Lauritzen Holding v EUIPO - DK Company (IWEAR) (Judgment) [2017] EUECJ T-622/14 (07 March 2017)

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(European Union trade mark — Opposition proceedings — Application for European Union word mark IWEAR — Earlier European Union word mark INWEAR — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Lauritzen Holding AS, established in Drøbak (Norway), represented by P. Walsh and S. Dunstan, Solicitors,

European Union Intellectual Property Office (EUIPO), represented initially by P. Bullock and subsequently by D. Hanf, acting as Agents,

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

DK Company A/S, established in Ikast (Denmark), represented initially by M. Nielsen and E. Skovbo, and subsequently by E. Skovbo, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 June 2014 (Case R 1935/2013-2), concerning opposition proceedings between IC Companys A/S and Lauritzen Holding,

having regard to the application lodged at the Court Registry on 15 August 2014,

having regard to the response of EUIPO lodged at the Court Registry on 13 October 2014,

having regard to the response of the intervener lodged at the Court Registry on 17 November 2014,

having regard to the order of 3 June 2015 authorising DK Company to replace IC Companys,

having regard to the request for a hearing submitted by the applicant within one month after service of notification of the close of the written part of the procedure,

having regard to the letter by which the applicant withdrew its request for a hearing and the letters by which the other principal parties waived the right to a hearing, and having decided, pursuant to Article 108(2) of the Rules of Procedure of the General Court, to rule on the action without an oral part of the procedure,

1 On 9 February 2012, the applicant, Lauritzen Holding AS, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 The trade mark in respect of which registration was sought is the word mark IWEAR.

3 The goods in respect of which registration was sought come within, inter alia, Classes 18, 25 and 28 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

– Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes’.

4 The application for an EU trade mark was published in Bulletin of Community Trade Marks No 48/48 of 8 March 2012.

5 On 7 June 2012, IC Companys A/S filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods in Classes 18 and 25 referred to in paragraph 3 above.

6 The opposition was based on the earlier EU word mark INWEAR, registered on 12 February 2004 under number 2168284 and designating, inter alia, goods in Classes 18 and 25 and corresponding, for each of those classes, to the following description:

7 The ground relied upon in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.

8 By decision of 2 August 2013, the Opposition Division partly upheld the opposition and refused registration in respect of certain goods. It dismissed the remainder of the opposition.

9 On 1 October 2013, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division, inasmuch as that decision had partly upheld the opposition.

10 By decision of 2 June 2014 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found that: first, the relevant public comprised the average consumer in the European Union, who was reasonably well informed and reasonably observant and circumspect; secondly, the goods covered by the marks at issue were identical and similar, with the exception of ‘horseshoes’ and ‘pouch baby carriers’; thirdly, the signs had a high degree of similarity in view of the fact that they were visually almost identical and were phonetically similar to a high degree, and that it was impossible for the average non-English-speaking EU consumer to carry out the mental processes necessary to establish a conceptual dissimilarity between the signs at issue that would be capable of counteracting the visual and phonetic similarities. The Board of Appeal concluded that there was a risk of confusion between the signs at issue for the relevant public with regard to the goods deemed to be identical or similar.

– order the intervener, DK Company A/S, to pay the costs incurred before EUIPO.

– order the applicant to pay the intervener’s costs, including those incurred before EUIPO.

14 In support of its action, the applicant relies on a single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009.

15 In the context of that plea, by its various grounds for annulment, the applicant submits, in essence, that the Board of Appeal:

– failed to analyse the errors made by the Opposition Division in its assessment of the distinctiveness of the earlier mark and failed to establish the degree of distinctiveness of the various elements of the two signs at issue. Those signs, it submits, merely have in common the weakly distinctive element ‘wear’; the differences between the marks are more significant in the eyes of the relevant public and therefore the likelihood of confusion between them is reduced;

– misunderstood the fact that the elements ‘i’, ‘in’ and ‘wear’ are basic English words, also understood by the non-English-speaking public. That public is in a position to understand the combined meaning of those elements and to perceive a conceptual dissimilarity which would rule out any likelihood of confusion between the two signs;

– made an error of assessment in failing to take account of the fact that it should not be possible to register the word ‘wear’ in respect of goods in Classes 18 and 25 because of its descriptive characters, as has been held, moreover, in earlier EUIPO decisions;

– erred in its assessment of the similarity of the marks by disregarding the dominant and more distinctive role, in comparison with the word ‘wear’, of the prefixes ‘i’ and ‘in’ which distinguish the marks at issue. Visually, those marks are composed of several elements which have a clear and obvious meaning. Since the common word ‘wear’ lacks distinctiveness, the consumer will pay more attention to the prefixes ‘i’ and ‘in’. Moreover, since the marks are short, the consumer is able to perceive each of their elements and each of their variations. Phonetically, the greatest stress is placed on the prefixes ‘i’ and ‘in’, the pronunciation of which is different in English and probably in other languages of the European Union. Conceptually, the marks at issue are dissimilar, having regard to the different and immediately clear meaning of the two signs, composed of the ‘iwear’ and ‘inwear’ elements, and the descriptiveness of the word ‘wear’;

– erred in its assessment of the likelihood of confusion by reason of the incorrect assessment of the descriptive character of the common element ‘wear’ and the failure to examine the distinctiveness of the earlier mark.

17 Article 8(1)(b) of Regulation No 207/2009 provides that, 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 because of 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.

18 According to settled case-law, the risk that the public might 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 that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services designated (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

19 Moreover, the global assessment must, in regard to the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. It is apparent from the wording of Article 8(1)(b) of Regulation No 207/2009, which states that ‘there exists a likelihood of confusion on the part of the public’, that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment of 15 July 2014, Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 32 and the case-law cited).

20 Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question within that territory. However, it must be borne in mind that, in order for registration of an EU trade mark to be refused, it is sufficient that a relative ground for refusal under 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).

21 In paragraphs 19 and 20 of the contested decision, the Board of Appeal found that the relevant public consisted of average consumers in the European Union who are reasonably well informed and reasonably observant and circumspect. The Court considers that it is appropriate to confirm that definition, which, moreover, is not contested by the applicant.

22 The Court finds that the Board of Appeal acted correctly in confirming, in paragraph 21 of the contested decision, the Opposition Division’s uncontested assessment that the goods covered by the marks at issue are identical or similar, with the exception of the horseshoes and pouch baby carriers.

23 Visually, it should be borne in mind that the presence, in each of the marks at issue, of several letters in the same order may be of some importance in assessing the visual similarities between those marks (see judgment of 12 May 2016, Red Lemon v EUIPO — Lidl Stiftung (ABTRONICX2), T‑776/14, not published, EU:T:2016:291, paragraph 40 and the case-law cited).

24 It is common ground that the signs to be compared contain five identical letters placed in the same order, namely ‘i’ and the sequence of letters ‘w’, ‘e’, ‘a’, ‘r’, and differ only in the letter ‘n’ after the letter ‘i’. It must therefore be held that there is a high degree of visual similarity between the signs (see, to that effect, judgment of 26 November 2008, Rajani v OHIM — Artoz-Papier (ATOZ), T‑100/06, not published, EU:T:2008:527, paragraph 60). That finding cannot be called into question by the various arguments put forward by the applicant.

25 In the first place, contrary to what the applicant submits, it is apparent from the case-law referred to in paragraph 19 above that the Board of Appeal acted correctly in relying on the overall impression of the marks at issue, without analysing the individual parts thereof. The applicant’s view that the relevant public will easily break down the signs into elements which have a clear meaning can apply only to a part of that public, namely the English-speaking public, which cannot exclude a likelihood of confusion for the rest of that public.

26 Secondly, the applicant’s criticism concerning the failure of the Board of Appeal to take account of the principle that the consumer pays greater attention to the beginning of the sign also cannot succeed. According to the case-law, such a consideration does not hold true in all cases (see judgment of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, not published, EU:T:2007:143, paragraph 70 and the case-law cited). That is the position in the present case. It must be held that, since the difference relates to the single letter ‘n’ contained in the earlier mark, and since that letter is also not the first letter of the sign, that difference is not sufficient to offset the visual similarity produced by the group of letters ‘wear’ and the first letter ‘i’.

27 Thirdly, contrary to what the applicant submits, the Board of Appeal correctly held, in paragraph 25 of the contested decision, that the signs at issue were not particularly short and that the presence of the letter ‘n’ could go unnoticed by the average consumer of the goods in question. In any event, even if those signs were to be regarded as short, the presence of the letter ‘n’ would not prevent consumers from perceiving the sequence of the five letters ‘i’ and ‘w’, ‘e’, ‘a’, ‘r’, which is what matters most in assessing the visual similarity of the two word marks (see, to that effect and by analogy, judgment of 28 April 2016, Gervais Danone v EUIPO — Mahou (B’lue), T‑803/14, not published, EU:T:2016:251, paragraph 47). The marks at issue start with the same letter and contain the same sequence of five letters, the only difference being the addition of a letter in the second position, and before the ‘wear’ element, in the earlier mark. That difference, which is barely perceptible in visual terms, is not such as to counteract the overall impression of strong visual similarity between those marks (see, to that effect, judgment of 22 September 2005, Alcon v OHIM — Biofarma (TRAVATAN), T‑130/03, EU:T:2005:337, paragraph 65). Moreover, it has also been held that, even in short marks, certain differences will be insufficient if they do not result in a phonetic or visual difference capable of distinguishing the signs (see, to that effect, judgment of 18 February 2016, Penny-Markt v OHIM — Boquoi Handels (B!O), T‑364/14, not published, EU:T:2016:84, paragraph 49 and the case-law cited), which is the position in the present case.

28 Phonetically, it is appropriate to confirm the Board of Appeal’s analysis that, depending on the EU language considered, the signs will be pronounced either in two syllables ‘eye ware/in ware’ or ‘ee ware/een ware’, or in three syllables ‘ee way ar/enn way ar’ and, unless the rules of English pronunciation are applied, the signs will be almost identical in the first and second syllables and possibly identical in the third syllable. Even assuming that the stress is placed on the first syllable, as submitted by the applicant, a significant phonetic difference will exist only in English. The phonetic similarity must therefore be regarded as high for all of the relevant non-English-speaking public.

29 On the conceptual level, it is necessary to uphold the findings of the Board of Appeal that, on the one hand, none of the signs has any meaning for the relevant non-English-speaking public and, on the other, even if part of that public is able to recognise basic English words, there is no evidence to suggest that those consumers will be able, first, to break down mentally the signs into the ‘iwear’ and ‘inwear’ elements, secondly, to give meaning to those elements, and, thirdly, to regard the first sign as referring to the internet and IT and the second sign as meaning ‘fashionable clothing’. Such mental processes require language abilities beyond those of the average non-English-speaking consumer.

30 The applicant’s arguments cannot call that finding into question. All of those arguments assume knowledge of the English language and recognition of the elements ‘i’, ‘in’ and ‘wear’ as being descriptive of the goods in question. However, the Court, like EUIPO, takes the view that, on the one hand, at least a significant proportion of non-English-speaking consumers is unlikely to perceive the signs as being composed of different, meaningful elements and, on the other, it is unlikely that the word ‘wear’ will be recognised as a basic English word that can easily be understood throughout the European Union. It should be added that, as also noted, in essence, by the Board of Appeal, even the average EU consumer’s basic knowledge of the English language cannot be regarded as necessarily being sufficiently extensive and sophisticated to enable him to make the conceptual associations on which the applicant relies (see, to that effect, judgment of 25 June 2008, Zipcar v OHIM — Canary Islands Car (ZIPCAR), T‑36/07, not published, EU:T:2008:223, paragraph 45).

31 Furthermore, even if the average EU consumer were able to recognise the word ‘wear’ (as in wearing clothes) in the marks at issue, that common word would undoubtedly entail some conceptual comparison of those marks, despite its limited distinctiveness in relation to the goods in question (see, to that effect, judgment of 25 June 2008, ZIPCAR, T‑36/07, not published, EU:T:2008:223, paragraph 46).

32 Moreover, it follows from the case-law referred to in paragraph 20 above that, even if the likelihood of confusion existed only for the non-English-speaking public, that would be sufficient to refuse registration of the mark applied for.

33 In the light of the foregoing, it must be held, first, that the signs at issue have a high degree of visual and phonetic similarity and, second, that, in respect of the conceptual similarity, either they may not be distinguished because they have no particular meaning for the non-English-speaking public, or they have a certain conceptual similarity for the English-speaking public.

34 It follows that, as noted by the Board of Appeal in paragraph 24 of the contested decision, the signs at issue are similar to a high degree.

35 Given the identity or similarity of the goods covered by the marks at issue and the high degree of similarity between the signs, it must be held that, even in the event of a weak distinctive character of the earlier mark, supposing such a character to be established, in the context of the overall assessment of the likelihood of confusion, the former factors clearly outweigh the latter.

36 It follows from the case-law that, although the distinctiveness of the earlier mark must be taken into account in order to assess the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark which is weakly distinctive, on the one hand, and a mark applied for which is not a complete reproduction thereof, on the other, there may be a likelihood of confusion on account, in particular, of the similarity between the signs and between the goods or services covered (judgment of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61), which is the case here.

37 Furthermore, it should be borne in mind that, for the goods covered by the marks at issue, the visual similarity may carry greater weight. It has been held that, in view of the specific marketing conditions in clothing stores, choice of clothing is generally visual. Therefore, the visual perception of the marks in question will generally take place prior to purchase. The visual aspect thus plays a greater role in the global assessment of likelihood of confusion (judgment 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, paragraph 50).

38 The Board of Appeal therefore acted correctly in holding, in paragraphs 29 and 30 of the contested decision, on the one hand, that, since there is a high degree of visual similarity between the marks at issue, the fact that the goods are bought only on the basis of a visual assessment merely increases the likelihood of confusion between the signs and, on the other, that, taking account of the imperfect memory of the average consumer (judgment of 7 October 2014, Tifosi Optics v OHIM — Tom Tailor (T), T‑531/12, not published, EU:T:2014:855, paragraph 91), the likelihood of confusion exists in respect of goods deemed to be identical or similar.

39 In the light of the foregoing, first, it is also appropriate to reject the applicant’s argument that the Opposition Division erred in its assessment of the distinctiveness of the earlier mark and that the Board of Appeal failed to examine that error.

40 In that regard, it must be held that the Board of Appeal intended to uphold the Opposition Division’s decision and thus also confirmed the Opposition Division’s assessment on that point. In the light of the continuity in terms of functions between the Opposition Divisions and Boards of Appeal, as demonstrated by Article 64(1) of Regulation No 207/2009, that decision, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise fully its judicial review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 28 September 2016, Kozmetika Afrodita v EUIPO — Núñez Martín and Machado Montesinos (KOZMeTIKA AFRODITA), T‑574/15, not published, EU:T:2016:574, paragraph 66 and the case-law cited).

41 Furthermore, the Opposition Division’s assessment of the distinctiveness of the earlier mark, confirmed by the Board of Appeal, is not, contrary to the applicant’s assertion, contradictory inasmuch as it concludes that the distinctiveness of the earlier mark is weak for the English-speaking public alone and average for the rest of the public. As stated in paragraph 30 above, the Court takes the view that the word ‘wear’ is unlikely to be recognised as a basic English word, capable of being easily understood throughout the European Union. That finding cannot be invalidated by the applicant’s arguments relating to the level of knowledge of the English language in most of the Member States of the European Union or in some of its Member States. Accordingly, the possible minor impact which the weakly distinctive elements might have on the assessment of the likelihood of confusion between the marks at issue concerns only a portion of the relevant public and therefore does not allow the opposition to be rejected, as is recalled in paragraph 32 above.

42 Secondly, in the present case, the applicant cannot usefully rely on earlier EUIPO decisions or, a fortiori, on decisions of other courts, for the purpose of invalidating the conclusion reached by the Board of Appeal in the contested decision.

43 In respect of earlier EUIPO decisions, according to case-law, decisions on registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU Courts, and not on the basis of a previous decision-making practice of those boards (judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47).

44 Admittedly, in the light of the principles of equal treatment and of sound administration, it has been held that EUIPO must, when examining an application for registration of an EU trade mark, 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74).

45 Nonetheless, those principles must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76).

46 In the present case, it must be held that the earlier decisions relied on by the applicant in order to demonstrate the descriptive character of the word ‘wear’ throughout the European Union relate only to the relevant public in certain Member States, which, in the light of the case-law referred to in paragraph 20 above, is ineffective.

47 Thirdly, as regards the applicant’s arguments that it is not possible to appropriate terms which are lacking in distinctiveness, it should be noted, first, that the applicant’s line of argument is not consistent in so far as it asserts, on the one hand, that the earlier mark is lacking in distinctiveness and, on the other, that it has a low degree of distinctive character, and, secondly, that it is apparent from the case-law that the fact that an EU trade mark submitted in support of opposition proceedings was registered implies that that trade mark enjoys a minimum degree of inherent distinctiveness, since Article 7(1)(b) of Regulation No 207/2009 precludes the registration of a trade mark which is lacking in distinctiveness. It also follows from the case-law that it is not possible for the trade mark applicant to dispute the existence of that minimum degree of distinctiveness of the earlier EU trade mark in the context of the opposition proceedings brought in response to his application. It is solely in the context of an application for a declaration of invalidity under Article 52 of Regulation No 207/2009 that the distinctiveness of the earlier EU trade mark may be called into question (see, to that effect, judgment of 29 April 2015, Hostel Tourist World v OHIM — WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraph 35 and the case-law cited).

48 In the light of all of the foregoing, the Board of Appeal acted correctly in finding that there was a likelihood of confusion between the marks at issue and in refusing to register the mark applied for.

49 The single plea in law put forward by the applicant must therefore be rejected and the action dismissed in its entirety.

50 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 form of order sought by EUIPO.

51 In addition, the intervener has submitted that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In this connection, it must be borne in mind that, pursuant to Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case in respect of the costs incurred for the purposes of proceedings before the Opposition Division. Consequently, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only in regard to the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal.

2. Orders Lauritzen Holding AS to pay the costs, including the costs necessarily incurred by IC Companys A/S for the purposes of the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Lauritzen Holding v EUIPO - DK Company (IWEAR) (Judgment) [2017] EUECJ T-622/14 (07 March 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T62214.html Cite as: ECLI:EU:T:2017:143, [2017] EUECJ T-622/14, EU:T:2017:143

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