Environmental Manufacturing v EUIPO - Societe Elmar Wolf (Representation d'une tête de loup) (Intellectual, industrial and commercial property : Trade marks - Judgment) [2017] EUECJ T-681/15 (03 May 2017)

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(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a wolf’s head — Earlier international figurative mark Outils WOLF — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Environmental Manufacturing LLP, established in Stowmarket (United Kingdom), represented by S. Malynicz QC,

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

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

Société Elmar Wolf, established in Wissembourg (France), represented by N. Boespflug, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 3 September 2015 (Case R 1252/2015-1), relating to opposition proceedings between Société Elmar Wolf and Environmental Manufacturing,

composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 20 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 31 March 2016,

having regard to the response of the intervener lodged at the Court Registry on 23 March 2016,

1 The applicant, Environmental Manufacturing LLP, is the proprietor of the rights connected with the application for registration of the EU trade mark filed by its predecessor in law, Entec Industrie Limited, on 9 March 2006, under the number 4971511, with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

3 The goods in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Class 7 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 to the following description: ‘Machines for professional and industrial processing of wood and green waste; professional and industrial wood chippers and shredders’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 38/2006 of 18 September 2006.

5 On 18 December 2006, the intervener, Société Elmar Wolf, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

6 The opposition was, in particular, based on the following earlier marks and rights:

– the French figurative mark registered on 8 April 1999 under the number 99786007 in respect of goods in Classes 1, 5, 7, 8, 12 and 31, corresponding to the figurative sign in red and yellow reproduced below:

– the French figurative mark registered on 22 September 1948 under the number 1480873 and extended, under the Madrid Agreement, to Spain and Portugal, in respect of goods in Classes 7 and 8, namely ‘ploughing implements, implements for gardening and implements for cultivation’, reproduced at the end of the paragraph;

– the international figurative mark registered on 22 June 1951 under the number 154431, with effect in Spain and Portugal, in respect of goods in Classes 7 and 8, namely ‘ploughing implements, implements for gardening and implements for cultivation’, reproduced at the end of the paragraph;

– the international figurative mark registered on 20 January 1969 under the number 352868, with effect in Spain, in respect of goods in Class 7, namely ‘motor-driven lawnmowers, hand-operated lawnmowers, the spare parts and accessories thereof; land cultivation implements, instruments and accessories for the lawn, the garden, horticulture and, more generally, land cultivation implements, agricultural implements; machines, machine tools, motors and engines (except for vehicles)’, goods in Class 8, namely ‘mowers of all kinds, the spare parts and accessories thereof, instruments and accessories for the lawn, the garden, horticulture and, more generally, land cultivation implements, agricultural implements’, goods in Class 12, namely ‘wheelbarrows and trolleys; wheeled roll stands for watering hoses and, more generally, vehicles; apparatus for locomotion by land, air or water’ and goods in Class 21, namely ‘metal brushes; sprinklers for the lawn, the garden, horticulture and agriculture as well as watering cans; roll stands, particularly for watering hoses and for electrical cables’, reproduced below:

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).

8 On 25 January 2010, the Opposition Division rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009 on the ground that there was no likelihood of confusion between the signs at issue. The Opposition Division also rejected the opposition based on Article 8(5) of that regulation on the ground that the intervener had not adduced evidence of any detriment to the repute of the earlier marks or any unfair advantage gained from them.

9 On 23 March 2010, the intervener appealed against the Opposition Division’s Decision.

10 By decision of 6 October 2010, the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division, upholding the opposition based on Article 8(5) of Regulation No 207/2009. Consequently, the application for registration was rejected without it being necessary to examine the grounds of opposition based on Article 8(1)(b) of that regulation.

11 By application lodged at the Registry of the General Court on 17 December 2010, the applicant brought an action for the annulment of the decision of the Second Board of Appeal. In that action, the applicant, inter alia, alleged infringement of Article 8(5) of Regulation No 207/2009, in so far as the Board of Appeal had found that there was a risk of dilution and a risk of free-riding.

12 By judgment of 22 May 2012, Environmental Manufacturing v OHIM — Wolf (Representation of the head of a wolf) (T‑570/10, EU:T:2012:250), the General Court held that the Board of Appeal had been right in finding that the use of the mark applied for would give rise to a risk of dilution of the earlier marks constituting detriment to the distinctive character of those marks. It therefore dismissed the applicant’s action without examining the arguments relating to the risk of free-riding.

14 By judgment of 14 November 2013, Environmental Manufacturing v OHIM (C‑383/12 P, EU:C:2013:741), the Court of Justice set aside the judgment of 22 May 2012, Representation of the head of a wolf (T‑570/10, EU:T:2012:250). The Court of Justice held that the mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009, to the extent that that similarity does not cause any confusion in their minds. According to the case-law, proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future. The Court of Justice therefore held that, by not examining that condition, the General Court had erred in law (paragraphs 34 to 44 of the judgment) and referred the case back to the General Court.

15 By judgment of 5 February 2015, Environmental Manufacturing v OHIM — Wolf (Representation of the head of a wolf) (T‑570/10 RENV, not published, EU:T:2015:76), the General Court annulled the Second Board of Appeal’s decision of 6 October 2010 on the ground that that Board of Appeal had found, first, that there was a risk of dilution without ascertaining whether the use of the mark applied for might lead to a change in the economic behaviour of the average consumer and, secondly, that an unfair advantage might be secured through the use of the mark applied for without ascertaining whether any particular quality associated with the earlier mark was capable of being transferred to the goods covered by the mark applied for.

16 The case was remitted to the Board of Appeal for further examination. By decision of 23 June 2015, the Presidium of the Boards of Appeal of EUIPO assigned the case, now registered under the reference number R 1252/2015-1, to the First Board of Appeal.

17 By decision of 3 September 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division in so far as it had rejected the opposition based on Article 8(1)(b) and (5) of Regulation No 207/2009.

18 In the first place, the Board of Appeal found that proof of use had been furnished only in respect of the earlier mark Outils WOLF, reproduced in paragraph 6 above and registered under the numbers 1480873 and 352868. It found, in the light of the evidence provided, first, that that mark could be regarded as registered, for the purposes of its decision, in respect of all the goods in Class 7 specified in those registrations with the exception of ‘motors and engines (except for vehicles)’ and, secondly, that it had enhanced distinctiveness in France in respect of lawnmowers and brushcutters.

19 In the second place, in the context of the examination of the likelihood of confusion, first of all, the Board of Appeal found that the relevant public consisted both of professionals and of the general public with an interest in instruments and machines in the garden and park maintenance sector. Furthermore, the Board of Appeal found that it was sufficient, in the context of that examination, to take into account the French part of that public. It also stated that, given the nature of the goods in question, which may include comparatively expensive machines and instruments, a relatively high level of attention on the part of the relevant public could be expected.

20 Next, as regards the comparison of the goods at issue, the Board of Appeal found that the goods covered by the mark applied for were, at the very least, similar to a high degree to some of the goods in respect of which the earlier mark is protected, namely plant shredders.

21 Lastly, as regards the comparison of the signs at issue, the Board of Appeal found that, in so far as those signs both represented the head of an animal, they were visually and conceptually similar to an average degree. By contrast, the Board of Appeal found that it was not possible to compare the signs at issue from a phonetic standpoint because the purely figurative mark applied for did not correspond to a concrete and specific word. It took the view that it could be a wolf, dog or another canine, such as a fox. It found that it was therefore difficult to attribute a specific sound to that mark.

22 Consequently, the Board of Appeal, taking into account, first, the fact that the earlier mark was highly distinctive and taking the view, secondly, that the high degree of similarity between the goods at issue offset the average degree of similarity between the signs at issue, concluded that there might, in the present case, be a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, even though the public’s level of attention was high.

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

26 The applicant submits, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue. More specifically, the applicant disputes the Board of Appeal’s findings relating, first, to the existence of an average degree of visual and conceptual similarity between the signs at issue and, secondly, to the impossibility of comparing the signs at issue phonetically, inasmuch as the mark applied for does not correspond to a concrete and specific word.

28 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.

29 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 26 June 2014, Basic v OHIM — Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 21 and the case-law cited).

30 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 26 June 2014, basic, T‑372/11, EU:T:2014:585, paragraph 22 and the case-law cited).

31 It is in the light of those considerations that it must be examined whether the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that there might be a likelihood of confusion in the present case.

32 It must be pointed out at the outset that the applicant does not, in the context of the present action, dispute the Board of Appeal’s findings that, first, the earlier figurative mark Outils WOLF, registered under the numbers 1480873 and 352868, had been put to genuine use in connection with all the goods in Class 7 specified in those registrations, with the exception of ‘motors and engines (except for vehicles)’ and that, secondly, it had enhanced distinctiveness in France in respect of lawnmowers and brushcutters.

33 The Board of Appeal found, in paragraphs 37 and 38 of the contested decision, that the relevant public consisted, in the light of the goods at issue, both of a public of professionals and of a public of amateurs with an interest in instruments and machines in the garden and park maintenance sector.

34 Furthermore, the Board of Appeal found that it was sufficient, in the present case, to take into account the French part of that public.

35 It also stated, in paragraph 53 of the contested decision, that, given the nature of the goods in question, which may include comparatively expensive machines and instruments, a relatively high level of attention on the part of the relevant public could be expected.

36 Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

37 The Board of Appeal found, in paragraphs 40 and 41 of the contested decision, that the goods covered by the mark applied for were, at the very least, similar to a high degree to some of the goods in respect of which the earlier mark is protected, namely plant shredders.

38 Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

39 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 1 March 2016, BrandGroup v OHIM — Brauerei S. Riegele, Inh.Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 28 and the case-law cited).

40 According to settled 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 (see judgment of 1 March 2016, SPEZOOMIX, T‑557/14, not published, EU:T:2016:116, paragraph 29 and the case-law cited).

– The mark applied for, reproduced below, is a purely figurative mark representing the head of an animal:

– The earlier mark, reproduced below, is a composite mark consisting of both a figurative element that also represents the head of an animal and the word elements ‘outils’ and ‘wolf’:

42 The Board of Appeal found, in paragraph 46 of the contested decision, that, in so far as the signs at issue both represented the head of an animal with numerous features in common, they were visually similar to an average degree.

43 The applicant disputes that assessment on the part of the Board of Appeal, relying on the case-law according to which, where a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter. It submits that, in the present case, the word elements in the earlier mark are graphically much larger than the figurative element and that it is therefore not possible to ignore them when considering the marks visually. The applicant maintains that the Board of Appeal thus erred, in carrying out its assessment, by not giving greater consideration to the word elements in the earlier mark. It takes the view that taken as a whole, there is therefore, as a result of the similar figurative element, at best a low degree of similarity between the signs at issue.

44 In that regard, it must be stated that the signs at issue have a figurative element in common, a figurative element which, moreover, constitutes the only element in the mark applied for. That element represents, as the Board of Appeal correctly pointed out, a finding which is also not disputed by the applicant, the head of a canine with upright triangular ears, an elongated muzzle and a menacing expression. That head of an animal is depicted, in both of the signs at issue, from the front and in similar colours. In the mark applied for, the representation is more naturalistic whereas, in the earlier mark, it is more stylised and less detailed. The mark applied for does not contain any word element whereas the earlier mark also consists of the word elements ‘outils’ and ‘wolf’, which are placed respectively on the left-hand side and the right-hand side of the figurative element.

45 However, those differences do not make it possible to come to the conclusion, as the applicant submits, that there is only a low degree of similarity between the signs at issue. It must, on the contrary, be held, as the Board of Appeal found, that the relevant consumer will, in any event, perceive the signs at issue to be visually similar and will recollect the head of a canine, which may be perceived as a wolf, a dog or a fox.

46 Furthermore, it is important to bear in mind that it does not follow from the case-law relied on by the applicant that the word elements of a composite mark must always be considered to be more distinctive than the figurative elements. In the case of a composite mark, the figurative element may, in particular on account of its shape, size, colour or position in the sign, rank equally with the word element (see judgment of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 61 and the case-law cited).

47 Accordingly, first, it must be held that in the present case the figurative element in the earlier mark is visually dominant on account of, first of all, its central position, secondly, the circle surrounding it, and, lastly, the word elements ‘outils’ and ‘wolf’ placed respectively on its left-hand side and right-hand side. Secondly, it must be pointed out that that figurative element is visually striking, on account of its menacing expression and its stylisation of black on a white background. Thirdly, it must be noted that that figurative element is distinctive in relation to the goods at issue. The head of an animal, representing the head of a canine, does not have any connection with, or meaning with regard to, the goods at issue. Fourthly, it must be pointed out that, of the word elements in the earlier mark, only the word element ‘wolf’ will, in the light of the goods at issue, have distinctive character for the relevant public. The word element ‘outils’, because of its inherent descriptiveness with regard to the goods at issue, will not be perceived by the consumer as distinctive. Fifthly, contrary to what the applicant maintains, it must be stated that the word elements in the earlier mark are not much larger than the figurative element. On the contrary, the figurative element is visually larger. The applicant therefore errs in claiming that the consumer’s attention will focus more on the word elements in the earlier mark than on the figurative element.

48 Consequently, in the light of all of those considerations, it must be held that the Board of Appeal was right in finding that the signs at issue were visually similar to an average degree.

49 The Board of Appeal found, in paragraph 47 of the contested decision, that it was not possible to compare the signs at issue from a phonetic standpoint because the mark applied for did not correspond to a concrete and specific word. According to the Board of Appeal, it could be a wolf, dog or another canine, such as a fox. It found that it was therefore difficult to attribute a specific sound to it.

50 The applicant disputes that assessment on the part of the Board of Appeal. The applicant submits that there was no need for the mark applied for to ‘unequivocally’ depict a wolf, dog or fox, since, on any view, it depicted one of those animals and because, whatever the animal depicted, the equivalent word would not be similar phonetically to the earlier mark OUTILS WOLF. It maintains that the Board of Appeal should therefore have concluded that a comparison could be carried out, which would have made it possible to find that there is a high degree of phonetic dissimilarity between the signs at issue.

51 The applicant also submitted, at the hearing, that the Board of Appeal was obliged to compare the signs at issue phonetically, because it would have made it possible to dispute that there was the likelihood of confusion and that that lack of a phonetic comparison was therefore sufficient, on its own, to annul the contested decision.

52 In that regard, it must be stated that a phonetic comparison of the signs at issue is irrelevant in the examination of the similarity of a purely figurative mark with another mark. A purely figurative mark cannot, as such, be pronounced. At the very most, its visual or conceptual content can be described orally. However, such a description necessarily coincides with either the visual or the conceptual perception of the mark concerned. Consequently, there is no need to examine separately the phonetic perception of a purely figurative mark and to compare it with the phonetic perception of other marks (see, to that effect, judgments of 26 April 2016, Franmax v EUIPO — Ehrmann (Dino), T‑21/15, not published, EU:T:2016:241, paragraph 75 and the case-law cited, and of 20 October 2016, Monster Energy v EUIPO — Hot-Can Intellectual Property (HotoGo self-heating can technology), T‑407/15, not published, EU:T:2016:624, paragraph 56).

53 In any event, it is true that, as the applicant submits, according to the case-law, where a purely figurative 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, whereas if a figurative mark also includes a word element, it will in general be by using that word element that the relevant public will refer to the mark (judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 53). However, contrary to what the applicant submits, that implies that the semantic content of the purely figurative mark can immediately be associated with a specific, concrete word (judgment of 7 May 2015, GELENKGOLD, T‑599/13, EU:T:2015:262, paragraph 62). In the present case, the figurative element in the mark applied for reproduces the head of a canine, which is capable of being perceived as a wolf, a dog or a fox. Consequently, no specific word can with certainty be attributed to the mark applied for. Moreover, the menacing representation of that animal’s head tends to reinforce that uncertainty as to the precise and exact attribution of a word, and therefore of a sound, to the mark applied for.

54 Accordingly, the Board of Appeal was right in finding that it was not possible to compare the signs at issue phonetically.

56 The Board of Appeal found, in paragraph 48 of the contested decision, that, to the extent that the signs at issue conveyed the same concept, namely the head of an animal, evoking a wolf, dog or another canine with a menacing expression, they were conceptually similar to an average degree.

57 The applicant submits, in essence, that the Board of Appeal erred in finding that there was a conceptual similarity between the signs at issue as a result of the word ‘wolf’ in the earlier mark, a word of which the Board of Appeal stated that it accentuated that conceptual similarity. The applicant maintains that, as the Board of Appeal, however, rightly concluded in the contested decision, the word ‘wolf’ would be perceived by French, Spanish and Portuguese consumers as a surname. It takes the view that it could not therefore accentuate the conceptual similarity, but could reduce it.

58 In that regard, in the first place, it must be pointed out that the applicant misinterprets the contested decision. The Board of Appeal did not find that the conceptual similarity of the signs at issue was connected with the word ‘wolf’ in the earlier mark, but with the figurative element, which those signs have in common. However, it found that, for consumers who would see in that figurative element in common the representation of a wolf’s head and not that of another canine, that fact would accentuate the conceptual similarity between the signs at issue.

59 In the second place, it must be borne in mind that, in accordance with the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content (see judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraph 122 and the case-law cited).

60 First, it must be pointed out that the signs at issue correspond in their figurative element, which conveys the same image, namely the head of a canine with a menacing expression, which is capable of being perceived as a wolf, a dog or a fox.

61 Secondly, contrary to what the applicant claims, the mere fact that the earlier mark contains a word element which has no meaning for the relevant public does not make the signs at issue conceptually different (see, to that effect, judgment of 12 November 2015, WISENT, T‑449/13, not published, EU:T:2015:839, paragraph 125 and the case-law cited).

62 Thirdly, it must be held, as the Board of Appeal found, that the word element ‘wolf’ in the earlier mark will be understood by the relevant public with a sufficient knowledge of English as meaning ‘loup’ or ‘lobo’, which, in accordance with the case-law, will strengthen the concept conveyed by the figurative element of the earlier mark for that part of the public (see judgment of 12 November 2015, WISENT, T‑449/13, not published, EU:T:2015:839, paragraph 126 and the case-law cited).

63 Fourthly, it must be pointed out, first, that the figurative element in the earlier mark is as distinctive as the word elements, with the result that the relevant consumer will recall the image of the head of a canine with a menacing expression as regards the earlier mark. Secondly, since the mark applied for is a purely figurative mark, consisting of a single element, it will be identified and recalled by the relevant public, only by means of that image.

64 Consequently, in the light of all of those considerations, it must be held that the Board of Appeal did not err in finding that the signs at issue were conceptually similar to an average degree.

65 The Board of Appeal found, in paragraph 55 of the contested decision, that, in view of, first, the highly distinctive character of the earlier mark and, secondly, the fact that the high degree of similarity of the goods at issue offset the average degree of similarity of the signs at issue, there might be a likelihood of confusion in the present case, in spite of the high level of attention of the relevant public. The Board of Appeal took the view, in paragraph 56 of the contested decision, that the mark applied for, which reproduces the distinctive figurative element of the earlier mark, might, at the very least, be considered by the relevant consumer to be a new version of the earlier mark.

66 The applicant submits that there is no likelihood of confusion in the present case, on account of the low degree of similarity between the signs at issue. The applicant also submits that the Board of Appeal erred in failing to have regard to the findings regarding the lack of a likelihood of confusion between the signs at issue made respectively by the Second Board of Appeal of EUIPO in the earlier decision of 6 October 2010, by the General Court in its judgments of 22 May 2012, Representation of the head of a wolf (T‑570/10, EU:T:2012:250) and of 5 February 2015, Representation of the head of a wolf (T‑570/10 RENV, not published, EU:T:2015:76) and by the Court of Justice in its judgment of 14 November 2013, Environmental Manufacturing v OHIM (C‑383/12 P, EU:C:2013:741). Lastly, the applicant maintains that, since the intervener did not appeal against the Second Board of Appeal’s finding, in paragraph 26 of the decision of 6 October 2010, that the level of similarity was not sufficient to give rise to a likelihood of confusion, it must be taken to have accepted that finding as correct.

67 In that regard, it must be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see judgment of 21 June 2012, Kavaklidere-Europe v OHIM — Yakult Honsha (Yakut), T‑276/09, not published, EU:T:2012:313, paragraph 52 and the case-law cited).

68 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It cannot therefore be ruled out that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).

69 As is apparent from paragraphs 42 to 64 above, first of all, there is an average degree of similarity between the signs at issue as a whole. Secondly, the goods covered by the mark applied for are, at the very least, similar to a high degree to some of the goods in respect of which the earlier mark is protected. Lastly, the earlier mark has a highly distinctive character, both inherently and acquired through use, a fact which the applicant does not dispute.

70 It follows that, in the context of a global assessment of the likelihood of confusion, it must be held that there may be a likelihood of confusion between the signs at issue.

71 Consequently, the Board of Appeal did not err in reaching that conclusion in the contested decision.

72 It is also important to point out that, contrary to what the applicant claims, a low degree of similarity between the signs at issue would not, in the present case, have been capable of ruling out a likelihood of confusion, in view of, first, the high degree of similarity between the goods and, secondly, the highly distinctive character of the earlier mark (see, to that effect, judgments of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 35, and of 28 September 2016, The Art Company B & S v EUIPO — G-Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 39 and the case-law cited).

73 Furthermore, the applicant cannot usefully rely, in support of its arguments, on the Second Board of Appeal’s decision of 6 October 2010 relating to the signs at issue and on the subsequent judgments of the General Court and the Court of Justice.

74 In those decisions, the Second Board of Appeal of EUIPO, the General Court and the Court of Justice examined the signs at issue only in the light of Article 8(5) of Regulation No 207/2009 and did not examine them in the light of Article 8(1)(b) of that regulation as the First Board of Appeal did in the present case. The issue of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 was not therefore examined in the earlier decisions, with the result that no conclusion may be drawn from them with regard to the present case. Only the issue of a risk of dilution and free-riding was addressed in those decisions. However, in that context, an examination as to the likelihood of confusion is not required as the existence of a similarity between the signs at issue is sufficient (see judgment of 20 November 2014, Intra-Presse v OHIM, C‑581/13 P and C‑582/13 P, not published, EU:C:2014:2387, paragraph 72 and the case-law cited).

76 In view of all of the foregoing considerations, the applicant’s plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected as unfounded and the present action must therefore be dismissed in its entirety.

77 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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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) >> Environmental Manufacturing v EUIPO - Societe Elmar Wolf (Representation d'une tête de loup) (Intellectual, industrial and commercial property : Trade marks - Judgment) [2017] EUECJ T-681/15 (03 May 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T68115.html Cite as: [2017] EUECJ T-681/15, EU:T:2017:296, ECLI:EU:T:2017:296

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