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

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

8 March 2023 (*)

(EU trade mark – Opposition proceedings – Application for EU word mark Sympathy Inside – Earlier EU word mark INSIDE. – 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) – Genuine use of the earlier mark – Point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001) – No alteration of distinctive character)

In Case T‑372/21,

Sympatex Technologies GmbH, established in Unterföhring (Germany), represented by E. Strauß, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Predonzani and D. Gája, acting as Agents,

defendant,

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

Liwe Española, SA, established in Puente Tocinos (Spain), represented by Á. Pérez Lluna, lawyer,

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov, President, G. De Baere and S. Kingston (Rapporteur), 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, Sympatex Technologies GmbH, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 April 2021 (Case R 1777/2018-5) (‘the contested decision’).

I.      Background to the dispute

2        On 25 January 2017, the applicant filed an application for registration of an EU trade mark with EUIPO for the word sign Sympathy Inside, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3        The mark applied for covered goods and services in, inter alia, Classes 25 and 35 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, corresponding, for each of those classes, to the following description:

–        Class 25: ‘Clothes – articles; Footwear; Headgear; Gloves [clothing]; outwear; Clothing’;

–        Class 35: ‘Retailing and wholesaling and online and catalogue mail order sales in the fields of leather and textile-impregnating preparations, namely for footwear and clothing, bleaching preparations and other substances for laundry use, namely conditioner for laundry, shoe care preparations, waterproof, water vapour-permeable membranes, waterproof, water vapour-permeable membranes of polymers being semi-finished products for textile and technical composites and for use in the production of textiles and other composites, waterproof, water vapour-permeable polyethylene being a semi-finished product of polymers for textile and technical composites, woven fabrics and textiles, knitted fabrics and knitwear, jersey fabrics, fabric, net fabrics, non-wovens and non-woven textile fabrics, textiles and textile goods, printed fabrics, coated textile goods, laminated textile goods, textile composites, pile fabrics, tablecloths, bed and table covers, clothing, footwear, headgear, gloves, outerclothing, items of clothing’.

4        On 14 June 2017, the intervener, Liwe Española SA, 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 earlier EU word mark INSIDE., which covers, inter alia, goods in Classes 25 and 35 and corresponds, for each of those classes, to the following description:

–        Class 25: ‘Clothing, footwear, headgear; belts, handkerchiefs, bandanas (neckerchiefs), bathing suits, underwear; gloves (clothing); earmuffs (clothing); furs (clothing)’;

–        Class 35: ‘Advertising, import and export of precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, necklaces, earrings, bracelets, rings, clothing, footwear, headgear, belts, handkerchiefs, bandanas (neckerchiefs), bathing suits, underwear, gloves (clothing), ear muffs (clothing), furs (clothing); wholesaling, retailing in shops and selling via global computer networks of precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, necklaces, earrings, bracelets, rings, clothing, footwear, headgear, belts, handkerchiefs, bandanas (neckerchiefs), bathing suits, underwear, gloves (clothing), ear muffs (clothing), furs (clothing); franchise-issuing relating to commercial management assistance’.

6        One of the grounds relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

7        Following the applicant’s request to that effect, EUIPO asked the intervener to produce evidence to prove genuine use of the earlier mark relied on in support of the opposition. The intervener complied with that request within the prescribed period.

8        On 17 July 2018, the Opposition Division first concluded that genuine use of the earlier mark had been proved only for ‘Clothing, footwear, headgear’ in Class 25. It then partially upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, rejecting the application for registration for the following goods and services:

–        Class 25: ‘Clothes – articles; footwear; headgear; gloves [clothing]; outwear; clothing’;

–        Class 35: ‘Retailing and wholesaling and online and catalogue mail order sales in the fields of knitwear, textile goods, coated textile goods, laminated textile goods, clothing, footwear, headgear, gloves, outerclothing, items of clothing’.

9        On 10 September 2018, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

10      By the contested decision, the Board of Appeal dismissed the appeal in its entirety.

II.    Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the opposition filed against the mark applied for in its entirety;

–        order EUIPO to pay the costs of the court proceedings and the intervener to pay the costs incurred before the Board of Appeal and the Opposition Division.

12      EUIPO and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

III. Law

A.      The applicable law ratione temporis

13      Given the date on which the application for registration at issue was filed, that is to say, 25 January 2017, 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 as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21) (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      Moreover, in the present case, so far as the substantive rules are concerned, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to either point (a) of the second subparagraph of Article 18(1) and Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to point (a) of the second subparagraph of Article 15(1) and Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

15      Furthermore, in so far as, 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 is governed by the procedural provisions of Regulation 2017/1001 and 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).

B.      Substance

1.      The first plea in law, alleging infringement of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009

16      In support of the first plea in law, the applicant puts forward, in essence, two parts alleging, first, that the earlier mark was not used in the form in which it was registered and, secondly, insufficient proof of use of the earlier mark.

(a)    The first part, alleging that the earlier mark was not used in the form in which it was registered

17      The applicant submits that the earlier mark was not used in the form in which it was registered since, first, none of the evidence produced by the intervener shows the earlier mark represented with the full stop. Secondly, most of that evidence shows use of three graphic representations which alter the distinctive character of the earlier mark as registered and which are also registered as figurative marks, with the result that they cannot constitute proof of use of the earlier mark. Thirdly, the use of the abbreviation ‘INSD’ also does not amount to use of the earlier mark. Fourthly, the evidence which shows use of the word ‘inside’ without any figurative aspect does not fall within the relevant period of use.

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

19      In accordance with point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 ‘use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’ constitutes genuine use.

20      The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark used and the form in which the mark was registered, is to allow its proprietor in the commercial exploitation of the sign to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 28 June 2017, Josel v EUIPO – Nationale-Nederlanden Nederland (NN), T‑333/15, not published, EU:T:2017:444, paragraph 33 and the case-law cited).

21      In order to establish a change in the distinctive character of the registered trade mark it is necessary to perform an examination of the distinctive and dominant character of the elements which have been added, based on the intrinsic qualities of each of these elements as well as the relative position of the various elements in the configuration of the trade mark (see judgment of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited).

22      In order for point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign and their weak distinctive character (see judgment of 10 October 2018, LA Superquimica v EUIPO – D-Tack (D-TACK), T‑24/17, not published, EU:T:2018:668, paragraph 48 and the case-law cited).

23      In the present case, the Board of Appeal stated, in paragraph 32 of the contested decision, that the differences between the earlier mark as registered and as used in the course of trade to designate ‘clothing, footwear, headgear’ in Class 25 did not alter the distinctive character of the earlier mark as registered.

24      In paragraphs 27 to 31 of the contested decision, it found, in essence, first, that the missing full stop in the evidence constituted a minor difference which did not deprive the earlier mark of its distinctive character. Secondly, it noted that it was not decisive that the graphic representations used by the intervener were also registered as trade marks. Furthermore, those graphic representations would be understood as principally consisting of the term ‘inside’ and the additional figurative elements respond to the marketing and promotion requirements and do not alter the distinctive character of the earlier mark as registered. Lastly, in any event, the evidence does not relate exclusively to the graphic representations referred to by the applicant. On the contrary, there is ample use of the word ‘inside’ alone, as the sole word element, without any addition of figurative elements.

25      In the first place, the applicant submits that none of the evidence produced by the intervener shows the earlier mark represented with a full stop at the end. In so far as the word element ‘inside’ of the earlier mark is very well known as a common word in the English language, the full stop cannot be disregarded.

26      In that regard, it must be held that the evidence does not show the earlier mark represented with the full stop.

27      However, even if the term ‘inside’ must be understood as a common word in the English language, the fact remains that the full stop in the earlier mark occupies a secondary position in relation to the word element ‘inside’, is hardly noticeable and has no distinctive character. Where the element of the earlier mark as registered, which is omitted in the signs as used, is in a secondary and non-distinctive position, its omission does not alter the distinctive character of the earlier mark (see, to that effect, judgment of 14 December 2016, PAL-Bullermann v EUIPO – Symaga (PAL), T‑397/15, not published, EU:T:2016:730, paragraph 36 and the case-law cited). In those circumstances, the Board of Appeal was right to find that the absence of a full stop in the evidence constituted a minor difference which does not deprive the earlier mark of its distinctive character (see, to that effect, judgment of 29 February 2012, Certmedica International v OHIM-Lehning entreprise (L112), T‑77/10 and T‑78/10, not published, EU:T:2012:95, paragraph 53).

28      In the second place, the applicant submits that most of the evidence submitted shows use of the three graphic representations reproduced below, which are not broadly equivalent to the registered form of the earlier mark:

29      According to the applicant, the first two graphic representations divide the sign into two words, namely ‘in’ and ‘side’, with the result that it will not be understood as the single word ‘inside’. In addition, it is apparent from the judgment of 28 April 2021, Klaus Berthold v EUIPO – Thomann (HB Harley Benton) (T‑284/20, not published, EU:T:2021:218, paragraph 106), that a word sign protects graphic elements in so far as they are in a normal typeface. However, that does not include the distinctive and specific graphic elements. Lastly, the three graphic representations are protected as separate trade marks. Consequently, the intervener provided evidence of use in relation to marks which are not the one on which the opposition is based.

30      In that regard, first, it must be held that the earlier trade mark as registered consists of the word element ‘inside’ followed by a full stop. As was noted, in essence, in paragraph 27 above, the full stop is a negligible element of the earlier mark. It must therefore be held that the word element ‘inside’ of the earlier mark is its distinctive and dominant element.

31      Secondly, as regards the three graphic representations used by the intervener, reproduced in paragraph 28 above, it must first of all be noted that the first of them reproduces the word element ‘inside’ in a slightly stylised typeface on a black background, of which the first two letters ‘i’ and ‘n’, in yellow, are placed in a yellow circular frame, whereas the last four letters ‘s’, ‘i’, ‘d’ and ‘e’ are written in white. The second graphic representation is almost identical to the first, given that it differs from it solely in terms of the white colour of the background and the black colour of all the letters and the circular frame. The third graphic representation reproduces only the group of letters ‘in’ placed within a black, circular frame, against a white background.

32      Next, it should be noted that although the first two graphic representations frequently appear in the evidence filed by the intervener, that is not the case with regard to the third graphic representation, which appears only on one occasion in the catalogue (exhibit No 5), and not in most of the evidence, contrary to what the applicant claims. In those circumstances, it cannot be held that the latter graphic representation is particularly representative of the use that has been made of the earlier mark. It is therefore necessary to examine only the first two graphic representations, as indeed the Board of Appeal did in paragraph 29 of the contested decision, and to determine whether or not their figurative elements alter the distinctive character of the earlier mark.

33      In that regard, it must be noted that a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. As a consequence, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see judgment of 16 September 2013, Müller-Boré & Partner v OHIM – Popp and Others (MBP), T‑338/09, not published, EU:T:2013:447, paragraph 54 and the case-law cited). In addition, it is settled case-law that the specific presentation of such a mark is irrelevant. The specific representation of a word mark is not generally of such a nature as to alter the distinctive character of that mark as registered (see judgment of 23 September 2015, L’Oréal v OHIM – Cosmética Cabinas (AINHOA), T‑426/13, not published, EU:T:2015:669, paragraph 28 and the case-law cited).

34      Thus, since the earlier registered trade mark is a word mark, the intervener was free to choose its particular presentation and to prove use of it by means of actual representations of that mark. Graphic representations used in respect of the registered mark may be taken into consideration for the purposes of proving its use, provided that they do not alter the distinctive character of that mark as registered (see, to that effect, judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 56).

35      In the present case, it must be held that the first two graphic representations reproduce the distinctive and dominant word element ‘inside’ of the earlier mark. As regards their figurative elements, they are limited to the addition of a circular frame placed around the group of letters ‘in’, a slight stylisation of the typeface and a variation in colours and background. Accordingly, those figurative elements are not particularly imposing, they have a purely decorative function, do not play a significant role in the overall impression of the sign and have no inherent semantic content of their own which would lend the mark distinctive character or designate the goods or services at issue (see, to that effect, judgment of 8 July 2020, GNC LIVE WELL, T‑686/19, not published, EU:T:2020:320, paragraph 59). Therefore, contrary to what the applicant claims, the graphic elements in question are neither distinctive nor dominant.

36      Furthermore, as regards the applicant’s argument that the word element reproduced in the graphic representations at issue will be perceived as two distinct word elements, namely ‘in’ and ‘side’, it must be noted, as the Board of Appeal found in paragraph 30 of the contested decision, that all the letters are placed on the same line and without a space, to form a single word, in the same size and with the same graphic representation, so that the graphic representations in question, viewed as a whole, will be understood as being composed of the single word ‘inside’. The applicant’s argument cannot therefore succeed.

37      Finally, contrary to what the applicant claims, the possibility for the proprietor of a registered trade mark to rely, in order to establish use of the trade mark for the purposes of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two altering the distinctive character of that trade mark, is not affected by the fact that that different form is itself registered as a trade mark (see, to that effect, judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 27).

38      It follows from the above considerations that the addition of figurative elements in the two graphic representations in question is not, by its nature nor by its meaning or its size, capable of altering the overall impression created by the representations used by the intervener, the most distinctive element of which continues to be the word element ‘inside’, which constitutes the earlier mark as registered, with the exception only of the full stop, and which preserves its function of indicating the commercial origin of the goods and services in question.

39      In the third place, the applicant submits that the use of the abbreviation ‘INSD’ is not equivalent to use of the earlier mark. However, that abbreviation appears only occasionally in the evidence produced by the intervener, namely on a few clothes reproduced in the pictures of labels and packaging (exhibit No 7). Moreover, in most of those occurrences, the abbreviation ‘INSD’ is used in conjunction with the earlier mark INSIDE on which the opposition is based. Consequently, the applicant’s argument is ineffective.

40      In the fourth place, the applicant submits that the Board of Appeal was wrong to rely on two press articles produced by the intervener (exhibit No 1) to show that the term ‘inside’ is widely used without any figurative aspect, since they do not demonstrate use of the earlier mark for goods in Class 25 and one of them does not date from the relevant period. That argument is ineffective since it is apparent from paragraph 31 of the contested decision that the Board of Appeal did not rely exclusively on those articles, but on a number of photographs of the goods sold by the intervener, reproduced in that decision, which show that the earlier mark is widely used without the addition of figurative elements.

41      Having regard to the preceding considerations, the Board of Appeal rightly concluded, in paragraph 32 of the contested decision, that the differences between the earlier mark as registered and as used in the course of trade to designate ‘clothing, footwear, headgear’ in Class 25 did not alter the distinctive character of the earlier mark as registered.

42      In those circumstances, the first part of the first plea in law must be rejected as unfounded.

(b)    The second part, alleging insufficient proof of use of the earlier mark

43      By the second part of the first plea in law, the applicant submits, in essence, first, that the evidence produced by the intervener does not contain any indications as to the type, time, place and extent of use. Moreover, the evidence of use was not submitted in the language of the case, with the result that it is inadmissible. Secondly, the applicant observes that, contrary to what the Board of Appeal stated in paragraph 22 of the contested decision, it had indeed submitted arguments with regard to the time, place and extent of use in its statement setting out the grounds of appeal, and in its statement of 7 February 2018 filed with the Opposition Division. The fact remains, however, that the Board of Appeal was, in any event, required to examine of its own motion whether the proof of use of the earlier mark satisfied the conditions required in order to demonstrate genuine use.

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

45      In paragraphs 21 and 22 of the contested decision, the Board of Appeal noted, as a preliminary point, that the applicant disputed genuine use of the earlier mark only in so far as it had not been used in the form in which it was registered. It did not submit any arguments against the findings of the Opposition Division’s decision relating to the existence of sufficient evidence as to the time, place and extent of use of the earlier mark for ‘clothing, footwear, headgear’ in Class 25.

46      After examining the applicant’s arguments alleging that the earlier mark had been used in a form which altered its distinctive character, the Board of Appeal found, in paragraph 32 of the contested decision, that the Opposition Division was justified in concluding that the term ‘inside’ had been used and that the differences between the earlier mark as registered and as used in the course of trade to designate ‘clothing, footwear, headgear’ in Class 25 did not alter the distinctive character of the earlier mark as registered.

47      In the first place, as regards the applicant’s complaint that the Board of Appeal was wrong to find that it had not put forward arguments with regard to the time, place and extent of use of the earlier mark, it is clear from the structure, wording and content of the first argument in the statement setting out the grounds of appeal, alleging infringement of Article 42(2) of Regulation No 207/2009, that the applicant’s arguments merely challenged the finding of the Opposition Division that the differences between the earlier mark as registered and as used in the course of trade to designate ‘clothing, footwear, headgear’ in Class 25 did not alter the distinctive character of the earlier mark as registered, as EUIPO correctly submitted in response to a measure of organisation of procedure.

48      It is true that, in its general conclusion relating to the first ground set out in the statement setting out the grounds of appeal, the applicant stated that ‘notwithstanding the above, genuine use of a trademark cannot be proved by means of probabilities or suppositions. The documents are mainly not clear – neither for proving the date nor the extent of use regarding the goods and services [covered by the earlier mark]’. However, it should be borne in mind that, under Article 22(1) (c) of Delegated Regulation 2018/625, a statement setting out the grounds of appeal is to contain a clear and unambiguous identification of the facts, evidence and arguments in support of the grounds invoked. In view, first, of the particularly vague and imprecise nature of the argument referred to above and, secondly, of the structure, wording and content of the first ground in the statement setting out the grounds of appeal, which concern only the alteration of the distinctive character of the earlier mark in its registered form, the Board of Appeal did not err in finding that the applicant had not put forward any specific arguments with regard to the other findings of the Opposition Division as regards the time, place and extent of use of the earlier mark.

49      Similarly, in so far as the applicant claims that the Board of Appeal should also have examined the arguments put forward in the statement of 7 February 2018 that it had filed with the Opposition Division, it must be noted that it follows from Article 22(1)(b) and (c) of Delegated Regulation 2018/625 that it is the statement setting out the grounds of appeal that must make it possible to understand why the Board of Appeal is requested to annul or alter the contested decision (see, to that effect, judgment of 16 May 2011, Atlas Transport v OHIM – Atlas Air (ATLAS), T‑145/08, EU:T:2011:213, paragraphs 41 and 46) and that, consequently, the Board of Appeal is not required to respond to arguments which are not raised in that statement.

50      In the second place, as regards the applicant’s complaint that the Board of Appeal was, in any event, required to re-examine of its own motion whether the proof of use submitted by the intervener satisfied the conditions required in order to demonstrate genuine use of the earlier mark, it must first be noted that, in accordance with settled case-law, a request for proof of genuine use of the earlier mark adds to the opposition proceedings the specific and preliminary question of genuine use of the earlier mark which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper (judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraphs 31 and 32; see, also, judgment of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 35 and the case-law cited).

51      Thus, where the Opposition Division concludes that proof of genuine use of the earlier mark has been provided and, accordingly, upholds the opposition, the Board of Appeal may examine the question of that proof only if the applicant for the mark raises it specifically in its appeal before that board (see judgment of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 23 and the case-law cited).

52      In the present case, it must be held that the issue of proof of genuine use, for the purposes of Article 42(2) of Regulation No 207/2009, was raised before the Board of Appeal, since the applicant challenged the Opposition Division’s assessment that there had been no alteration of the distinctive character of the earlier mark in its registered form, which concerns the nature of use and which is one of the conditions required in order to demonstrate genuine use of the earlier mark (see paragraph 55 below). The nature of the use relates, on the one hand, to use as a trade mark and, on the other, to use in the registered form or in a variant which does not alter its distinctive character (see, to that effect, judgment of 22 June 2022, Puma v EUIPO – V. Fraas (FRAAS), T‑329/21, not published, EU:T:2022:379, paragraph 72).

53      Next, it should be borne in mind that, under Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, such as those in the present case, EUIPO is to be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

54      However, it follows from the case-law that, in the context of opposition proceedings, the criteria for applying a relative ground for refusal of registration or any other provision relied on in support of claims put forward by the parties naturally form part of the matters of law submitted for examination by EUIPO. An issue of law may have to be ruled on by EUIPO even when it has not been raised by the parties if it is necessary to resolve that issue in order to ensure the correct application of Regulation No 207/2009 having regard to the facts, evidence and arguments provided by the parties (see, to that effect, judgment of 13 September 2010, OFTEN, T‑292/08, EU:T:2010:399, paragraph 27 and the case-law cited).

55      In the context of Article 42(2) of Regulation No 207/2009, proof of use must relate to the place, time, extent and nature of use of the earlier mark for the goods and services in respect of which it is registered and on which the opposition is based, as is apparent from Article 10(3) of Delegated Regulation 2018/625. Those requirements concerning proof of use of the earlier mark are cumulative (see judgment of 7 July 2021, Frommer v EUIPO – Minerva (I-cosmetics), T‑205/20, not published, EU:T:2021:414, paragraph 120 and the case-law cited), with the result that, if one of those criteria is not satisfied, genuine use of the earlier mark cannot be regarded as having been demonstrated (see, to that effect, judgment of 12 March 2020, Maternus v EUIPO – adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraphs 51 to 53).

56      It thus follows from the foregoing that the Board of Appeal was required to examine the other conditions relating to proof of use, in so far as that issue was before it.

57      In that regard, it must be held that the contested decision does not expressly set out the Board of Appeal’s reasoning with regard to the place, time, use as a trade mark and the extent of use of the earlier mark.

58      However, first, the Opposition Division’s findings as regards the place, time, use as a trade mark and the extent of use of the earlier mark are summarised in paragraph 10 of the contested decision, which implies that those assessments were taken into consideration by the Board of Appeal (see, to that effect, judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 131). Secondly, in paragraph 32 of the contested decision, the Board of Appeal stated, in essence, that the Opposition Division had been correct to find that the earlier mark had been used. It is thus apparent that the Board of Appeal confirmed in full, by endorsing them, the Opposition Division’s findings as regards genuine use of the earlier mark, including those relating to the time, place, use as a trade mark and extent of use.

59      A board of appeal may lawfully adopt the grounds of a decision taken by the Opposition Division, which thus make up an integral part of the reasons for the board’s own decision (see, to that effect, judgments of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 50, and of 24 September 2008, HUP Uslugi Polska v OHIM – Manpower (I.T.@MANPOWER), T‑248/05, not published, EU:T:2008:396, paragraph 49).

60      Thus, when the Board of Appeal upholds the decision of the Opposition Division on certain points, and taking into account the continuity in terms of function between the Opposition Division and the Board of Appeal, to which Article 64(1) of Regulation No 207/2009 attests, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and enables the Court to carry out fully its review as to whether the Board of Appeal’s assessment was well founded (see, to that effect, judgment of 4 May 2022, Deichmann v EUIPO – Munich (Representation of two crossed stripes placed on the side of a shoe), T‑117/21, not published, EU:T:2022:271, paragraph 19 and the case-law cited).

61      Moreover, according to the case-law, 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 those boards. It is accordingly sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 19 January 2022, Construcciones Electromecánicas Sabero v EUIPO – Magdalenas de las Heras (Heras Bareche), T‑99/21, not published, EU:T:2022:14, paragraph 77 and the case-law cited).

62      Thus, as EUIPO correctly submits in its response to the measure of organisation of procedure, the Board of Appeal was entitled to confine itself, in the contested decision, to endorsing the uncontested grounds of the Opposition Division’s decision, that is to say, in the present case, the findings relating to the place, time, use as a trade mark and the extent of use of the earlier mark, and to setting out the grounds on which it confirmed the contested grounds, in accordance with the requirements of Article 22(1)(b) and (c) of Delegated Regulation 2018/625, of the decision of the Opposition Division, that is to say, in the present case, the findings relating to the use of the earlier mark in forms which do not alter its distinctive character.

63      In the third place, it is necessary to examine whether the Board of Appeal erred in finding that there had been genuine use of the earlier mark, as the applicant claims.

64      In that regard, it should be noted, in accordance with paragraph 10 of the contested decision, that the five-year period for which the intervener was required to demonstrate genuine use ran from 25 January 2012 to 24 January 2017, which the applicant does not dispute.

65      As regards the place of use, the applicant submits that it has not been demonstrated that the goods in Class 25 bearing the earlier mark were sold within the European Union. It must be noted that the press articles (exhibit No 1) indicate that the intervener has a chain of shops under the INSIDE sign established mainly in Spain, but also in Italy and Portugal, in which clothing, fashion accessories and shoes are marketed. That is confirmed by the financial statements (exhibit No 2) which relate to the turnover in 2012 and 2013 of the intervener’s INSIDE stores in Spain, Italy and Portugal. Similarly, the catalogue (exhibit No 5) is in Spanish and states, inter alia, that INSIDE is the fashion mark created by the intervener, under which goods are marketed and which gives its name to a wide network of shops in Spain, France, Italy and Portugal. Accordingly, the Board of Appeal was correct to endorse the Opposition Division’s assessment, referred to in paragraph 10 of the contested decision, that the evidence showed that the place of use was mainly in Spain, but also, in particular, in Italy and Portugal.

66      As regards the duration of use, the applicant submits that the photographs of the goods (exhibit No 6), the pictures of labels and packaging (exhibit No 7) and the advertising material (exhibit No 8) do not include dates. Next, it is important to note that, although undated documents may, in certain cases, be used to establish use of the earlier mark (see, to that effect, judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 68), such evidence can, however, be relevant for proving such use during the reference period only to the extent to which it serves to confirm facts inferred from other items of evidence (judgment of 2 February 2017, Marcas Costa Brava v EUIPO – Excellent Brands JMI (Cremcaffé by Julius Meinl), T‑686/15, not published, EU:T:2017:53, paragraph 59).

67      In the present case, it should be noted that, among the items of evidence relating to the relevant period are the vast majority of the press articles (exhibit No 1), which date from 2012 to 2016, financial statements (exhibit No 2), which relate to 2013, the extract from the website of the Comisión nacional del mercado de valores (CNMV, National Commission for the Stock Market, Spain) (exhibit No 3) and the decision of the Oficina Española de Patentes y Marcas (OEPM, Spanish Patent and Trademark Office) (exhibit No 4), which date from 2015, the advertising material (exhibit No 8), which, contrary to what the applicant claims, is partially dated as 2014, and, finally, the statement (exhibit No 9) concerning the intervener’s turnover from 2012 to 2016.

68      While it is true that certain items of evidence are not dated, such as the catalogue (exhibit No 5), the photographs of the goods (exhibit No 6) and the pictures of labels and packaging (exhibit No 7), it should however be noted that they show that the earlier mark was used in relation to the relevant goods, with the result that they can be used to corroborate, in particular, the press articles (exhibit No 1) and the statement (exhibit No 9) which relate to the relevant period and which indicate that such goods were marketed by the intervener under the earlier mark throughout the relevant period. Accordingly, the Board of Appeal was correct to endorse the Opposition Division’s assessment, referred to in paragraph 10 of the contested decision, that the evidence showed use of the earlier mark during the relevant period.

69      As regards use as a mark, it should be noted that the catalogue (exhibit No 5), the photographs of the goods (exhibit No 6) and the pictures of labels and packaging (exhibit No 7) show that the earlier mark was affixed to the relevant goods, while the advertising material (exhibit No 8) indicates that it was used in connection with those goods. It is thus clear that the earlier mark has been used in accordance with its essential function, which is to identify and guarantee the identity of the origin of the goods for which it was registered, as well as for all the relevant goods.

70      Moreover, in so far as the applicant claims that it was not demonstrated that the intervener marketed the relevant goods under the earlier mark in its INSIDE stores, it follows from one of the press articles (exhibit No 1) that as from 2011, the intervener began to sell clothes and shoes exclusively under the earlier mark in its INSIDE stores and thus ceased to sell those goods under other marks, whereas it follows from the financial statements (exhibit No 2) that the intervener’s activity consists in the manufacture and marketing of clothes and that, in 2012 and 2013, all the intervener’s sales were made through its own stores operating under the earlier mark, with the result that when those items of evidence are assessed together with the catalogue (exhibit No 5), the photographs of the goods (exhibit No 6) and the pictures of labels and packaging (exhibit No 7), they demonstrate that the relevant goods are indeed marketed under the earlier mark in INSIDE stores, contrary to what the applicant maintains. In those circumstances, the Board of Appeal was correct to endorse the Opposition Division’s assessment, referred to in paragraph 10 of the contested decision, that the evidence showed use as a mark.

71      As regards the extent of use, the applicant submits that the evidence contains no indication of the extent of the actual sales of the goods relevant to the earlier mark. In the present case, it must be noted that the press articles (exhibit No 1) refer to the fact that the intervener’s business activity increased very significantly throughout the relevant period, which resulted in the opening of numerous INSIDE shops in Spain, Italy and Portugal and a steady increase in turnover. In addition, the financial statements (exhibit No 2) and the statement (exhibit No 9) confirm that significant quantities of relevant goods were sold in the intervener’s INSIDE stores, and the intervener’s turnover through these stores was high throughout the relevant period. Thus, contrary to what the applicant claims, there is no doubt that the earlier mark was used frequently and extensively, with the result that the Board of Appeal was correct to endorse the Opposition Division’s assessment in that regard, set out in paragraph 10 of the contested decision.

72      Lastly, in so far as the applicant claims that the evidence of use was in any event inadmissible since it was not produced in the language of the case, namely English, it should be noted that only certain items of evidence, namely the financial statements (exhibit No 2), the advertising material (exhibit No 8), the list of shops (exhibit No 10) and the tables detailing the advertising costs (exhibit No 11), are in Spanish. However, as EUIPO correctly pointed out, it is apparent from Article 10(6) of Delegated Regulation 2018/625 that, where the evidence submitted by the opposing party is not in the language of the proceedings, EUIPO ‘may’ invite the opposing party to submit a translation in that language. It follows that the intervener was not required to translate the proof of use unless a specific request to that effect had been sent to it by EUIPO (see, to that effect, judgment of 9 February 2022, Calzaturificio Emmegiemme Shoes v EUIPO – Inticom (MAIMAI MADE IN ITALY), T‑589/20, not published, EU:T:2022:59, paragraph 71). That did not happen in the present case. In any event, it must be held that the applicant was in a position to acquaint itself with the content of that evidence and to understand it, given that it disputed the content of the evidence in question. The applicant’s argument cannot therefore succeed.

73      It follows from all of the foregoing considerations that the Board of Appeal was correct to find that there had been genuine use of the earlier mark for ‘clothing, footwear, headgear’ in Class 25, with the result that the second part of the first plea and, therefore, the first plea in its entirety, must be rejected.

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

74      By its second plea in law, the applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion.

75      At the outset, it should be noted that Article 8(1)(b) of that regulation 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

76      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).

77      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).

78      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).

(a)    The relevant public

79      In paragraphs 37 to 44 of the contested decision, the Board of Appeal found, first of all, that the goods in Class 25 covered by the signs at issue were directed at the general public, with an average level of attention. Next, it noted, first, that the ‘wholesale services’ covered by the mark applied for were aimed at professionals in trade with a high level of attention. Secondly, it found that the other services in Class 35 covered by the mark applied for were directed at both the general public and the professionals and that it was necessary to take into account the group with the lowest level of attention, namely the general public, whose level of attention is average. Finally, it noted that since the earlier mark is an EU trade mark, the relevant territory for the assessment of the likelihood of confusion is the European Union. Nevertheless, since it suffices, in order to refuse registration of a mark, that a relative ground for refusal exists in part of the European Union, the Board of Appeal confined its assessment to Spain.

80      First, the applicant submits that the Board of Appeal should have found that the level of attention of consumers of the goods in Class 25 covered by the signs at issue was ‘above average’. First, as regards the goods in Class 25 covered by the earlier mark, it is apparent from the evidence produced by the intervener that it distributes ‘clothes and accessories for both young boys and girls’. According to an earlier decision of a Board of Appeal of EUIPO (Case R 0632/01-3), the level of attention of young people is particularly high when they purchase fashion items. Secondly, as regards the goods in Class 25 covered by the mark applied for, they are made of recyclable materials, with the result that they are usually purchased by environmentally conscious consumers who have a particularly high level of attention.

81      Secondly, the applicant submits that the Board of Appeal should have found, as with regard to the wholesale services in Class 35 covered by the mark applied for, that the other services in that class were aimed solely at professionals with a high level of attention.

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

83      As a preliminary point, it should be noted that the applicant does not dispute that the Board of Appeal limited its assessment of the likelihood of confusion to Spain. Nor does it dispute that the relevant public for ‘wholesaling services’ in Class 35 covered by the mark applied for consists of professionals in trade with a high level of attention.

84      In the first place, as regards the goods in Class 25 covered by the signs at issue, it must be noted, first, that, according to the case-law, ‘clothes’, ‘clothing’, ‘outwear’, ‘footwear’, ‘gloves [clothing]’ and ‘headgear’ in Class 25 are, in principle, considered to be everyday consumer goods aimed at the general public, which will display an average level of attention when purchasing them (see, to that effect, judgments of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraphs 3, 6 and 25; of 25 May 2012, Nike International v OHIM – Intermar Simanto Nahmias (JUMPMAN), T‑233/10, not published, EU:T:2012:267, paragraph 22; and of 14 May 2014, Adler Modemärkte v OHIM – Blufin (MARINE BLEU), T‑160/12, not published, EU:T:2014:252, paragraphs 3, 6 and 36).

85      Secondly, it must be held that ‘clothing, footwear, headgear’ in Class 25 covered by the earlier mark does not specify that they consist exclusively of goods specifically intended for ‘young boys and girls’, whose level of attention is particularly high with regard to such goods. The same applies to ‘clothes – articles; footwear; headgear; gloves [clothing]; outwear; clothing’ in Class 25 covered by the mark applied for, which also does not suggest that they consist exclusively of high-end environmentally friendly goods, aimed at a public with a high level of attention, as the Board of Appeal noted in paragraph 39 of the contested decision.

86      Thus, while it may be acknowledged that average consumers pay some attention to their appearance and are therefore capable of assessing the style, quality, finish and price of such goods when they purchase them, it is not apparent from the description of the goods in question that they are luxury goods or goods which are so sophisticated or expensive that the relevant public would be likely to be particularly attentive with regard to them (see, to that effect, judgment of 30 September 2015, Mocek and Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna v OHIM – Lacoste (KAJMAN), T‑364/13, not published, EU:T:2015:738, paragraph 26 and the case-law cited; see, also, to that effect and by analogy, judgment of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 19).

87      In those circumstances, the applicant’s argument that consumers of the goods in Class 25 covered by the signs at issue have a level of attention that is ‘above average’ cannot be accepted. In the light of the case-law referred to in paragraph 84 above, the Board of Appeal was therefore correct to find that those goods were aimed at the general public, which has an average level of attention.

88      Furthermore, the earlier decision of the Board of Appeal of EUIPO referred to in paragraph 80 above is not capable of undermining that conclusion. The decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards (see, to that effect, judgment 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

89      In the second place, as regards the ‘retailing and wholesaling and online and catalogue mail order sales in the fields of knitwear, textile goods, coated textile goods, laminated textile goods, clothing, footwear, headgear, gloves, outerclothing, items of clothing’ in Class 35 covered by the mark applied for, it is apparent from the case-law that retail services are directed at both the end consumer and the manufacturer of the product, as well as at any business intermediaries operating upstream of the final retail sale, as services enabling those economic operators to carry out the final marketing of the product (see, to that effect, judgment of 1 September 2021, FF IP v EUIPO – Seven (the DoubleF), T‑23/20, not published, EU:T:2021:523, paragraph 53 and the case-law cited). The same is true of ‘online and catalogue mail order sales’ since they fall within the scope of retail services (see, to that effect, judgment of 3 October 2018, Unipreus v EUIPO – Wallapop (wallapop), T‑186/17, not published, EU:T:2018:640, paragraph 36).

90      So far as concerns the assessment of the likelihood of confusion, it is the public with the lowest level of attentiveness that must be taken into consideration (see judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 29 and the case-law cited). Therefore, contrary to what the applicant claims, the Board of Appeal was correct to find, in paragraph 41 of the contested decision, that the services referred to in paragraph 89 above were directed at both the general public and professionals and that it was necessary to take into account the lowest level of attention, namely that of the general public, whose level of attention is average.

(b)    Comparison of the goods and services at issue

91      In paragraph 45 of the contested decision, the Board of Appeal found, in essence, that it was not disputed that the goods in Class 25 covered by the signs at issue were identical and that the services in Class 35 covered by the mark applied for were similar to a low degree to ‘clothing, footwear, headgear’ in Class 25 for which use of the earlier mark had been demonstrated.

92      In that regard, the applicant submits that, even if genuine use of the earlier mark had been shown for ‘clothing, footwear, headgear’ in Class 25, there is no likelihood of confusion given that ‘the distance between the marks to be compared is sufficient’, in particular as regards the services in Class 35 of the mark applied for. Furthermore, even if it was found that the goods in Class 25 were identical, the mark applied for also maintains a sufficient distance from the earlier mark.

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

94      In the present case, it must be held that, in reality, the applicant’s arguments do not seek to challenge the comparison of the goods and services as made by the Opposition Division and confirmed by the Board of Appeal, but rather the global assessment of the likelihood of confusion. It must therefore be held that the applicant does not put forward any argument capable of calling into question the Board of Appeal’s finding relating to the comparison of the goods and services at issue.

(c)    The comparison of the signs at issue

95      At the outset, it should be recalled that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, 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).

96      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).

97      Furthermore, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

(1)    The distinctive and dominant elements of the marks at issue

98      In the present case, it must be observed that the Board of Appeal did not make any finding that one of the two word elements of the mark applied for was dominant and distinctive. It is not apparent from the contested decision that it placed extra weight on one of those elements. It must therefore be inferred that it found that the word elements ‘sympathy’ and ‘inside’ occupied an equivalent position in the mark applied for.

99      In that regard, it should first be noted that, contrary to what the applicant claims, the fact that the word ‘inside’ serves only to clarify or supplement the term ‘sympathy’ cannot in any way mean that the word ‘inside’ is negligible.

100    Furthermore, the applicant’s argument that the term ‘inside’ is descriptive and devoid of distinctive character in respect of the goods in Class 25 covered by the mark applied for cannot succeed since, according to the applicant, it is not only the word ‘inside’ which allegedly refers to the quality and durability of the goods at issue covered by the mark applied for, but the expression ‘sympathy inside’ as a whole.

101    Lastly, supposing that the English words ‘sympathy’ and ‘inside’ are understood by the relevant Spanish public, it must be held that neither of those words is directly descriptive of the goods and services at issue. It cannot be accepted that the word ‘sympathy’, which refers to ‘an affinity or harmony, usually of feelings or interests, between persons or things’, or that the term ‘inside’, which means ‘the inner side or surface of something’ (see paragraph 54 of the contested decision), describe the ‘Clothes – articles; Footwear; Headgear; Gloves [clothing]; outwear’ in Class 25 or the ‘retailing and wholesaling and online and catalogue mail order sales in the fields of knitwear, textile goods, coated textile goods, laminated textile goods, gloves, outerclothing, items of clothing’ contained in Class 35. Those words will thus be perceived as fanciful terms with regard to those goods and services and thus are both distinctive.

102    It thus follows from the foregoing considerations that the mark applied for does not contain any dominant word element and that the two word elements ‘sympathy’ and ‘inside’ have the same distinctive character, as the intervener rightly maintained.

103    Furthermore, as was concluded in paragraph 30 above, since the full stop of the earlier mark is a negligible element of that mark, it must be held that the word element ‘inside’ constitutes the distinctive and dominant element of that mark.

(2)    The visual comparison

104    The applicant submits that the degree of visual similarity between the signs at issue is even less significant than the ‘less than average’ degree found by the Board of Appeal, in view of the fact that (i) the signs at issue differ in terms of length and their first part, (ii) the mere fact that they have a word in common is not sufficient to make them similar to the point of leading to confusion, which is confirmed by an earlier decision of a Board of Appeal of EUIPO (Case R 1615/10-4) and (iii) the mark applied for does not include a full stop.

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

106    In the present case, it must be held, as the Board of Appeal found in paragraph 52 of the contested decision, that the signs at issue differ (i) in length owing to the additional word ‘sympathy’ in the mark applied for, (ii) in terms of their initial part given that the mark applied for begins with the element ‘sympathy’ whereas the earlier mark begins with the element ‘inside’, and (iii) in terms of the absence of the full stop of the earlier mark. However, the omission of the full stop of the earlier mark has no influence on the visual comparison of the signs at issue, since it is barely noticeable and has no distinctive character.

107    In addition, it should be noted that the mark applied for reproduces the distinctive and dominant word element ‘inside’ of the earlier mark. As the Board of Appeal noted, in essence, in paragraphs 48 and 50 of the contested decision, the mark applied for contains or reproduces the earlier mark almost entirely, with the sole exception of a negligible element, namely the full stop. That finding supports the conclusion that those two marks must be regarded as similar in so far as the fact that a sign consists exclusively of the earlier mark, to which another word has been added, is an indication that the two marks are similar (see judgment of 27 September 2018, Sevenfriday v EUIPO – Seven (SEVENFRIDAY), T‑448/17, not published, EU:T:2018:617, paragraph 33 and the case-law cited).

108    Thus, in view of the differences between the signs at issue noted in paragraph 106 above and the similarity resulting from the fact that the distinctive and dominant word element ‘inside’ of the earlier mark is reproduced identically in the mark applied for, the Board of Appeal was correct to find, in essence, that there was a low degree of visual similarity.

109    That conclusion cannot be called into question by the applicant’s argument based on an earlier decision of a Board of Appeal of EUIPO for the reasons set out in paragraph 88 above.

(3)    The phonetic comparison

110    The applicant submits that the degree of phonetic similarity between the signs at issue is even less significant than the ‘less than average’ degree found by the Board of Appeal. The signs at issue differ in terms of the number of letters and syllables, the length of their pronunciation and their initial part, given that the mark applied for begins with the element ‘sympathy’, whereas the earlier mark begins with the element ‘inside’. Furthermore, consumers might pronounce the full stop at the end of the earlier mark. Finally, the applicant submits, relying on a decision of a German court, that the words ‘sympathy inside’ form a unitary whole meaning ‘sympathy is inside’, which will not be broken down into several individual components.

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

112    In that regard, it must first of all be noted, as the Board of Appeal found, that the signs at issue coincide in the pronunciation of the common element ‘inside’.

113    Next, as the Board of Appeal also correctly pointed out, the signs at issue are distinguished by the number of syllables, since the mark applied for is composed of five or six syllables and the earlier mark consists of only two or three syllables, depending on the pronunciation of the common element ‘inside’ by the relevant Spanish public. Furthermore, they also differ in terms of their initial part, as the applicant has rightly submitted.

114    However, contrary to what the applicant claims, it cannot be held that consumers will pronounce the full stop at the end of the word element ‘inside’ of the earlier mark, since a full stop at the end of a sentence is not commonly pronounced and, in any event, it is a negligible element and is likely to be ignored by the relevant public (see, to that effect, judgments of 26 January 2016, LR Health & Beauty Systems v OHIM – Robert McBride (LR nova pure.), T‑202/14, not published, EU:T:2016:28, paragraph 70, and of 4 October 2017, 1. FC Köln v EUIPO (SPÜRBAR ANDERS.), T‑126/16, not published, EU:T:2017:688, paragraph 56).

115    Finally, as regards the decision of 4 February 2003 of the Bundespatentgericht (Federal Patent Court, Germany) relied on by the applicant, it suffices to state that that national decision is not such as to call into question the legality of the contested decision. It should be borne in mind, as EUIPO recalls, that the EU trade mark regime is autonomous and the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation No 207/2009, with the result that EUIPO or, on appeal, the Courts of the European Union, are not required to reach the same conclusions as those arrived at by national authorities or courts in a similar situation (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).

116    Thus, in view of the phonetic similarity resulting from the common element ‘inside’ and the phonetic differences noted in paragraph 113 above, the Board of Appeal was correct to find, in essence, that there was a low degree of phonetic similarity.

(4)    The conceptual comparison

117    In paragraph 54 of the contested decision, the Board of Appeal first of all considered that, in view of the proximity of the English word ‘sympathy’ to the equivalent Spanish word ‘simpatía’, the relevant Spanish public would understand that word as meaning ‘an affinity or harmony, usually of feelings or interests, between persons or things’. As regards, next, the English word ‘inside’, which refers to the ‘inner side or surface of something’, it found that it could be accepted that, for the part of the Spanish public which understands English, the signs at issue are conceptually similar owing to the coincidence of the word ‘inside’, the meaning of which is not altered by the word ‘sympathy’. By contrast, the mark applied for does not indicate, as the applicant claimed before the Board of Appeal, that something sympathetic, namely, recyclable membranes, is inside the products, since the concept of ‘sympathetic’ does not convey a direct and immediate connection with environmentally friendly production methods. However, for the part of the Spanish public which does not understand the term ‘inside’, but only the word ‘sympathy’, only part of the mark applied for will be meaningful, although the precise meaning of the mark as a whole will still remain unclear. The Board of Appeal thus concluded that the signs at issue are conceptually similar for part of the Spanish public.

118    The applicant submits that either there is no conceptual similarity between the signs at issue or that that similarity is neutral. First, the entire Spanish public has a basic knowledge of English and understands the meaning of the word ‘inside’. Secondly, the words ‘sympathy inside’ allude to the fact that goods bearing that label have something ‘sympathetic’ inside, so that the term ‘sympathy’ is more important. Furthermore, the latter word also refers to the name of the applicant, Sympatex. Thirdly, even if an overall meaning of the mark applied for is not clear, an EU consumer will still be able to understand the mark applied for as meaning that ‘the sympathy is inside’ the product, which is sufficient to rule out conceptual similarity and to distinguish it from the earlier mark. Fourthly, the mark applied for consists of a name and an adverb, whereas the earlier mark is composed of an adverb and a full stop, which also sets them apart. Fifthly, the fact that one element is the same in both of the signs at issue cannot lead to a conceptual similarity.

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

120    In the present case, it must be stated that the applicant does not dispute that the word ‘sympathy’ in the mark applied for refers to ‘an affinity or harmony, usually of feelings or interests, between persons or things’, or the fact that the Spanish public will understand that term, given its proximity to the equivalent Spanish word ‘simpatía’. On the other hand, although the applicant does not dispute either that the common word ‘inside’ refers to the ‘inner side or surface of something’, it nevertheless claims that, contrary to what was held by the Board of Appeal, the entire Spanish public will be able to understand that English word.

121    In that regard, first, it should be noted that the part of the Spanish public which understands English will understand the earlier mark as meaning ‘the inner side or surface of something’, while it will be led to understand the mark applied for as conveying the concept that there is ‘sympathy inside’. It must therefore be acknowledged, at the very least, that there is a low degree of conceptual similarity for that part of the relevant public, on account of the word ‘inside’ appearing in both marks. Furthermore, as the Board of Appeal correctly pointed out, the meaning of the term ‘inside’ is not altered by the word ‘sympathy’. In those circumstances, the applicant’s argument that the entire Spanish public will be able to understand the term ‘inside’ clearly cannot lead to the conclusion that there is no conceptual similarity or neutral conceptual similarity between the signs at issue, contrary to what the applicant claims.

122    Secondly, as regards the part of the Spanish public which does not understand English, it must be held that it will be able to understand only the word element ‘sympathy’ of the mark applied for, on account of its proximity to the Spanish equivalent term ‘simpatía’, with the result that the mark applied for will, at the very least, evoke the concept of ‘sympathy’. By contrast, since it will not understand the term ‘inside’, the earlier mark will not convey any particular concept. Therefore, for that part of the Spanish public, the signs at issue will be perceived as being conceptually different.

123    Thirdly, as regards the applicant’s argument that the mark applied for will be understood as indicating that the goods and services designated by it are recyclable membranes or as referring to the applicant’s name, it must be held that that argument cannot succeed in view of the definitions of the terms ‘sympathy’ and ‘inside’ in paragraph 120 above.

124    Lastly, as has already been stated in paragraph 102 above, the word ‘sympathy’ in the mark applied for is not a dominant element. The fact that, according to the grammar derived from Latin languages, the word ‘sympathy’ is a noun, whereas the term ‘inside’ is an adverb, does not in any way call into question such a finding.

125    It follows from the foregoing that the Board of Appeal was right to find that there was a conceptual similarity for the section of the Spanish public which understands English. By contrast, for the part of the Spanish public which does not understand that language, the signs at issue are not conceptually similar.

(d)    The enhanced distinctiveness of the earlier mark acquired through use

126    It must be noted that the existence of a higher-than-normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001). It is not possible to state in general terms, for example by referring to specific percentages relating to the level of recognition attained by the mark within the relevant section of the public, that a mark possesses a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking, and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 17 October 2019, E.I. Papadopoulos v EUIPO – Europastry (fripan VIENNOISERIE CAPRICE Pur Beurre), T‑628/18, not published, EU:T:2019:750, paragraph 63 and the case-law cited).

127    In paragraphs 60 to 68 of the contested decision, the Board of Appeal found, in essence, that a large proportion of the Spanish public would identify the goods designated by the earlier mark as originating from the intervener and that the earlier mark, the genuine use of which had been recognised for ‘clothing, footwear, headgear’ in Class 25, enjoyed enhanced distinctiveness in Spain in respect of those goods on the date on which the mark applied for was filed.

128    The applicant claims that the Board of Appeal erred in finding that the earlier mark had enhanced distinctiveness at the time when the application for registration of the mark applied for was filed. The evidence produced by the intervener proves, at most, the presence of that mark on the intervener’s market, but does not show either use or enhanced distinctiveness of the earlier mark in relation to ‘clothing, footwear, headgear’ in Class 25.

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

130    In particular, it must be held, as noted by the Board of Appeal, that, first, the press articles produced by the intervener (exhibit No 1) show that the intervener experienced very significant growth which continued until 2017. It is apparent in particular from those articles that, in 2012, the intervener was already one of the leading Spanish fashion companies operating a retail chain of shops selling clothing for young people under the INSIDE mark, that between 2012 and 2016 its annual turnover amounted to hundreds of millions of euros, that the Spanish market represents a very high percentage of turnover and that in 2016 it owned 363 INSIDE shops in Spain, 36 in Italy and 21 in Portugal. Secondly, the financial statements (exhibit No 2) confirm that in 2012 and 2013 the intervener achieved very high turnover and state that all sales were made under the earlier mark through its INSIDE shops in Spain, Italy and Portugal. Thirdly, the statement of a representative of the intervener (exhibit No 9) reports that the intervener sold a very large quantity of the relevant goods, generating very high turnover which increased steadily from 2012 to 2016. Fourthly, as the Board of Appeal pointed out, the extract from the CNMV website (exhibit No 3) confirms that the intervener is listed on the Madrid Stock Exchange (Spain), which is an indication of a significant financial presence on the Spanish market. Fifthly, it is apparent from the list of shops and INSIDE sales outlets (exhibit No 10) that they are located throughout Spain, as well as in large cities in Italy and Portugal.

131    It thus follows from the foregoing that the Board of Appeal did not make an error of assessment in finding that the evidence produced by the intervener demonstrated the existence of a significant market share of the earlier mark on the market for clothing goods and showed a high intensity of use of the earlier mark in a substantial part of the European Union, namely Spain as a whole, and, to a lesser but not negligible extent, Italy and Portugal. Moreover, that use increased between 2012 and 2017. The Board of Appeal was thus entitled to infer that a large part of the relevant Spanish public would identify ‘clothing, footwear, headgear’ in Class 25 as originating from the intervener because of the earlier mark, in accordance with the case-law referred to in paragraph 126 above. Consequently, the Board of Appeal was right to find that the earlier mark had enhanced distinctiveness in Spain in respect of ‘clothing, footwear, headgear’ in Class 25, on the date on which the application for registration of the mark was filed.

132    In those circumstances, it is not necessary to examine the applicant’s arguments seeking to dispute the inherent distinctive character of the earlier mark, which are ineffective.

(e)    The overall assessment of the likelihood of confusion

133    It should be noted that, according to settled case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 concerned. In accordance with the principle of interdependence, there may be a likelihood of confusion, notwithstanding a low degree of similarity between the marks at issue, where the goods or services covered by them are very similar (see judgment of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 50 and the case-law cited).

134    As is apparent from recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

135    In paragraphs 70 and 71 of the contested decision, the Board of Appeal found that there was a likelihood of confusion in Spain, even if the level of attention for some of the services in Class 35 covered by the mark applied for is higher than average, given that the goods in Class 25 covered by the signs at issue are identical; the services in Class 35 covered by the mark applied for are similar to a low degree to the goods in Class 25 covered by the earlier mark; the signs at issue are visually and phonetically similar to a ‘less than average’ degree; the signs at issue are conceptually similar for part of the relevant Spanish public; the common word ‘inside’ has inherent distinctiveness, and the earlier mark has enhanced distinctiveness in Spain.

136    The applicant disputes those assessments, submitting, in essence, first, that there can be no likelihood of confusion between the signs at issue, secondly, that there is no likelihood of association either and, thirdly, that the partial upholding of the opposition by the Board of Appeal infringes Article 12 of Regulation No 207/2009 (now Article 14 of Regulation 2017/1001).

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

138    In the first place, as regards the likelihood of confusion, it follows from the considerations set out above that, first of all, the relevant Spanish public displays an average level of attention in respect of the goods in Class 25 covered by the signs at issue and in respect of some of the services in Class 35 covered by the mark applied for, whereas it displays a high level of attention for the other part of those services. Next, it was found that the goods in Class 25 covered by the signs at issue are identical, whereas the services in Class 35 covered by the mark applied for are similar to a low degree to the goods in Class 25 covered by the earlier mark. Furthermore, it has been noted that the signs at issue are visually and phonetically similar, in essence, to a low degree, whereas the conceptual comparison leads either to a finding that the signs at issue are similar to a low degree or that they are different. Lastly, it was found that the earlier mark had enhanced distinctiveness as a result of its use.

139    Furthermore, as was pointed out by the Board of Appeal in paragraph 72 of the contested decision, sub-brands are frequently used in the clothing sector. In those circumstances, it is conceivable that the relevant public might regard the goods and services covered by the marks at issue as originating from the same undertaking (judgment of 23 October 2002, Fifties, T‑104/01, EU:T:2002:262, paragraph 49).

140    In those circumstances, and in the light of the case-law referred to in paragraphs 133 and 134 above, the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion in respect of the goods and services at issue in the eyes of the relevant Spanish public, even though it might display an ‘above average’ level of attention in respect of some of the services in Class 35 covered by the mark applied for and even though the signs at issue are conceptually different for a part of the Spanish public, on account of, inter alia, the enhanced distinctiveness of the earlier mark whose distinctive and dominant word element is entirely reproduced in the mark applied for.

141    In the second place, contrary to what the applicant submits, the Board of Appeal did not in any way specifically conclude that there was a likelihood of association within the meaning of the judgment of 28 April 2021, HB Harley Benton (T‑284/20, not published, EU:T:2021:218, paragraph 125). The fact that the Board of Appeal stated, in paragraph 70 of the contested decision, that ‘even if the relevant Spanish public detects a difference between the two signs from the word ‘Sympathy’ in the mark applied for, the risk that [it] may associate the two marks with each other is real’ cannot be interpreted as meaning that it concluded that there was a likelihood of association, since it is expressly stated in paragraphs 70 and 71 of the contested decision that the Board of Appeal concluded that there was a likelihood of confusion following an overall assessment of all the relevant factors.

142    In the third place, it should be noted, as EUIPO submitted, that the complaint alleging infringement of Article 12 of Regulation No 207/2009 was raised for the first time before the General Court and therefore constitutes a new argument. It should be recalled that the purpose of the action before the General Court is to obtain a review of the legality of the decision of the Board of Appeal of EUIPO. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 12 March 2014, El Corte Inglés v OHIM – Technisynthese (BTS), T‑592/10, not published, EU:T:2014:117, paragraph 19 and the case-law cited). Furthermore, it is not the Court’s function to examine new pleas introduced before it or to review the facts in the light of documents adduced for the first time before it. To allow the examination of those new pleas or such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the pleas in law introduced and the evidence produced for the first time before the Court must be declared inadmissible, without there being any need to examine them (see judgment of 14 May 2009, Fiorucci v OHIM-Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).

143    It follows from all of the foregoing considerations that the Board of Appeal was right to dismiss the appeal brought by the intervener against the Opposition Division’s decision under Article 8(1)(b) of Regulation No 207/2009, with the result that the second plea in law must be rejected as unfounded and, consequently, the action must be dismissed in its entirety.

 Costs

144    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

145    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 (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Sympatex Technologies GmbH to pay the costs.

Delivered in open court in Luxembourg on 8 March 2023.

*      Language of the case: English.

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