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

JUDGMENT OF THE GENERAL COURT (Tenth Chamber)

14 December 2022 (*) (1)

(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing the superposed capital letters ‘P’ and ‘L’ – Earlier EU figurative mark representing a mirror image combination of the superposed capital letters ‘P’ and ‘L’ – Admissibility of the appeal before the Board of Appeal – Locus standi – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑530/21,

Pierre Lannier, established in Ernolsheim-lès-Saverne (France), represented by N. Boespflug, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Pierre Lang Trading GmbH, established in Vienna (Austria), represented by A. Ginzburg, lawyer,

THE GENERAL COURT (Tenth Chamber),

composed, at the time of the deliberations, of A. Kornezov, President, K. Kowalik-Bańczyk and G. Hesse (Rapporteur), Judges,

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 9 September 2022,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Pierre Lannier, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 June 2021 (Case R 1915/2020-5) (‘the contested decision’).

 Background to the dispute

2        On 13 December 2016, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:

3        The mark applied for designated goods in Class 14 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 corresponding to the following description: ‘Time instruments’.

4        On 2 March 2017, Pierre Lang Europe Handelsges.m.b.H. filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5        The opposition was based, inter alia, on the earlier EU figurative mark reproduced below, registered on 2 February 2015 under number 13 115 563, in respect of, inter alia, goods in Class 14 corresponding to the following description: ‘Jewellery, precious stones, horological and chronometric instruments, pearls and precious metals, statues and figurines of precious metals or semi-precious metals or semi-precious stones [or] imitations thereof, coins, works of art of precious metals, key rings, jewellery boxes and watch boxes, parts and fittings for all of the aforesaid goods’:

6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) 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)).

7        On 31 July 2020, the Opposition Division rejected the opposition in its entirety. It found, in particular, that, although the goods covered by the mark applied for and the earlier mark were identical, there were sufficient differences between the marks at issue to allow any likelihood of confusion to be ruled out on the part of the relevant public.

8        On 30 September 2020, a notice of appeal was filed with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

9        By the contested decision, the Fifth Board of Appeal upheld the appeal, annulled the decision of the Opposition Division and upheld the opposition, taking the view that the differences between the marks at issue were not sufficient to rule out a likelihood of confusion on the part of the relevant public.

 Forms of order sought

10      The applicant claims, in essence, that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

11      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      In support of the action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 67, Article 68(1) and Article 94 of Regulation 2017/1001, as well as Article 22(1) and Article 42(3) 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), and, second, infringement of Article 8(1)(b) of Regulation 2017/1001.

13      Given the date on which the application for registration at issue was filed, namely 13 December 2016, which is decisive for the purpose of identifying the applicable substantive law, 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).

14      Consequently, in the present case, as regards the substantive rules, 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 Article 8(1)(b) of Regulation No 207/2009, the content of which is identical.

15      Furthermore, since, according to settled case-law, 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 dispute before the Board of Appeal was governed by the procedural provisions of Regulation 2017/1001, of Delegated Regulation 2018/625 and of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37).

 The first plea in law, alleging infringement of Article 67, Article 68(1) and Article 94 of Regulation 2017/1001, as well as Article 22(1) and Article 42(3) of Delegated Regulation 2018/625

16      In essence, the applicant makes a number of criticisms of the Board of Appeal’s assessment, in the contested decision, concerning the intervener’s response to the deficiency notified to it by the Registry of the Boards of Appeal. According to the applicant, the Board of Appeal wrongly held that the appeal was admissible. In support of its arguments, it alleges infringement of Article 67, Article 68(1) and Article 94 of Regulation 2017/1001, as well as Article 22(1) and Article 42(3) of Delegated Regulation 2018/625.

17      EUIPO and the intervener, Pierre Lang Trading GmbH, dispute those arguments.

18      In the first place, it is necessary to examine the arguments by which the applicant criticises the Board of Appeal for having declared the intervener’s appeal admissible.

19      As a reminder of the circumstances in the light of which the Board of Appeal examined the admissibility of the appeal before it, it should be noted that, on 2 March 2017, Pierre Lang Europe Handelsges.m.b.H. filed a notice of opposition to registration of the mark applied for pursuant to Article 41(1)(a) of Regulation No 207/2009 (now Article 46(1)(a) of Regulation 2017/1001). As is stated in paragraph 6 above, the ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

20      By a company purchase agreement concluded on 4 April 2019, Pierre Lang Europe Handelsges.m.b.H. was acquired with all its tangible and intangible assets, including all of its trade marks, by the newly formed undertaking PL Schmuckhandels GmbH, whose company name, according to the extract from the Austrian companies register dated 8 January 2021, was amended to Pierre Lang Trading GmbH on 17 May 2019.

21      On 31 July 2020, the Opposition Division rejected the opposition in its entirety.

22      On 30 September 2020, a notice of appeal was filed against the decision of the Opposition Division, by means of a form made available to the interested parties by EUIPO. On that form, the appellant’s name was Pierre Lang Europe Handelsges.m.b.H.

23      On 30 November 2020, a statement setting out the grounds of appeal was filed with EUIPO, within the time limit laid down in Article 68(1) of Regulation 2017/1001, under the name Pierre Lang Europe Ges.m.b.H.

24      On 11 January 2021, following a letter from the Registry of the Boards of Appeal in which that registry invited the appellant before the Board of Appeal to clarify its name, EUIPO received the following documents:

–        a letter stating that the name of the appellant before the Board of Appeal was Pierre Lang Trading GmbH;

–        a new version of the statement setting out the grounds of appeal, in which the name Pierre Lang Trading GmbH was included;

–        the company purchase agreement by which Pierre Lang Europe Handelsges.m.b.H. had been acquired by the intervener;

–        an extract from the Austrian companies register relating to the intervener indicating its change of company name from PL Schmuckhandels GmbH to Pierre Lang Trading GmbH;

–        a copy of the application submitted to EUIPO on 5 January 2021 pursuant to Article 20(4) of Regulation 2017/1001 for registration of the transfer of the earlier mark from Pierre Lang Europe Handelsges.m.b.H. to the intervener.

25      It is in the light of those circumstances that the arguments by which the applicant criticises the Board of Appeal for having declared the intervener’s appeal admissible must be examined.

26      First, the applicant submits that the Board of Appeal infringed Article 67 of Regulation 2017/1001. In particular, it claims that the documents produced by the intervener to rectify the appeal are insufficient. In essence, the applicant submits that the documents produced do not establish the locus standi of the intervener to bring an appeal before the Board of Appeal.

27      It must be observed that, under Article 41(1)(a) of Regulation No 207/2009, applicable at the time, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8 thereof. In respect, as in the present case, of Article 8(1)(b) of that regulation, notices of opposition may be filed, inter alia, by the proprietors of EU trade marks with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

28      In the present case, it is common ground that Pierre Lang Europe Handelsges.m.b.H. was the proprietor of the earlier mark when it filed a notice of opposition, on 2 March 2017, to registration of the mark applied for.

29      In the light of the company purchase agreement produced before the Board of Appeal, it must be noted that, following the purchase, on 4 April 2019, of Pierre Lang Europe Handelsges.m.b.H. and all of its trade marks by the intervener, the latter became the proprietor of the earlier mark.

30      It is apparent from the documents before the Court that, following the rejection, on 31 July 2020, of the opposition to registration of the mark applied for, a notice of appeal was filed with EUIPO on 30 September 2020 against the decision of the Opposition Division. As is apparent from the notice of appeal reproduced on pages 82 and 83 of EUIPO’s file, that notice was filed under the name Pierre Lang Europe Handelsges.m.b.H.

31      In that regard, it must be stated that, according to the case-law, when EUIPO examines the admissibility of an appeal brought before it, it must take into account the Register of European Union trade marks (‘the Register’) (judgment of 11 February 2020, Jakober v EUIPO (Shape of a cup), T‑262/19, not published, EU:T:2020:41, paragraph 23). On the date on which the notice of appeal was filed against the decision of the Opposition Division, the name of the proprietor of the earlier mark set out in the Register was Pierre Lang Europe Handelsges.m.b.H.

32      It is also apparent from the documents before the Court that, in order to fulfil the obligation under Article 68(1) of Regulation 2017/1001, a statement setting out the grounds of appeal was filed with EUIPO on 30 November 2020. The name Pierre Lang Europe Ges.m.b.H. was included in that document.

33      Noting that the statement setting out the grounds of appeal had been filed in the name of an undertaking designated by a name different from that entered in the Register, the Registry of the Boards of Appeal, by letter of 9 December 2020, requested the party which had instituted the appeal proceedings to submit observations in that regard and to produce any documents capable of substantiating those observations.

34      In response to that request, the intervener sought, on 11 January 2021, to correct the name of the appellant before the Board of Appeal as set out in the notice of appeal, relying on Article 21(1)(a) and Article 23(1)(c) of Delegated Regulation 2018/625. It produced, in support of its request, the documents referred to in paragraph 24 above.

35      In that regard, it must be borne in mind that, under Article 21(1)(a) of Delegated Regulation 2018/625, a notice of appeal filed in accordance with Article 68(1) of Regulation 2017/1001 must contain the name of the appellant before the Board of Appeal in the form prescribed in Article 2(1)(b) of Implementing Regulation 2018/626.

36      Where the notice of appeal does not comply with the requirements laid down in Article 21(1)(a) of Delegated Regulation 2018/625, the Board of Appeal must reject the appeal as inadmissible, as provided for in Article 23(1)(c) of that regulation, if, despite having been informed thereof, the appellant has not remedied the deficiency within the prescribed time limit.

37      It follows from a combined reading of Article 21(1)(a) and Article 23(1)(c) of Delegated Regulation 2018/625, as well as Article 2(1)(b) of Implementing Regulation 2018/626, that the incorrect identification of the appellant in the notice of appeal filed in accordance with Article 68(1) of Regulation 2017/1001 is a defect capable of being rectified.

38      In the present case, it must be held that, by submitting to the Registry of the Boards of Appeal the documents referred to in paragraph 24 above, the intervener has established that it was the proprietor of the earlier mark at the time when the appeal was brought before the Board of Appeal. Contrary to the applicant’s assertions, the intervener has also provided explanations regarding the undertakings involved and the various names used. First of all, as is shown in particular by the company purchase agreement of 4 April 2019, the name Pierre Lang Europe Handelsges.m.b.H. is that of the intervener’s predecessor. Next, the insertion of the name Pierre Lang Europe Ges.m.b.H. into the statement setting out the grounds of appeal was the result of a clerical error, as the intervener confirms in paragraph 13 of its response. Lastly, the name Pierre Lang Trading GmbH is the name of the intervener. According to those documents, that name has now been entered in the Register as being that of the proprietor of the earlier mark since 5 January 2021.

39      It follows that the intervener has proved its status as proprietor of the earlier mark on the date on which the appeal was brought, that the incorrect identification of the appellant in the notice of appeal filed in accordance with Article 68(1) of Regulation 2017/1001 is a defect capable of being rectified, and that the intervener corrected the notice of appeal within the prescribed period.

40      Therefore, it must be held that, contrary to the applicant’s assertions, the intervener provided EUIPO with a satisfactory response and corrected its notice of appeal, in accordance with Article 21(1)(a) and Article 23(1)(c) of Delegated Regulation 2018/625, as well as Article 2(1)(b) of Implementing Regulation 2018/626.

41      In addition, as has been emphasised by EUIPO, the intervener was the registered proprietor of the earlier mark as from 5 January 2021. On that basis, it could, in accordance with Article 20(11) and (12) of Regulation 2017/1001, legitimately rectify the appeal.

42      Furthermore, as regards the applicant’s assertion that, on the day on which the appeal was brought before the Board of Appeal, a document in EUIPO’s database showed a complete transfer of the earlier mark to the intervener, it is true that, under Article 112 of Regulation 2017/1001, EUIPO collects and stores certain information in its database.

43      However, it is sufficient to note, as EUIPO did, that that document, which the applicant produced as an annex to the application, in fact concerns international registration No 1 290 848 designating the United States and Japan. That document does not refer to the transfer of the earlier mark to the intervener, but records the entry in the international register held by the International Bureau of the World Intellectual Property Organization (WIPO) of the transfer of an international registration based on the earlier mark in favour of the intervener.

44      Lastly, under the first sentence of Article 23(1) of Regulation No 207/2009, the transfer of a trade mark is to have effects vis-à-vis third parties only after entry in the Register. The lack of effects, vis-à-vis third parties, of transfers which have not been entered in the Register is intended to protect a person who has, or may have, rights in an EU trade mark as an object of property (judgment of 4 February 2016, Hassan, C‑163/15, EU:C:2016:71, paragraph 25).

45      In the light of the foregoing, it must be concluded that, contrary to the applicant’s assertions, the observations submitted by the intervener and the evidence produced in support thereof were sufficient to enable the Board of Appeal to rule, as it did, on the admissibility of the appeal. The applicant’s arguments in that regard must be rejected.

46      As regards, more specifically, Article 67 of Regulation 2017/1001, it should be recalled, as the applicant does, that, under that provision, any party to proceedings adversely affected by a decision may appeal. In the present case, the Opposition Division rejected the opposition based on the earlier mark in its entirety. The intervener, in its capacity as successor to the company which filed that notice of opposition and as proprietor of the earlier mark on the date on which the appeal was brought, was in fact the person harmed by the decision of the Opposition Division.

47      Therefore, the intervener satisfied the conditions laid down in Article 67 of Regulation 2017/1001.

48      It follows that, contrary to the applicant’s assertions, the contested decision does not infringe that provision. All of the applicant’s arguments alleging infringement of Article 67 of Regulation 2017/1001 must be rejected.

49      Secondly, the applicant argues that the Registry of the Boards of Appeal failed to fulfil its obligations under Article 42(3) of Delegated Regulation 2018/625, inasmuch as it neither verified that the person bringing the appeal had the requisite locus standi to do so nor requested the President of the Fifth Board of Appeal to rule without delay on the admissibility of the appeal, having regard to the document in EUIPO’s database showing the complete transfer of the earlier mark.

50      In that regard, first, it follows from paragraph 33 above that, contrary to the applicant’s assertions, the Registry of the Boards of Appeal requested the intervener to prove that it had locus standi for the purpose of bringing an appeal against the decision of the Opposition Division. The Registry of the Boards of Appeal could not therefore have infringed Article 42(3) of Delegated Regulation 2018/625, inasmuch as it is argued that it failed to verify that the person bringing the appeal had the necessary locus standi to do so. Second, in the light of the finding already made in paragraph 43 above, it must be held, without there being any need to examine whether it was for the Registry of the Boards of Appeal to call upon the President of the Fifth Board of Appeal, that the applicant’s arguments cannot succeed in any event.

51      Accordingly, the infringement of Article 42(3) of Delegated Regulation 2018/625 alleged by the applicant has not been established and the arguments raised in that regard must be rejected.

52      Thirdly, the applicant claims that, by declaring the intervener’s appeal admissible, the Board of Appeal infringed Article 68(1) of Regulation 2017/1001.

53      It should be borne in mind that, under that provision, the notice of appeal must be filed in writing with EUIPO within two months of the date of notification of the decision and that, subsequently, a written statement setting out the grounds of appeal must be filed within four months of the date of notification of the decision.

54      It is clear, in the light of paragraphs 30 and 32 above, that the intervener filed the notice of appeal and the statement setting out the grounds of appeal within the time limits laid down in that provision. The applicant’s argument in that regard has no factual basis and must therefore be rejected.

55      As regards the version of the statement setting out the grounds of appeal filed on 11 January 2021 (see paragraph 34 above), it is apparent from the documents before the Court that, as EUIPO contends and as the applicant acknowledges, it was the statement setting out the grounds of appeal filed on 30 November 2020, within the time limit laid down in Article 68(1) of Regulation 2017/1001, which was sent to the applicant and which was taken into account by the Board of Appeal in the contested decision.

56      Therefore, contrary to the applicant’s assertions, the contested decision does not infringe that provision. Its arguments in that regard must therefore be rejected.

57      Fourthly, the applicant submits that, by finding the statement setting out the grounds of appeal to be admissible and, accordingly, extending that finding to the appeal itself, the Board of Appeal infringed Article 22(1) of Delegated Regulation 2018/625.

58      It should be recalled that, under that provision, the statement setting out the grounds of appeal must contain a clear and unambiguous identification of the appeal proceedings to which it refers, the grounds of appeal on which the annulment of the contested decision is requested and the facts, evidence and arguments in support of the grounds invoked.

59      In the present case, the statement setting out the grounds of appeal satisfied the conditions set out in Article 22(1) of Delegated Regulation 2018/625. Although the intervener filed a statement setting out the grounds of appeal under a different name from that entered in the Register, it in any event corrected that clerical error on 11 January 2021, within the time limit set for that purpose by the Registry of the Boards of Appeal.

60      Accordingly, the applicant’s arguments in that regard must be rejected.

61      In the second place, it is necessary to examine the applicant’s arguments alleging infringement of Article 94 of Regulation 2017/1001, in so far as they relate to formal and procedural defects allegedly attributable to the Board of Appeal.

62      First, the applicant submits that the Board of Appeal did not respond to the arguments which it raised regarding the inadmissibility of the appeal.

63      It should be borne in mind that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, according to which the reasoning of the author of the act must be shown clearly and unequivocally. Its purpose is twofold: first, to enable the persons concerned to ascertain the reasons for the measure taken in order to defend their rights and, second, to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all of the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65).

64      In particular, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if they set out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19).

65      It is clear from a reading of the contested decision that the Board of Appeal set out, in paragraphs 15 to 18 of that decision, the reasons why it held, in view of the applicant’s arguments, that the various items of evidence produced by the intervener on 11 January 2021 had been sufficient to rectify the appeal and that that appeal complied with Articles 66 and 67 of Regulation 2017/1001, as well as Article 68(1) thereof. In those paragraphs, the Board of Appeal set out the facts and the legal considerations having decisive importance, with the result that it was not required to address one by one all the arguments put forward by the applicant. The applicant’s arguments in that regard must therefore be rejected.

66      Second, the applicant argues that neither the substance of the intervener’s response to the notification from the Registry of the Boards of Appeal nor its arguments in that regard were in fact discussed; an omission in breach of the second sentence of Article 94(1) of Regulation 2017/1001.

67      It must be borne in mind that, under that provision, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

68      In the present case, it must be noted, as EUIPO did, that that body duly notified the applicant of all the documents exchanged between the Registry of the Boards of Appeal and the intervener during the appeal proceedings. In addition, it is apparent from the documents before the Court that, in the statement filed with EUIPO by the applicant on 22 March 2021, the latter challenged the admissibility of the intervener’s appeal before the Board of Appeal on grounds similar to those set out in its application before the Court. The applicant therefore did in fact present its comments in that regard. Its argument that, in breach of the second sentence of Article 94(1) of Regulation 2017/1001, it was given no opportunity to express its views in that regard has no factual basis and must be rejected.

69      Furthermore, it is apparent from paragraphs 15 to 18 of the contested decision that the Board of Appeal relied on the evidence submitted by the intervener, on which the applicant presented its comments in its statement of 22 March 2021. However, although the applicant submits that the intervener has not had an opportunity to present its comments on the arguments set out in that regard in its statement, it does not establish or even allege that the contested decision is based on those arguments. Consequently, in so far as it is not apparent from the contested decision that that decision is based on those arguments, that failure to present comments cannot establish an infringement of the second sentence of Article 94(1) of Regulation 2017/1001.

70      Accordingly, it must be held that the infringement of the second sentence of Article 94(1) of Regulation 2017/1001 alleged by the applicant has not been established.

71      It follows that the first plea in law, alleging infringement of Article 67, Article 68(1) and Article 94 of Regulation 2017/1001, as well as Article 22(1) and Article 42(3) of Delegated Regulation 2018/625, must be rejected.

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

72      The applicant argues that the Board of Appeal made a number of errors in its assessment of the likelihood of confusion.

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

74      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the 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.

75      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. 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).

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

77      In the present case, as regards the comparison of the goods in question, the parties do not dispute the Opposition Division’s assessment, as endorsed by the Board of Appeal in paragraph 33 of the contested decision, that the ‘time instruments’ in Class 14 covered by the mark applied for were identical to the ‘chronometric instruments’ in the same class covered by the earlier mark.

 The relevant public and territory

78      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

79      The Board of Appeal found, in paragraph 28 of the contested decision, that the goods concerned were aimed at the public at large and at professionals with specific knowledge and expertise. The applicant does not dispute that assessment.

80      However, the applicant argues that, whatever the price of a watch or a clock may be, the relevant public’s level of attention is always high when purchasing those goods, inasmuch as it is not a frequent act, since the lifespan of those goods is fairly long. The purchase of such goods would thus be a deliberate act, given that the relevant public would concern itself with finding a product which is attractive in terms of its model and colours.

81      In that regard, it must be stated that, although the purchase of the goods concerned is not a frequent act and involves making a choice between several models and several colours, those goods vary in price and quality. Therefore, it must be concluded, as the Board of Appeal did, that the level of attention of the relevant public will vary from average to high.

82      Since, according to case-law, the public with the lowest attention level must be taken into consideration (see judgment of 12 December 2019, gastivo portal v EUIPO – La Fourchette (Depiction of a fork on a green background), T‑266/19, not published, EU:T:2019:854, paragraph 21 and the case-law cited), the public with an average level of attention should be taken into consideration in the present case.

83      Furthermore, the applicant does not dispute the Board of Appeal’s finding that, since the earlier mark is an EU trade mark, the relevant territory is that of the European Union.

 The comparison of the signs

84      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

–       The visual similarity

85      In the present case, the Board of Appeal found that a significant part of the relevant public would perceive the mark applied for as being a combination of the superposed capital letters ‘P’ and ‘L’. It held that although the capital letters ‘P’ and ‘L’ were more easily recognisable in the mark applied for than in the earlier mark, the fact remained that a significant part of the relevant public would perceive the earlier mark as being a mirror image combination of the superposed capital letters ‘P’ and ‘L’. It also noted that none of the elements making up the marks at issue could be regarded as being more dominant, that is to say, more eye-catching, than the others. It concluded that there was an average degree of visual similarity between the marks at issue.

86      The applicant claims that the marks at issue are intended to be reproduced, in a small size, on the faces of watches or clocks. It takes the view that the relevant public will attach less importance to the logo affixed to the face of a watch than to the name of that watch’s manufacturer. In particular, it submits that the relevant public will perceive the earlier mark as a purely abstract and figurative sign, characterised by a mirror effect, and that it will not be able to identify the letters. Conversely, the relevant public would identify the capital letters ‘P’ and ‘L’ in the mark applied for. If a significant part of the relevant public were able to recognise the capital letters ‘P’ and ‘L’ also in the earlier mark, the mirror effect which characterises that mark would in any event make an impression on the relevant public. Thus, the applicant takes the view that the mere identification by the relevant public of the capital letters ‘P’ and ‘L’ in the marks at issue does not support the conclusion that there is a visual similarity between those marks. According to the applicant, that is all the more so because, since the marks at issue are short marks, their visual differences are sufficient to rule out any likelihood of confusion.

87      In that regard, it should be noted that although, as the Board of Appeal observed, the capital letters ‘P’ and ‘L’ are less easily recognisable in the earlier mark than in the mark applied for, the vast majority of the relevant public will recognise them as such.

88      Although the visual impression of a mark consists of the overall impression it produces, the fact that some of its elements produce a greater or lesser visual impact cannot be ruled out (judgment of 13 February 2007, Ontex v OHIM – Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 68). In the present case, even if the relevant public normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving one or the other of the marks at issue, it will instinctively break them down into two elements which it recognises, namely the capital letter ‘P’ and the capital letter ‘L’ arranged on top of each other.

89      The marks at issue therefore contain the same capital letters ‘P’ and ‘L’, arranged on top of each other in the same way, in a similar font. As the Board of Appeal correctly found, those common features are such as to establish a visual similarity between those marks, given that the shape created by the superposed capital letters ‘P’ and ‘L’, which appear on the right-hand side of the earlier mark, is reproduced in full in the mark applied for. It is true that the marks at issue differ in so far as the mirror effect created by the symmetrical representation of the combination of the capital letters ‘P’ and ‘L’ is not found in the mark applied for and, in the mark applied for, a space separates the bow of the capital letter ‘P’ from its stem. However, contrary to the applicant’s assertions, that mirror effect will not make an impression on the relevant public to such an extent that it will remember that repetition of the same capital letters ‘P’ and ‘L’ rather than the fact that those letters are superposed. For the reasons set out in paragraph 88 above, the combination of the capital letters ‘P’ and ‘L’ is more likely to influence the overall visual impression created by the marks at issue and, therefore, it will hold the relevant public’s attention more. Thus, the Board of Appeal was right to find, in paragraph 47 of the contested decision, that the differences between the marks at issue were not sufficient to counteract the visual similarity displayed by those marks. For the same reasons, the Board of Appeal’s assessment that neither of the marks at issue has a dominant element must be upheld.

90      Therefore, the Board of Appeal was right to find, in paragraph 49 of the contested decision, that the marks at issue were visually similar to an average degree.

91      That finding is not called into question by the applicant’s other arguments.

92      First, as regards the applicant’s argument that the marks at issue are intended to be reproduced in a small size on the faces of watches and clocks, EUIPO correctly states that the marks at issue will also be affixed to the promotional and marketing material of the goods concerned (see pages 46 to 51 of the EUIPO file). The relevant public will therefore be likely to be confronted with the marks at issue in different sizes. In addition, there is nothing to suggest that the marks at issue would display a lesser degree of visual similarity if they were affixed to the face of a watch in a small size. Whatever the size of the elements common to the two marks, namely the combination of the capital letters ‘P’ and ‘L’ arranged on top of each other in a similar font, the visual impact produced by those elements will remain the same.

93      Moreover, the argument that the relevant public will focus less on the small logo affixed to the face of a watch than to the name of that watch’s manufacturer is not substantiated in any way, since the applicant does not put forward any evidence which would make it possible to understand the extent to which that fact, if proved, could influence the assessment of the degree of visual similarity between the marks at issue.

94      Those arguments must therefore be rejected.

95      Secondly, as regards the applicant’s argument that the marks at issue are short marks whose visual differences are sufficient to rule out any likelihood of confusion, it is clear from the case-law that, even for short marks, some differences will be insufficient if they do not result in a visual difference capable of distinguishing the marks concerned (judgment of 10 October 2019, Biasotto v EUIPO – Oofos (OO), T‑454/18, not published, EU:T:2019:735, paragraph 33). In the present case, it follows from the foregoing, and in particular from paragraphs 87 to 89 above, that the differences between the signs at issue do not result in a visual difference capable of distinguishing those signs. That argument must therefore be rejected.

–       The phonetic similarity

96      The Board of Appeal found that, for the significant part of the relevant public which will be able to identify the capital letters ‘P’ and ‘L’ in the earlier mark, the marks at issue displayed at the very least an average degree of phonetic similarity.

97      As a preliminary point, in so far as the applicant submits that there is nothing in the contested decision stating the reasons on which that assessment of the Board of Appeal is based, it should be borne in mind that the statement of reasons for a measure must be assessed with regard not only to its wording but also to its context and to all of the legal rules governing the matter in question (see paragraph 63 above).

98      In that regard, it is clear from a reading of the contested decision that the Board of Appeal set out the reasons on which the assessment at issue was based. It follows from paragraph 50 of the contested decision that the Board of Appeal stated that, in so far as the relevant public would perceive the capital letters ‘P’ and ‘L’ in the marks at issue, those marks had to be regarded as being pronounceable. Since the capital letters ‘P’ and ‘L’ are a common element of those marks, the Board of Appeal found that the marks displayed at the very least an average degree of phonetic similarity. As is shown by the paragraphs below, those reasons enabled the applicant to understand that part of the contested decision in order to defend its rights and the Court to exercise its power to review the legality of that decision.

99      In the application, the applicant claims that the earlier mark is unpronounceable. It argues that the Court has also held, in a similar case, that marks comparable to the marks at issue were not pronounceable. The applicant therefore takes the view that the marks at issue cannot be compared or are, at most, similar to a low degree. However, in the event that the earlier mark is pronounced by the part of the relevant public which recognises the capital letters ‘P’ and ‘L’, the applicant submits that that public will repeat the letter sequence ‘p’, ‘l’, or the letter sequence ‘l’, ‘p’, whereas it will not do so for the mark applied for. According to the applicant, the pronunciation of the earlier mark is therefore very different from that of the mark applied for.

100    In that regard, it should be recalled that the fact that the capital letters ‘P’ and ‘L’ are superposed will not prevent the vast majority of the relevant public from recognising those letters in the marks at issue. As regards the earlier mark, it is unlikely that the letters ‘p’ and ‘l’ will be pronounced twice. In the perception of the relevant public, the earlier mark is a combination of the capital letters ‘P’ and ‘L’. The relevant public will therefore focus on those letters depicted the right way round, in the direction of reading, which it can read normally. It will not, on the other hand, pronounce the letters depicted the other way round, which it will perceive as being solely a mirror effect.

101    However, it must be noted, as the intervener does, that, although the letters of which the marks at issue consist are in fact likely to be pronounced by the relevant public, it is not possible, on account of those letters being superposed, to determine the order in which the relevant public will pronounce them. The fact remains that that finding applies equally to the earlier mark and the mark applied for. Therefore, regardless of the order in which the relevant public chooses to pronounce the letters of which the marks at issue consist, it will pronounce those marks in the same way.

102    In addition, although EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, it must be borne in mind that the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered, and such an examination must accordingly be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign in question is caught by a ground for refusal (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77).

103    In the present case, the allegedly similar case relied on by the applicant concerned two marks which shared certain characteristics, namely two black interlaced curves surrounded by a black circle, but which, unlike the marks at issue, did not contain any word element. That case was therefore not similar and there was no need to decide in the same way.

104    Consequently, there is no need to call into question the Board of Appeal’s finding that the marks at issue display an average degree of phonetic similarity.

–       The conceptual similarity

105    Conceptually, the Board of Appeal found, in particular, that the mere fact that the capital letters ‘P’ and ‘L’ may serve to describe the marks at issue was not sufficient to establish a conceptual identity or even a conceptual similarity between those marks. The position would be different, according to the Board of Appeal, if the marks at issue had a specific meaning going beyond the mere representation of the capital letters ‘P’ and ‘L’; however, there is nothing in the present case to indicate that those letters are associated with a specific concept.

106    The applicant claims, inter alia, that, even if the relevant public would perceive the capital letters ‘P’ and ‘L’ in the marks at issue, it would not, in the absence of other evidence, be able to determine the origin of those abbreviations.

107    In the present case, it must be noted, as the Board of Appeal did, that the marks at issue do not convey any specific concept likely to be understood by the relevant public.

108    In addition, as is emphasised by the applicant, even if the relevant public were to perceive the marks at issue as being abbreviations, that fact could not, in itself, make a conceptual comparison of the marks at issue possible (see, to that effect, judgment of 4 May 2018, El Corte Inglés v EUIPO – WE Brand (EW), T‑241/16, not published, EU:T:2018:255, paragraph 45), which is not disputed by the intervener.

109    It must therefore be held that a conceptual comparison of the marks at issue is not possible.

 The likelihood of confusion

110    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).

111    In essence, the Board of Appeal observed that the finding of a likelihood of confusion for a significant part of the relevant public was sufficient to uphold an opposition brought against an application for registration of an EU trade mark. It found that a significant part of the relevant public would be able to identify, in the marks at issue, the superposed capital letters ‘P’ and ‘L’. It stated that the marks at issue both had a normal degree of inherent distinctiveness. Accordingly, the Board of Appeal held that, as regards the goods covered by the mark applied for which had been regarded as being identical to the goods covered by the earlier mark, there was a likelihood that a significant part of the relevant public, with an average level of attention, would think, when perceiving the marks at issue, that they had the same commercial origin or that they came from economically linked undertakings.

112    The applicant claims that in view, first, of the high – or very high – level of attention on the part of the relevant public and, second, of the fact that the marks at issue are visually dissimilar or are possibly similar to a low degree, that phonetically they are not capable of being compared or are possibly similar to a low degree, and that conceptually they are not capable of being compared or are dissimilar, any likelihood of confusion between them is precluded, notwithstanding the identical nature of the goods concerned. In particular, the applicant highlights the fact that the relevant public will remember the characteristic mirror effect of the earlier mark. It claims that, to the extent that the relevant public will not encounter that original element in the mark applied for, it will not confuse that mark with the earlier mark.

113    In the present case, it is important to note that the intervener has not contended that the earlier mark had enhanced distinctiveness as a result of the relevant public’s recognition of that mark. It is common ground that the inherent distinctiveness of each of the marks at issue is, as was noted by the Board of Appeal, normal. It also follows from all of the foregoing that the goods concerned are identical and that, for the vast majority of the relevant public, the marks at issue display an average degree of visual and phonetic similarity.

114    Although, as is emphasised by the applicant, the mirror effect of the earlier mark is not encountered by the relevant public in the mark applied for, it must be stated that, in so far as that public will have to rely on the imperfect image of the earlier mark that it has retained in its mind, it will likely perceive the mark applied for as a variant of the earlier mark and will attribute the same commercial origin to it.

115    The Board of Appeal was therefore right to find that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009.

116    In the light of all the foregoing considerations, the second plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

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

On those grounds,

THE GENERAL COURT (Tenth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Pierre Lannier to pay the costs.

Delivered in open court in Luxembourg on 14 December 2022.

*      Language of the case: English.

1      This judgment is published in extract form.

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