that, despite the difference between the goods covered by the signs at issue, consumers may consider that those goods, which have a similar designation, come from commercially linked undertakings.

86      It is also apparent from the contested decision that the proximity of the economic sectors is to be assessed in the light of various criteria, namely manufacturing-related proximity of the business areas concerned and their products, the intended purpose and their possible applications, the overlaps and similarities of specific customer groups, suitability as an accessory or spare part for each other, the common distribution channels and the fact that they appear at the same trade fairs or in the same advertisements published in the same magazines.

87      In that regard, it should be noted, first, that the applicant’s argument that the economic sectors at issue are identical because it manufactures and distributes not only toys and games, but also goods which can be classified as sporting articles cannot succeed.

88      In support of the argument set out in paragraph 87 above, the applicant refers to goods such as balls, skipping ropes and tag games. The Court notes that the categorisation of a finished product is in principle made according to its function or intended use. As is apparent from paragraph 42 above, gymnastic and sporting articles are used to train the body through physical exercise. However, it must be borne in mind that goods such as balls, skipping ropes and tag games, manufactured and distributed by the applicant, or other goods, as included in the evidence adduced by the applicant, are intended primarily to amuse their users.

89      In those circumstances, it must be held that the applicant cannot validly claim that it manufactures and distributes both toys and games and goods which can be classified as sporting articles in order to establish the identity of the economic sectors relevant to the present case. Moreover, those two sectors are not, by their very definition, identical.

90      Secondly, it must be stated that, in its claim relating to the proximity of the sectors in which the signs at issue are used, the applicant refers to the alleged presence of undertakings specialising in the fields of sporting and gymnastic articles at the ‘toy trade fair’, without specifying to which trade fair it refers. However, in the light of the other arguments raised by the applicant in its application and the evidence produced by the applicant, that reference must be understood as relating to the toy trade fair in Nuremberg.

91      In that regard, it should be noted, as is apparent from paragraph 54 above, that gymnastic or sporting articles presented in the form of toys at the toy trade fair are intended for children or are produced as complementary goods for games. Contrary to what the applicant claims, such evidence does not make it possible to establish the presence in the same places of undertakings specialising in gymnastic and sporting articles, on the one hand, and games and toys, on the other.

92      In any event, even if certain articles manufactured, or distributed, by the applicant could be classified as gymnastic and sporting articles capable of establishing the presence of specialist undertakings in the same places, it must be held that that evidence is not, however, sufficient to demonstrate proximity of the economic sectors in which the signs at issue are used in the light of the criteria set out in paragraph 86 above.

93      As regards the applicant’s argument that third parties can expect a manufacturer of toys and games eventually to extend its field of activity to other sectors, such as that of sporting articles, it must be found that there has been no concrete evidence to substantiate that argument. Furthermore, as EUIPO noted in its response, it is apparent from the documents before the Court that the applicant’s field of activity since its establishment has not been extended to other sectors, such as the sports sector. The applicant’s argument must therefore be rejected as unfounded.

94      In the light of the foregoing, it must be held that the applicant has not demonstrated that there is proximity or identity of the economic sectors for which the signs at issue are used.

95      Thus, the Board of Appeal was right to find that the applicant had not satisfied one of the conditions of Paragraph 15(2) of the Markengesetz, with the result that a likelihood of confusion within the meaning of that provision, read in conjunction with Article 8(4) of Regulation 2017/1001, was also excluded, without it being necessary to rule on the other arguments raised by the applicant in its second plea in law or on the admissibility of the evidence adduced by the applicant for the first time before the Court.

96      Accordingly, the second plea in law put forward by the applicant must be rejected and the action dismissed in its entirety.

 Costs

97      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.

98      Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, 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 Simba Toys GmbH & Co. KG to pay the costs.

Delivered in open court in Luxembourg on 21 December 2022.

*      Language of the case: English.

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