Frame v EUIPO - Bianca-Moden (BiancalunA) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-628/15 (07 November 2017)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark BiancalunA — Rejection — Earlier national figurative mark bianca — Relative ground for refusal — No likelihood of confusion — Identity of the goods — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Frame Srl, established in San Giuseppe Vesuviano (Italy), represented by E. Montelione, M. Borghese and R. Giordano, lawyers,

European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

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

Bianca-Moden GmbH & Co. KG, established in Ochtrup (Germany), represented by P. Lange, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 August 2015 (Case R 2720/2014-5), relating to opposition proceedings between Bianca-Moden and Frame,

composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín (Rapporteur) and I. Reine, Judges,

having regard to the application lodged at the Court Registry on 11 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 18 March 2016,

having regard to the response of the intervener lodged at the Court Registry on 11 March 2016,

1 On 8 October 2012, the applicant, Frame Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

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

– Class 24: ‘Textiles and textile goods, not included in other classes; Bed covers; Table covers; Glass cloths [towels]; Face towels of textile; Towels of textile; Bath linen, except clothing; Household linen; Bed linen; Table linen, not of paper; Diapered linen; Brocades; Calico; Canvas for tapestry or embroidery; Tablemats, not of paper; Haircloth [sackcloth]; Bed blankets; Bed covers of paper; Travelling rugs [lap robes]; Curtain holders of textile material; Bed clothes; Dimity; Cotton fabrics; Crepe [fabric]; Crepon; Damask; Labels of cloth; Handkerchiefs of textile; Pillowcases; Mattress covers; Felt; Sanitary flannel; Flannel [fabric]; Hat linings, of textile, in the piece; Covers [loose] for furniture; Covers for cushions; Pillow shams; Fitted toilet lid covers of fabric; Linings [textile]; Flags, not of paper; Gauze [cloth]; Washing mitts; Jersey [fabric]; Cheviots [cloth]; Sheets [textile]; Marabouts [cloth]; Filtering materials of textile; Plastic material [substitute for fabrics]; Material (Textile -); Drugget; Billiard cloth; Printers’ blankets of textile; Wall hangings of textile; Eiderdowns [down coverlets]; Door curtains; Tick [linen]; Furniture coverings of plastic; Furniture coverings of textile; Sleeping bags [sheeting]; Coasters [table linen]; Bunting; Bolting cloth; Banners; Cloth; Lining fabric for shoes; Woollen cloth; Fabric, impervious to gases, for aeronautical balloons; Table runners; Shrouds; Taffeta [cloth]; Tablecloths, not of paper; Moleskin [fabric]; Hemp cloth; Calico cloth (Printed -); Ticks [mattress covers]; Oilcloth for use as tablecloths; Gummed cloth, other than for stationery; Cheese cloth; Buckram; Curtains of textile or plastic; Shower curtains of textile or plastic; Fabric; Adhesive fabric for application by heat; Hemp fabric; Jute fabric; Linen cloth; Rayon fabric; Ramie fabric; Silk [cloth]; Silk fabrics for printing patterns; Esparto fabric; Elastic woven material; Fabric of imitation animal skins; Fibreglass fabrics for textile use; Knitted fabric; Non-woven textile fabrics; Upholstery fabrics; Fabric for footwear; Lingerie fabric; Fabrics for textile use; Traced cloths for embroidery; Chenille fabric; Frieze [cloth]; Place mats, not of paper; Serviettes of textile; Napkins, of cloth, for removing make-up; Trellis [cloth]; Quilts; Tulle; Velvet; Net curtains; Mosquito nets; Zephyr [cloth]’;

– Class 25: ‘Clothing, footwear, headgear; Clothing of imitations of leather; Clothing of leather; Motorists’ clothing; Cyclists’ clothing; Clothing for gymnastics; Dresses; Dressing gowns; Bath robes; Non-slipping devices for footwear; Clothing; Bandanas [neckerchiefs]; Bibs, not of paper; Caps [headwear]; Berets; Underwear; Underwear (Anti-sweat -); Smocks; Boas [necklets]; Teddies [undergarments]; Suspenders; Studs for football boots; Corsets [underclothing]; Galoshes; Skull caps; Footwear; Boots for sports; Stockings; Stockings (Sweat-absorbent -); Slippers; Socks; Breeches for wear; Short-sleeve shirts; Shirts; Stuff jackets [clothing]; Bodices [lingerie]; Hats; Top hats; Paper hats [clothing]; Coats; Hoods [clothing]; Hat frames [skeletons]; Footmuffs, not electrically heated; Belts [clothing]; Money belts [clothing]; Tights; Shoulder wraps; Detachable collars; Camisoles; Headgear for wear; Collar protectors; Ear muffs [clothing]; Layettes [clothing]; Corselets; Suits; Beach clothes; Masquerade costumes; Neckties; Ascots; Bathing caps; Shower caps; Headbands [clothing]; Pocket squares; Scarfs; Fittings of metal for footwear; Ready-made linings [parts of clothing]; Gabardines [clothing]; Spats; Jackets [clothing]; Fishing vests; Garters; Skirts; Jumper dresses; Aprons [clothing]; Girdles; Gloves [clothing]; Mittens; Ski gloves; Welts for footwear; Waterproof clothing; Ready-made clothing; Paper clothing; Knitwear [clothing]; Jerseys [clothing]; Leg warmers; Leggings [trousers]; Liveries; Singlets; Hosiery; Swimsuits; Sweaters; Muffs [clothing]; Maniples; Pelerines; Mantillas; Sleep masks; Skorts; Miters [hats]; Pants; Bathing trunks; Vests; Babies’ pants [clothing]; Trousers; Parkas; Pelisses; Furs [clothing]; Shirt yokes; Chasubles; Pyjamas; Cuffs; Ponchos; Pullovers; Tips for footwear; Stocking suspenders; Sock suspenders; Brassieres; Heelpieces for footwear; Heelpieces for stockings; Sandals; Bath sandals; Saris; Sarongs; Shoes; Esparto shoes or sandals; Bath slippers; Gymnastic shoes; Beach shoes; Football boots; Sports shoes; Ski boots; Shawls; Sashes for wear; Underpants; Lace boots; Wimples; Topcoats; Outerclothing; Dress shields; Gaiter straps; Petticoats; Slips [undergarments]; Shirt fronts; Half-boots; Boots; Fur stoles; Soles for footwear; Inner soles; Heels; Pockets for clothing; Tee-shirts; Togas; Footwear uppers; Boot uppers; Turbans; Wet suits for water-skiing; Combinations [clothing]; Uniforms; Veils [clothing]; Cap peaks; Wooden shoes’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2/2013 of 3 January 2013.

5 On 27 March 2013, the intervener, Bianca-Moden GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for.

6 The opposition was directed against all the goods covered by the application for registration which have been listed in paragraph 3 above. It was based on Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and on the following earlier marks:

– the EU word mark BIANCA, filed on 3 March 1998 and registered on 12 July 1999 under the number 761700, covering ‘clothing’ in Class 25;

– the EU figurative mark filed on 10 June 1998 and registered on 18 October 1999 under the number 854240, also covering ‘clothing’ in class 25, as reproduced below:

– the German figurative mark filed on 30 May 2008 and registered on 18 August 2008 under the number 302008035102 (‘the earlier German trade mark’), as reproduced below:

7 The goods covered by the earlier German trade mark are in, inter alia, Classes 14, 18 and 25 and correspond, for each of those classes, to the following description:

– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, included in Class 14; jewellery; precious stones; horological and chronometric instruments’;

– Class 18: ‘Leather and imitations of leather, and goods made of these materials, included in Class 18; hides; trunks and travelling bags; umbrellas, parasols and walking sticks’;

8 On 8 October 2013, in its observations on the opposition, the applicant requested that proof of genuine use of the earlier marks on which the opposition was based be provided. The intervener replied to that request on 18 February 2014.

9 On 27 August 2014, the Opposition Division based its reasoning on the examination of the likelihood of confusion between the mark applied for and the earlier German trade mark. In that regard, it partially upheld the opposition and rejected the application for registration in respect of the following goods in Class 25:

‘Clothing, footwear, headgear; clothing of imitations of leather; clothing of leather; motorists’ clothing; cyclists’ clothing; clothing for gymnastics; dresses; dressing gowns; bath robes; bandanas [neckerchiefs]; bibs, not of paper; caps [headwear]; berets; underwear; underwear (anti-sweat -); smocks; boas [necklets]; teddies [undergarments]; suspenders; corsets [underclothing]; stockings; stockings (sweat-absorbent -); socks; breeches for wear; short-sleeve shirts; shirts; stuff jackets [clothing]; bodices [lingerie]; paper hats [clothing]; coats; hoods [clothing]; belts [clothing]; money belts [clothing]; tights; shoulder wraps; detachable collars; camisoles; ear muffs [clothing]; layettes [clothing]; corselets; suits; beach clothes; masquerade costumes; headbands [clothing]; scarfs; gabardines [clothing]; gloves [clothing]; knitwear [clothing]; jerseys [clothing]; leg warmers; leggings [trousers]; ready-made linings [parts of clothing]; jackets [clothing]; aprons [clothing]; paper clothing; outerclothing; stocking suspenders; sock suspenders; brassieres; pyjamas; ponchos; pullovers; combinations [clothing]; uniforms; veils [clothing]; wet suits for water-skiing; muffs [clothing]; maniples; pelerines; mantillas; sleep masks; babies’ pants [clothing]; trousers; parkas; pelisses; ready-made clothing; underpants; waterproof clothing; topcoats; pants; bathing trunks; vests; petticoats; slips [undergarments]; saris; sarongs; shoes; tee-shirts; togas; shirt fronts; ski gloves; liveries; singlets; chasubles; swimsuits; sweaters; skorts; furs [clothing]; hosiery; neckties; ascots; shawls; wimples; fur stoles; jumper dresses; girdles; mittens; fishing vests; garters; skirts; sashes for wear; dress shields; gaiter straps; collar protectors; pocket squares; skull caps; hats; top hats; bathing caps; shower caps; turbans; headgear for wear; cap peaks; miters [hats]; galoshes; boots for sports; gymnastic shoes; beach shoes; football boots; sports shoes; ski boots; wooden shoes; sandals; bath sandals; boots; bath slippers; half-boots; slippers; esparto shoes or sandals; lace boots; spats; footmuffs, not electrically heated; soles for footwear; inner soles; cuffs; pockets for clothing’.

10 As regards the two earlier EU trade marks on which the opposition was also based, the Opposition Division took the view that the outcome of the proceedings as regards those marks could not be any different, since those marks covered a more limited range of goods than the earlier German trade mark.

11 On 27 October 2014, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), the applicant filed a notice of appeal against the decision of the Opposition Division in so far as it had rejected the application for registration in respect of the goods in Class 25 listed in paragraph 9 above.

12 By decision of 7 August 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal against the Opposition Division’s decision. Like the Opposition Division, the Board of Appeal based its examination on the likelihood of confusion between the mark applied for and the earlier German trade mark. It stated, in particular, that it agreed with the Opposition Division’s assessment regarding the identity or similarity of some of the goods at issue, since the parties had not, in essence, raised any plea in that regard. As regards the comparison of the signs, the Board of Appeal found that they were visually, phonetically and conceptually similar. Lastly, as regards the global assessment of the likelihood of confusion, the Board of Appeal found that, on account of the average degree of distinctiveness of the earlier German trade mark, which was not disputed by the parties, the similarity of the signs, and the identity or similarity of the goods concerned, there was a likelihood of confusion on the part of the relevant public.

13 By an action before the General Court, which was registered as Case T‑627/15, the applicant has also challenged the decision of the Fifth Board of Appeal of EUIPO of 7 August 2015 (Case R 2952/2014-5) refusing, following opposition, to register the word mark BIANCALUNA in respect of goods in Classes 24 and 25.

– annul the contested decision in so far as it dismissed its appeal against the Opposition Division’s decision;

– in the alternative, alter the contested decision so as to grant the application for registration in respect of the following goods in Class 25: ‘underwear, p[yj]amas, t-shirts, panties, und[i]es’;

16 In its written pleadings, the intervener observed that some of the annexes to the application were not in the language of the case and consequently requested the Court not to take them into consideration.

17 In accordance with point 108 of the Practice Rules for the Implementation of the Rules of Procedure of the General Court, the Registrar of the General Court, however, requested that the applicant lodge a translation into the language of the case of the annexes in question. That translation was lodged on 30 April 2016 and those translated annexes were served on the intervener. Consequently, there is nothing to preclude those annexes from being taken into consideration.

18 In its written pleadings the intervener also observed that the application had been signed by only one of the applicant’s three lawyers and took the view that it was therefore to be regarded as having been lodged only by that sole signatory.

19 In that regard, it is sufficient to state that the intervener has not contended that the application is inadmissible and that the application has, in any event, been signed by one of the applicant’s three lawyers, which is sufficient under the third paragraph of Article 19 of the Statute of the Court of Justice of the European Union, applicable to the General Court by virtue of the first paragraph of Article 53 thereof, and under Article 3 of the decision of the General Court of 14 September 2011 on the lodging and service of procedural documents by means of e-Curia (OJ 2011 C 289, p. 9).

20 The fact that the application has not been signed by the applicant’s three representatives is therefore irrelevant.

21 At the hearing, the applicant stated that it was limiting its claim for annulment of the contested decision to the extent that it was requesting that the contested decision should be annulled in so far as it had dismissed its appeal against the Opposition Division’s decision in respect of ‘underwear, pyjamas and t-shirts’ in Class 25.

22 The intervener did not raise any objections in that regard. By contrast, EUIPO considered that that limitation of the subject-matter of the action was belated.

23 It is important, at the outset, to bear in mind that Article 26(1)(c) of Regulation No 207/2009 (now Article 31(1)(c) of Regulation 2017/1001) provides that ‘an application for [a] … trade mark shall contain … a list of the goods or services in respect of which the registration is requested’. Furthermore, Article 43(1) of Regulation No 207/2009 (now Article 49(1) of Regulation 2017/1001) provides that, before EUIPO, ‘[t]he applicant may at any time withdraw his … trade mark application or restrict the list of goods or services contained therein’.

24 Moreover, the Court may annul or alter a decision of a Board of Appeal of EUIPO only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration referred to in Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001). Under Article 76 of that regulation (now Article 95 of Regulation 2017/1001), the Court must rule on the case in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. The Court may not, however, annul or alter a decision of a Board of Appeal on grounds which come into existence subsequent to its adoption (see, to that effect, judgment of 25 September 2014, Peri v OHIM (Shape of a turnbuckle), T‑171/12, EU:T:2014:817, paragraphs 13 and 14 and the case-law cited).

25 It follows that, in principle, a restriction of the list of goods or services contained in a trade mark application, which restriction is made after the adoption of the decision of the Board of Appeal that is challenged before the Court, cannot affect the legality of that decision (see judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 18 and the case-law cited).

26 It must also be noted, however, that a decision of a Board of Appeal of EUIPO may be challenged before the Court in relation to only some of the goods or services on the list given in the trade mark application concerned. In such a case, that decision becomes final in respect of the other goods or services on the same list (see judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 19 and the case-law cited).

27 Having regard to that possibility, the Court has interpreted a statement made before it by a trade mark applicant, a statement which was therefore made subsequent to the decision of the Board of Appeal, to the effect that it was withdrawing its application in respect of some of the goods which were initially covered by that application, as a statement that the contested decision was being challenged only in so far as it related to the remainder of the goods concerned, or as a partial withdrawal, where the statement was made at an advanced stage of the proceedings before the Court (see, to that effect, judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 20 and the case-law cited).

28 However, if the purpose of the restriction of the list of goods concerned is to alter one or more characteristics of that list with the result that that alteration might possibly have an effect on the examination of the trade mark carried out by the adjudicating bodies of EUIPO during the administrative proceedings, such an alteration at the stage of the action before the Court would amount to a change in the subject-matter of the pending proceedings, which is prohibited by Article 188 of the Rules of Procedure of the General Court. Consequently, such a restriction could not be taken into account in examining the merits of the action (see, to that effect and by analogy, judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 21 and the case-law cited).

29 In the present case, the applicant restricted the goods covered by its EU trade mark application at the hearing and therefore after the contested decision had been adopted.

30 It is not, however, apparent that the purpose of that restriction was to make, to one or more characteristics of the list of goods in respect of which the applicant had sought registration of the mark at issue, an alteration that was capable of having an effect on the examination of that mark carried out by EUIPO, which does not, moreover, submit that that is the case.

31 In those circumstances, in accordance with the case-law referred to in paragraph 27 above, it must be held that, at the hearing, the applicant validly withdrew its action in part.

32 Consequently, both the claim for annulment and the alternative claim for alteration must now be read, in accordance with the applicant’s wishes, as being directed against the contested decision in so far as that decision dismissed its appeal against the Opposition Division’s decision as regards ‘underwear, pyjamas and t-shirts’ in Class 25.

33 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. Having regard to the way in which that plea is set out, it can, however, be divided into two parts, alleging (i) that there was an error which arose from taking only the earlier German trade mark into consideration and (ii) that there was an error in the assessment of the similarity of the signs and of the goods at issue. It is appropriate to begin the examination of the plea by examining the second part.

34 The applicant submits, in essence, that, as there are no similarities between the signs and between the goods at issue, there is no likelihood of confusion between the mark applied for and the earlier marks.

35 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 must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

36 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).

37 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services covered by the marks at issue are identical or similar. Those conditions are cumulative (see, to that effect, 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).

38 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

39 In paragraph 21 of the contested decision, the Board of Appeal found that, having regard to the nature of the goods concerned, the likelihood of confusion had to be analysed from the point of view of the general public, which is reasonably well informed, reasonably observant and circumspect and has an average level of attention.

41 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 (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30). The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

42 In the present case, the applicant disputes the existence of visual, phonetic and conceptual similarities by comparing the mark applied for with the earlier marks, which are a word mark and figurative marks.

43 It must, however, be borne in mind that the Board of Appeal confined its examination of the likelihood of confusion to the comparison of the mark applied for with the earlier German trade mark. Furthermore, that mark is a figurative mark, which consists of a black rectangle, a white dot and a word element, namely the term ‘bianca’.

44 The Board of Appeal pointed out, in paragraph 30 of the contested decision, that, visually, the signs at issue coincide in the word ‘bianca’, which constitutes the word element of the earlier German trade mark and is fully reproduced in the mark applied for as the first six letters of that mark. Furthermore, the Board of Appeal observed that the two marks are ‘stylised’, as their word components are written in white letters on a black and blue rectangle respectively, and that, owing to the beginnings of their respective word elements, which beginnings they have in common, the two signs at issue are visually similar.

45 The applicant claims that the earlier German trade mark is rather plain, whereas the mark applied for comprises, first, the fanciful word ‘biancaluna’, consisting of ten white italic letters, of which the first letter ‘b’ and the last letter ‘a’ are written in upper case and are highly elaborate, secondly, a rectangular blue background outlined in orange, thirdly, an orange square connected to the left-hand side of that rectangle and, fourthly, a portion of a white disc which is situated within that square and is reminiscent of a half-moon. The applicant adds that the white half-moon situated in the orange square is the element which has the greatest weight in the relevant public’s perception of the mark, with the result that the marks at issue are not visually similar.

47 As regards the question as to which of the elements comprising the marks at issue, which are both composite marks, are dominant, it must be borne in mind that, according to the case-law, when assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35; of 8 February 2007, Quelle v OHIM — Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58, and of 23 November 2010, Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 35). It is also important to point out that where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant (judgments of 24 November 2005, Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 45, and of 23 November 2010, ARTESA NAPA VALLEY, T‑35/08, EU:T:2010:476, paragraph 36).

48 In the present case, as regards the earlier German trade mark, it must be held, as EUIPO correctly submits, that the black rectangle and the white dot are likely to be perceived as being purely decorative elements, with the result that the relevant public will probably not perceive either of those two elements as being visually dominant (see, to that effect, judgment of 23 October 2013, SFC Jardibric v OHIM — Aqua Center Europa (AQUA FLOW), T‑417/12, not published, EU:T:2013:550, paragraph 65). In that context, the word ‘bianca’ appears as dominant.

49 By contrast, the mark applied for begins, not with the word ‘bianca’, but with an easily recognisable crescent moon. Furthermore, that crescent moon is in a square the orange colour of which stands out in comparison to the blue background on which the word element is written. That crescent moon is therefore emphasised. What is more, the moon, to which an allusion is therefore made, constitutes an element which is particularly striking because the word element of the mark applied for includes the word ‘luna’. The intervener observes that, in German, that word is a synonym for ‘Mond’ (‘moon’) and that it may be understood by the relevant public as indeed meaning ‘moon’. More specifically, as a noun, the word ‘luna’ is a poetic synonym for ‘Mond’. It is used as such, inter alia, in fairy tales and also refers, even in German, to the goddess of the moon. Furthermore, the adjective ‘lunar’ refers to that which concerns the moon, as does the adjective ‘lunarisch’, which is, however, old-fashioned. In any event, even though the word ‘luna’ is not frequently used in German, the presence next to it of the figurative element which clearly represents a quarter moon is, by an association of ideas, capable of facilitating the German public’s understanding of the word. It follows that the German public is indeed in a position to understand the meaning of the word ‘luna’. Consequently, for the relevant public, the moon is evoked twice in the mark applied for, the first time as a figurative element and the second time as a word element, and that twofold evocation surrounds the word element ‘bianca’, which the signs at issue have in common and the importance of which is therefore diminished.

50 The intervener submits, however, that the word ‘luna’ is descriptive inasmuch as it will be understood as a reference to the intended purpose of the goods covered by the mark applied for which are to be used as night- or sleepwear, eveningwear and pyjamas. It maintains that, consequently, only the word ‘bianca’ has distinctiveness.

51 It must, however, be pointed out that the Board of Appeal did not find that the mark applied for or one of its components would be descriptive of a characteristic of the goods concerned. Furthermore, the goods in Class 25 in respect of which registration of the mark applied for had been refused and on which the appeal before the Board of Appeal was based were not limited to sleep- or eveningwear, as the list reproduced in paragraph 9 of the present judgment shows. The same observation must apply with regard to the goods to which the applicant limited its action before the Court. ‘Underwear’ and ‘t-shirts’ are not sleep- or eveningwear. As for ‘pyjamas’, although they are mainly worn at night and in the evening, they also more generally refer to loose-fitting, light indoor or leisure clothing. In addition, the moon has always represented a natural source of nocturnal light. Consequently, although the word ‘moon’ has been held to be descriptive with regard to moon-shaped lamps which have a luminous effect similar to that of the moon (judgment of 4 February 2015, KSR v OHIM — Lampenwelt (Moon), T‑374/13, not published, EU:T:2015:69, paragraphs 26 and 36), the relationship between the goods concerned and the word ‘luna’ is not so direct and specific that the same conclusion may be reached. Moreover, the moon does not evoke only the night. Its meanings are broader. For example, it evokes coolness and suggests movement, because its appearance changes. The symbolic dimension and the diversity of its meanings are therefore such that its expressions as a figurative element and as a word are sufficiently imaginative, in the mark applied for, for them not to be capable of being regarded as an allusion to a characteristic of the goods concerned.

52 The intervener also, however, submits that, even if the word ‘luna’ had distinctive character, the sign consisting of the word ‘biancaluna’ could lead the public to believe that the goods at issue come, at the very least, from economically-linked undertakings, in which case a likelihood of confusion would have to be held to be established. It takes the view that that likelihood is particularly great because the word ‘bianca’ is the only distinctive element in the company name Bianca-Moden GmbH & Co. KG.

53 However, in the present case, the dominant nature of the expressions of the moon as a figurative element and as a word, which results from the fact that they appear together, precludes the element ‘bianca’ from being perceived as a reference to the intervener’s company name or from being capable of making the relevant public believe that the goods concerned are a line of clothing which comes from Bianca-Moden or, at the very least, from an economically-linked undertaking.

54 It must, moreover, be pointed out that the mark applied for can be distinguished from the earlier German trade mark not only by means of its dominant element, but also, more broadly, by the overall impression which it gives.

55 In that regard, it must be borne in mind that the fact that the marks at issue include similar word elements does not, by itself, make it possible to conclude that the signs at issue are visually similar. The presence in the signs of figurative elements that are set out in a specific way can have the effect that the overall impression conveyed by each sign is different (judgments of 24 November 2005, KINJI by SPA, T‑3/04, EU:T:2005:418, paragraph 48, and of 23 November 2010, ARTESA NAPA VALLEY, T‑35/08, EU:T:2010:476, paragraph 43).

56 As the applicant submits, the stylistic differences between the earlier German trade mark and the mark applied for are significant. The earlier German trade mark is not very visually elaborate and is characterised by its simplicity. The letters in the element ‘bianca’ are all in a very plain font and are in an austere black rectangle. By contrast, the mark applied for has the particular feature of being much more ornamented. As has already been stated, it begins with a quarter moon. Furthermore, it combines the colours white, orange and blue. The letters of the element ‘biancaluna’ are in italics. The first letter, ‘b’, and the last letter, ‘a’, are stylised capital letters. Lastly, in contrast to the earlier German trade mark, the mark applied for does not contain a punctuation mark.

57 It follows from the foregoing that, in spite of the fact that the element ‘bianca’ is present in both of the signs at issue, those signs are not, as a whole, visually similar.

58 The Board of Appeal observed, in paragraph 31 of the contested decision, that the pronunciation of the two signs at issue coincided as regards the word element ‘bianca’, that the figurative elements in the marks at issue had no impact on their pronunciation and that, owing to their beginnings in common and thus to their partially similar pronunciations, it had to be found that the two signs were phonetically similar.

59 The applicant, on the contrary, submits that there is no phonetic resemblance between the marks at issue because the figurative elements of those marks are highly distinctive and dominant.

61 In that regard, it must be pointed out in that, in the strict sense, the phonetic reproduction of a composite sign corresponds in principle to that of all its word elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign from a visual standpoint (judgment of 25 May 2005, Creative Technology v OHIM — Vila Ortiz (PC WORKS), T‑352/02, EU:T:2005:176, paragraph 42).

62 In the present case, the earlier German trade mark is identified, from a phonetic standpoint, by the word ‘bianca’.

63 As regards the mark applied for, it must be held that the quarter moon which is emphasised at the beginning of that mark is a figurative shape and such a shape does not, in principle, have any impact from a phonetic standpoint. Furthermore, the element ‘bianca’ is pronounced first, with the result that it is undoubtedly what consumers find most striking (see, to that effect, judgment of 14 October 2009, Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT), T‑140/08, EU:T:2009:400, paragraph 57).

64 However, it has already been held, admittedly as regards a purely figurative mark, that where such a mark represents a shape which the relevant public is easily able to recognise and associate with a specific, concrete word, it will use that word to refer to the mark (judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 53).

65 In the present case, the relevant public is easily able to recognise the quarter moon which appears first in the mark applied for and is capable of verbalising that figurative element by associating a specific, concrete word with it, the word ‘luna’, which echoes that figurative element in the second part of the word element.

66 In the specific circumstances of the present case, which are characterised by the fact that the moon is evoked twice, once figuratively and once as a word, it must be held, expanding on the judgment of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262), that, by placing the emphasis solely on the word element common to the beginnings of the signs at issue, the Board of Appeal erroneously disregarded the fact that the figurative element in the mark applied for could have an effect on the pronunciation of that mark.

67 Consequently, it cannot be ruled out that the signs at issue may be distinguished from one another phonetically.

68 The Board of Appeal pointed out, in paragraph 33 of the contested decision, that the word ‘bianca’ is known in Germany as a female first name. It also found that the German public would not be able to recognise a concept in the term consisting of the two words ‘bianca’ and ‘luna’, since the latter word is not a German word. It concluded that the ‘concept of the moon’ which the applicant had invoked before it was not persuasive, probably not even for those consumers who might know that ‘luna’ means ‘moon’ in some languages. Consequently, the Board of Appeal found that the mark applied for did not have a conceptual meaning for the relevant public and it took the view that, in the absence of a reference to a concept, no conceptual difference between the signs at issue could be found to exist.

69 Before the Court, the applicant submits that the earlier marks evoke the concepts of immaculacy and pureness, whereas the mark applied for elicits thoughts of the moon and its white colour. It maintains that the difference between the marks at issue is particularly important because the element which they have in common, the word ‘bianca’, is not the dominant element in the mark applied for. By contrast, the moon shape and the word ‘biancaluna’, considered as a whole, are, in its view, of non-negligible significance.

70 The applicant adds that, both from the point of view of an Italian-speaking consumer and from that of a consumer speaking another European Union language, the word ‘biancaluna’ has distinctive character, because the two words ‘bianca’ and ‘luna’ and the combination of those words, ‘biancaluna’, are not descriptive of characteristics of the goods in respect of which registration has been sought. Furthermore, the applicant submits that, according to the rules of Italian grammar, the correct expression is ‘luna bianca’, and thus the inversion of those two words is not a familiar expression in Italian. It claims that the expression ‘biancaluna’ is a neologism and is conceptually different from the meaning of the word ‘bianca’.

71 With regard to the arguments put forward by the applicant, it must be borne in mind that it has already been pointed out, in paragraph 51 above, that the Board of Appeal did not find that the mark applied for would be descriptive of a characteristic of the goods concerned. Furthermore, as EUIPO submits, the applicant’s argument alleging that the juxtaposition of the words ‘bianca’ and ‘luna’ is unusual from the point of view of Italian grammar is irrelevant inasmuch as the relevant public is the German public.

72 As regards the earlier German trade mark, which was taken as the point of reference, the applicant’s argument that that mark evokes the concepts of immaculacy and pureness cannot succeed. It is clear from the findings made in paragraph 48 above that the word ‘bianca’ is the dominant element in that mark. However, the applicant has not explained in what way that word would evoke pureness or immaculacy for the relevant public. In particular, the applicant has not rebutted the Board of Appeal’s finding that, in Germany, the word ‘bianca’ evokes only a female first name.

73 As regards the mark applied for, it must be observed that, in the contested decision, the Board of Appeal found that the word ‘luna’ does not have any meaning in Germany. However, as has already been pointed out in paragraph 49 above, the intervener rightly states that the word ‘luna’ is a synonym for ‘Mond’ in that country, with the result that it may be understood by the relevant public as meaning ‘moon’. Furthermore, it has been stated, in that paragraph and in paragraph 51 above, that the word ‘luna’ has magical and mythological connotations and that it is associated with other concepts, such as coolness and movement.

74 The Board of Appeal therefore erred in finding that the word ‘luna’ has no meaning in German.

75 However, the Board of Appeal also found that the ‘concept of the moon’, which the applicant had invoked in its written pleadings before EUIPO, was not persuasive, probably not even for those consumers who might know that the word ‘luna’ means ‘moon’.

77 In that regard, it must be pointed out that, even though the German consumer confines himself to regarding ‘bianca’ as a female first name and is unaware that that first name is also a word which, in Italian, means ‘white’, he is faced straightaway, in the mark applied for, with a specific and immediately recognisable representation of a white moon. Consequently, in the specific figurative context of the present case and in so far as the German public understands the word ‘luna’ as meaning ‘moon’, the Board of Appeal erred in finding that the ‘concept of the moon’ invoked by the applicant was not persuasive.

78 It is therefore highly unlikely that the relevant public’s lack of understanding of the meaning of the word ‘bianca’ in Italian will be sufficient to give rise to conceptual confusion with the earlier German trade mark on the part of that relevant public and that is so, as has been stated in paragraph 53 above, even though the word ‘bianca’ is the element in the intervener’s company name that attracts attention.

79 It follows that the Board of Appeal erred in finding that no conceptual difference between the signs at issue could be found to exist.

80 It follows from all of the foregoing that, on an overall impression, in spite of the presence of the element in common ‘bianca’, the signs at issue are not visually and conceptually similar and that they are also capable of being distinguished from one another phonetically. Consequently, those signs are not identical or similar for the purposes of Article 8(1)(b) of Regulation No 207/2009. Moreover, it has already been held, as regards textile goods such as those in the present case, that, in view of the way in which those goods are purchased, the visual comparison of the signs must be accorded the greatest weight (judgment of 14 July 2016, Modas Cristal v EUIPO — Zorlu Tekstil Ürünleri Pazarlama (KRISTAL), T‑345/15, not published, EU:T:2016:405, paragraph 100). It is precisely in its visual aspect that the mark applied for differs most from the earlier German trade mark.

81 In view of the examination above, it is evident that one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not satisfied.

82 It must therefore be held that the Board of Appeal erred in upholding the Opposition Division’s decision finding that there was a likelihood of confusion within the meaning of that provision.

83 The second part of the plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, is therefore well founded, without it being necessary to examine the applicant’s argument that there is no likelihood of confusion between the goods covered by the earlier German trade mark and those covered by the mark applied for.

84 Consequently, since, in cases where an opposition is founded on a number of earlier national and EU trade marks, EUIPO is under no obligation to give priority to the EU trade marks (order of 11 May 2006, TeleTech Holdings v OHIM — Teletech International (TELETECH INTERNATIONAL), T‑194/05, EU:T:2006:124, paragraph 35), the contested decision must be annulled, without it being necessary to examine the first part of the plea in law, alleging that there was an error which arose from taking only the earlier German trade mark into consideration.

The claims for the case to be remitted to EUIPO and for alteration of the contested decision

85 In its second head of claim, the applicant expressly requests that the case be remitted to EUPO. It must, however, be borne in mind that, pursuant to Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), the measures necessary to comply with a judgment annulling all or part of a decision of a Board of Appeal include re-examination by the Boards of Appeal of the case to which that decision relates (see, to that effect, judgment of 3 July 2013, Cytochroma Development v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑106/12, not published, EU:T:2013:340, paragraph 23). As regards the third head of claim, requesting that the contested decision be altered, that head of claim is set out in the alternative to the claim for annulment which is being granted.

86 Consequently, it is unnecessary expressly to order the case to be remitted to EUIPO or to rule on the alternative claim for alteration.

87 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.

88 In the present case, EUIPO and the intervener have been unsuccessful. Consequently, first, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. Secondly, since the intervener has been unsuccessful, it must bear its own costs.

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 August 2015 (Case R 2720/2014-5);

2. Orders EUIPO to bear its own costs and to pay those incurred by Frame Srl;

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Frame v EUIPO - Bianca-Moden (BiancalunA) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-628/15 (07 November 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T62815.html Cite as: ECLI:EU:T:2017:781, [2017] EUECJ T-628/15, EU:T:2017:781

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