Pablosky v EUIPO - docPrice (mediFLEX easystep) (EU trade mark - Judgment) [2020] EUECJ T-20/19 (08 July 2020)

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(EU trade mark — Opposition proceedings — Application for the EU word mark mediFLEX easystep — Earlier EU figurative mark Stepeasy — Relative grounds for refusal — Article 8(1)(b) of Regulation (EU) 2017/1001)

Pablosky, SL, established in Madrid (Spain), represented by M. Centell, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, H. O’Neill and V. Ruzek, acting as Agents,

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

docPrice GmbH, established in Koblenz (Germany), represented by K. Landes, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 November 2018 (Case R 77/2018-4), relating to opposition proceedings between Pablosky and docPrice,

composed of V. Tomljenović, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,

having regard to the application lodged at the Court Registry on 11 January 2019,

having regard to the response of EUIPO lodged at the Court Registry on 23 April 2019,

having regard to the response of the intervener lodged at the Court Registry on 17 April 2019,

having regard to the decision of 27 November 2019 joining Cases T‑20/19 and T‑21/19 for the purposes of the oral part of the procedure,

further to the hearing on 15 January 2020, in the course of which a number of questions were put to the applicant and to EUIPO,

1 On 3 August 2016, the intervener, docPrice GmbH, 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 of the mark applied for was sought are in Classes 10 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 10: ‘Orthopaedic footwear, orthopaedic soles and shoe insoles, arch supports; boots for medical purposes; orthopaedic bandages and splints’;

– Class 25: ‘Clothing; headgear; footwear, and parts therefor, in particular shoe soles, shoe buckles and heels, health shoes’.

4 On 15 September 2016, the applicant, Pablosky, SL, filed a notice of opposition to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.

5 The opposition was based on the EU figurative mark reproduced below, which was filed on 4 February 2016 and registered on 22 June 2016 under the number 15076961 in respect of ‘clothing’, ‘footwear’ and ‘headwear’ in Class 25:

6 The grounds relied on by the applicant were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

7 On 12 December 2017, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, and that it was necessary, on that ground, to reject the application for registration in respect of ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 and in respect of ‘clothing’, ‘headgear’, ‘footwear’ and ‘health shoes’ in Class 25 (taken together, ‘the contested goods’), but that the mark applied for could be registered in respect of the other goods, namely ‘orthopaedic soles and shoe insoles, arch supports’ and ‘orthopaedic bandages and splints’ in Class 10 and ‘parts [for footwear], in particular shoe soles, shoe buckles and heels’ in Class 25.

8 On 11 January 2018, the intervener filed a notice of appeal with EUIPO, in accordance with Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division, in so far as the Opposition Division had partially upheld the opposition as regards the contested goods or, at the very least, as regards ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10.

9 By decision of 8 November 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO found that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, with regard to any of the goods at issue, even with regard to those which were identical. Consequently, it annulled the Opposition Division’s decision and rejected the opposition in its entirety, including with regard to the contested goods.

– reject the application for registration of the mark applied for in respect of all of the goods in Classes 10 and 25 referred to in the application;

13 In reply to the second question put by the Court at the hearing, the applicant confirmed that the subject matter of the present action was restricted to the contested goods, with regard to which the Opposition Division’s decision of 12 December 2017 had not become definitive and with regard to which, in the contested decision, the Opposition Division’s decision had been annulled and the opposition had been rejected by the Board of Appeal.

– Class 25: ‘Clothing; headgear; footwear; health shoes’ (see paragraphs 7 and 8 above).

15 By contrast, the present action does not relate to the ‘orthopaedic soles and shoe insoles, arch supports’ or ‘orthopaedic bandages and splints’ in Class 10 or the ‘parts [for footwear], in particular shoe soles, shoe buckles and heels’ in Class 25, which were also covered by the application for registration (see paragraph 3 above).

The second head of claim and the issue of whether the Court has jurisdiction to deal with it

16 By its second head of claim, the applicant claims that the application for registration of the mark applied for should be rejected in respect of all of the goods in Classes 10 and 25 referred to in that application. For the reasons stated in paragraphs 13 and 14 above, that head of claim must be understood as relating, in practice, solely to the contested goods.

17 In reply to the first question put by the Court at the hearing, the applicant stated that, by that head of claim, it was requesting that the Court, after annulling the contested decision, itself adopt the decision which the Board of Appeal should have taken.

18 In the light of well-established case-law (judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraphs 22, 27 and 29 to 31, and of 13 February 2019, Etnia Dreams v EUIPO — Poisson (Etnik), T‑823/17, not published, EU:T:2019:85, paragraph 24; see also, to that effect, judgment of 11 April 2019, Inditex v EUIPO — Ansell (ZARA TANZANIA ADVENTURES), T‑655/17, not published, EU:T:2019:241, paragraphs 13 and 61), the applicant’s second head of claim must be regarded as requesting, in essence, that the Court alter the contested decision by adopting, with regard to the substance, the decision which it claims the Board of Appeal should have taken in accordance with the provisions of the European Union trade mark regulation in the version in force as at the date of the application for registration. In this connection, the applicant submits that the Board of Appeal should have found that there was, in the present case, a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the part of a significant part of the relevant public, which would have justified the rejection of the application for registration in respect of all of the contested goods, as in the Opposition Division’s decision of 12 December 2017 (paragraph 7 above).

19 In that regard, Article 47(5) of Regulation 2017/1001 provides that, ‘if examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the EU trade mark application has been made, the application shall be refused in respect of those goods or services’ and that, ‘otherwise the opposition shall be rejected’. It follows that, in opposition proceedings, the decision taken by the Opposition Division, if it finds that there is a likelihood of confusion, consists in refusing the application for registration in respect of the goods or services to which that finding relates. Where it decides on the substance of an appeal which has been brought before it against a decision taken by the Opposition Division, the Board of Appeal may, in accordance with Article 71(1) of that regulation, dismiss that appeal as unfounded or exercise any power within the competence of the Opposition Division or even remit the case to the Opposition Division for further consideration.

20 Furthermore, Article 72(3) of Regulation 2017/1001 provides that ‘the General Court shall have jurisdiction to annul or alter the contested decision’, it being noted that exercise of that power to alter decisions must, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72; of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraph 48, and of 4 June 2013, i-content v OHIM — Decathlon (BETWIN), T‑514/11, EU:T:2013:291, paragraph 78).

21 In the present case, it must be held that, by its second head of claim, the applicant requests, in essence, that the Court dismiss the appeal which the intervener brought before the Board of Appeal in so far as it concerns ‘orthopaedic footwear [and] boots for medical purposes’ in Class 10 and ‘clothing’, ‘headgear’, ‘footwear’ and ‘health shoes’ in Class 25, and that that measure is among those which may be taken by the Court in the exercise of its power to alter decisions.

22 It follows from the foregoing that the applicant’s second head of claim includes an application for alteration of the contested decision and that the Court has jurisdiction to deal with it.

23 In support of its claims for annulment and alteration, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

24 EUIPO and the intervener contend that the action should be dismissed in its entirety on the ground that the Board of Appeal was right in finding, in the contested decision, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

25 It is important to bear in mind that Article 8(1)(b) of Regulation 2017/1001 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.

26 The fact that parties which claim that a decision of a Board of Appeal should be annulled do not dispute certain factors that are essential to the analysis of the likelihood of confusion does not mean that the Court may not or must not review the merits of those factors, since those factors constitute an essential stage of the reasoning which the Court is required to engage in in order to carry out that review. Where one of the parties claiming that the Board of Appeal’s decision should be annulled has called into question the Board of Appeal’s assessment relating to the likelihood of confusion, the Court has, by virtue of the principle of interdependence between the factors taken into account, in particular the similarity of the trade marks and that of the goods and services covered, jurisdiction to examine the Board of Appeal’s assessment of those factors (see, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 47). Where it is called upon to assess the legality of a decision of a Board of Appeal of EUIPO, the Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before it (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48).

27 It is clear from the contested decision, in particular from paragraph 19 thereof, that the Board of Appeal took the view that the relevant territory for the purposes of the assessment of the likelihood of confusion was that of the European Union.

28 The applicant does not criticise the Board of Appeal’s assessment, in the contested decision, regarding the relevant territory. Furthermore, that assessment is expressly supported by EUIPO and implicitly supported by the intervener.

29 In accordance with Article 8(1)(b) of Regulation 2017/1001, whether there is a likelihood of confusion must be assessed on the part of the public in the territory in which the earlier trade mark is protected (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 51, and of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 59).

30 Since the earlier mark is an EU trade mark, which is protected throughout the territory of the European Union, the question as to whether there is a likelihood of confusion must, in the present case, be assessed with regard to that territory.

31 Consequently, the Board of Appeal’s assessment that the relevant territory is that of the European Union must be upheld.

32 In paragraph 11 of the contested decision, the Board of Appeal stated that, in its view, the goods at issue were aimed ‘mainly at the general public, who w[ould] display an average level of attention in relation to them, given that they are durable items which are not normally purchased particularly frequently’.

33 The applicant does not dispute that the relevant public corresponds to the general public, but seems to take the view that the level of attention of that public, when it purchases the goods at issue, is low and not average, as the Board of Appeal assumes in the contested decision, because those goods are everyday consumer goods which average consumers do not spend much time in choosing.

34 EUIPO and the intervener dispute the applicant’s arguments, while maintaining that the Board of Appeal made certain incorrect assessments of the facts.

35 EUIPO concurs that the relevant public corresponds to the general public, but observes, after pointing out the contradictory nature of the applicant’s arguments, that, although it agrees with the Board of Appeal in considering that the level of attention of that public is average in respect of the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25, it takes the view, by contrast, that that level of attention is high as regards the ‘health shoes’, namely shoes which are beneficial for the health of the feet of the persons wearing them, in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10. It submits that, because of the special needs for which the ‘health shoes’ in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 are bought and because of the possibility that those goods may be made to measure or require adjustments on account of the personal handicaps of the persons for whom they are intended and also because of the case-law relating to the general public’s level of attention when purchasing goods that affect health, it should be held that that public displays a high level of attention when purchasing those goods.

36 Although the intervener does not dispute that the relevant public is the general public, the level of attention of which is average in relation to the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25, it submits that the ‘health shoes’ in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 are not aimed at the general public, but at healthcare professionals specialising in orthopaedics and at a specific category of consumers suffering from specific physical disorders requiring them to wear orthopaedic footwear, whose level of attention will be high as regards health-related products.

37 Where the marks at issue are registered or registration of those marks is sought in respect of different goods or services, the Board of Appeal is required to identify the consumers who, in the relevant territory, are likely to use each of those goods or services (judgment of 17 February 2017, Construlink v EUIPO — Wit-Software (GATEWIT), T‑351/14, not published, EU:T:2017:101, paragraph 44).

38 In addition, according to the case-law, the relevant public to be taken into account for the purposes of assessing whether there is a likelihood of confusion is composed solely of consumers who are likely to use both the goods or services covered by the earlier trade mark and those covered by the mark in respect of which registration is sought (see, to that effect, judgments of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23, and of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28).

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

40 In that regard, it is apparent from the case-law that ‘clothing’, ‘footwear’ and ‘headgear’ in Class 25 are considered to be everyday consumer goods that are aimed at the general public, which will display an average level of attention when purchasing them (see, to that effect, judgments of 27 September 2012, Tuzzi fashion v OHIM — El Corte Inglés (Emidio Tucci), T‑535/08, not published, EU:T:2012:495, paragraphs 3, 6 and 29; of 24 November 2016, CG v EUIPO — Perry Ellis International Group (P PRO PLAYER), T‑349/15, not published, EU:T:2016:677, paragraphs 3, 6 and 27 and the case-law cited, and of 8 February 2019, Serendipity and Morgese v EUIPO — CKL Holdings (CHIARA FERRAGNI), T‑647/17, not published, EU:T:2019:73, paragraphs 3, 6, 20 and 21).

41 Furthermore, it has been held that the relevant public, as regards orthopaedic articles, is composed of professionals in that sector and patients suffering from malformations or dysfunctions which need to be corrected by the wearing of such articles, with the result that the level of technical knowledge of that public has to be regarded as high (judgment of 16 December 2010, Fidelio v OHIM (Hallux), T‑286/08, EU:T:2010:528, paragraph 42). It has also been held that, although ‘orthopaedic footwear’ in Class 10 can be purchased by consumers as part of the general public or by health professionals, it is always chosen with care (judgment of 9 November 2016, Birkenstock Sales v EUIPO (Representation of a pattern of wavy, crisscrossing lines), T‑579/14, EU:T:2016:650, paragraphs 29 and 32). Health-related goods and services may be aimed both at professionals and at end consumers who will display a high level of attention as regards goods and services related to the state of their health (see judgment of 8 October 2014, Laboratoires Polive v OHIM — Arbora & Ausonia (DODIE), T‑77/13, not published, EU:T:2014:862, paragraph 25 and the case-law cited).

42 Lastly, the global assessment of the likelihood of confusion must be carried out having regard to the average consumer who has the lowest level of attention (see, to that effect, judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited).

43 In opposition proceedings based on Article 8(1)(b) of Regulation 2017/1001, EUIPO may take account only of the list of goods applied for as it appears in the application for registration of the mark concerned, subject to any amendments thereto (see judgment of 16 September 2013, Oro Clean Chemie v OHIM — Merz Pharma (PROSEPT), T‑284/12, not published, EU:T:2013:454, paragraph 42 and the case-law cited).

44 In the present case, it must be pointed out that, in the light of the case-law cited in paragraph 40 above, the Board of Appeal did not err in finding that the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25 covered by the marks at issue were everyday consumer goods that were aimed at the general public, which would display an average level of attention when purchasing them.

45 By contrast, it must be held, in the light of the case-law cited in paragraph 41 above, that the Board of Appeal erred, in the contested decision, in finding that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for were aimed at the general public which had an average level of attention, rather than at healthcare professionals specialising in orthopaedics and at consumers belonging to the general public who suffered from orthopaedic problems requiring them to wear adapted footwear, whose level of attention is high as regards goods connected with their professional activity or the state of their health. The same is true as regards the ‘health shoes’ in Class 25 covered by the mark applied for, which, as is apparent from the name chosen in the application for registration, are a specific category of footwear which is, secondarily, beneficial for the health of the feet of the persons wearing them and is therefore purchased by consumers belonging to the general public who suffer from health problems of an orthopaedic nature and have a high level of attention.

46 In paragraph 13 of the contested decision, the Board of Appeal confirmed the Opposition Division’s assessment that the ‘clothing’, ‘headgear’, ‘footwear’ and ‘health shoes’ in Class 25 covered by the mark applied for were identical to the ‘clothing’, ‘headwear’ and ‘footwear’ in that class covered by the earlier mark, stating that ‘health shoes’ were included in the broader category of ‘footwear’. In paragraph 15 of that decision, it also confirmed the Opposition Division’s assessment that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for were similar, at least to a low degree, to the ‘footwear’ in Class 25 covered by the earlier mark. It took the view that the consumer could choose between purchasing general footwear, including certain types of health shoes, or more specialised orthopaedic footwear or boots for medical purposes, depending on the extent of his or her specific medical or orthopaedic needs. However, according to the Board of Appeal, in general terms, all of those goods were similar on account of their similar nature, method of use, method of manufacture and end users and also because they might be in competition with each other given that they serve the same purpose, namely to protect the foot.

47 The applicant claims that there is a ‘close similarity’ between the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for and the ‘footwear’ in Class 25 covered by the earlier mark, for the same reasons as those set out by the Board of Appeal in the contested decision. However, it requests that the Court hold that the goods at issue, namely, on the one hand, the contested goods covered by the mark applied for and, on the other hand, the ‘clothing’, ‘footwear’ and ‘headwear’ in Class 25 covered by the earlier mark are ‘identical’. In spite of that apparent contradiction, it therefore seems to be calling into question the merits of the Board of Appeal’s assessment, in the contested decision, that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for are merely similar, albeit to a low degree, to the ‘footwear’ in Class 25 covered by the earlier mark.

48 EUIPO and the intervener dispute the applicant’s arguments. The intervener, however, claims that certain assessments of the facts on the part of the Board of Appeal are incorrect. It submits that the ‘health shoes’ in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for cannot be considered to be similar to the goods covered by the earlier mark.

49 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods or services at issue (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

50 Where the goods or services covered by the earlier mark include the goods covered by the trade mark application, those goods or services are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

51 In the present case, the Board of Appeal did not err in finding, in the contested decision, that the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25 covered by each of the marks at issue were, respectively, identical goods.

52 Likewise, in the light of the case-law cited in paragraph 50 above, the Board of Appeal did not err in finding, in the contested decision, that the ‘health shoes’ in Class 25 covered by the mark applied for were identical to the ‘footwear’ in that class covered by the earlier mark. Unlike orthopaedic footwear, which is primarily understood as being a health product, health shoes are a specific category of footwear which are, secondarily, beneficial for the health of the feet of the persons wearing them. Consequently, ‘health shoes’ are indeed included, as the Board of Appeal points out in the contested decision, in the more general category of ‘footwear’.

53 By contrast, it must be held, contrary to what the Board of Appeal found in the contested decision, that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for and the ‘footwear’ in Class 25 covered by the earlier mark are similar to a low degree and not, as the Board of Appeal points out, ‘at least to a low degree’, which suggests that the similarity might be higher in degree than ‘low’.

55 First of all, notwithstanding the fact that the Nice Classification was adopted for exclusively administrative purposes, the explanatory notes on the different classes of that classification are relevant in determining the nature and purpose of the goods and services under comparison (see, to that effect, judgments of 23 January 2014, Sunrider v OHIM — Nannerl (SUN FRESH), T‑221/12, not published, EU:T:2014:25, paragraph 31; of 10 September 2014, DTM Ricambi v OHIM — STAR (STAR), T‑199/13, not published, EU:T:2014:761, paragraph 36, and of 8 June 2017, Bundesverband Deutsche Tafel v EUIPO — Tiertafel Deutschland (Tafel), T‑326/16, not published, EU:T:2017:380, paragraph 45). In particular, where the description of the goods or services for which a mark is registered is so general that it may cover very different goods or services, it is possible to take into account, for the purposes of interpretation or as a precise indication of the designation of the goods or services, the classes in the classification that the trade mark applicants have chosen (see, to that effect, judgments of 25 January 2018, Brunner v EUIPO — CBM (H HOLY HAFERL HAFERL SHOE COUTURE), T‑367/16, not published, EU:T:2018:28, paragraph 50, and of 19 June 2018, Erwin Müller v EUIPO — Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 33). In the present case, the fact that the explanatory note relating to Class 25 of that classification states that that class, which concerns mainly ‘clothing, footwear and headwear for human beings’, does not include, in particular, ‘orthopaedic footwear’, which falls within another class, namely Class 10, which concerns mainly ‘surgical, medical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals’, leads to the conclusion that orthopaedic footwear or footwear for medical purposes must primarily be regarded as medical apparatus rather than as items of clothing, which they also are, but to a lesser extent. Although orthopaedic footwear or footwear for medical purposes serves to a lesser extent, like all ‘footwear’, to cover and protect the feet, it primarily has the function of correcting physical handicaps of an orthopaedic nature.

56 Next, and as the intervener correctly observes, it is a matter of common knowledge that orthopaedic footwear or footwear for medical purposes is either directly provided by a physician, on prescription, or sold in specialist shops for orthopaedic or medical products.

57 Lastly, it is also common knowledge that orthopaedic footwear or footwear for medical purposes is not produced, like footwear in general, industrially or in a standardised manner, but is manufactured to measure or, at the very least, tailored individually by orthopaedic technicians in accordance with each patient’s needs (see, to that effect, judgments of 24 March 1994, 3M Medica, C‑148/93, EU:C:1994:123, paragraphs 10 and 12; of 7 November 2002, Lohmann and Medi Bayreuth, C‑260/00 to C‑263/00, EU:C:2002:637, paragraph 42, and of 11 June 2009, Hans & Christophorus Oymanns, C‑300/07, EU:C:2009:358, paragraph 2).

58 In paragraphs 18 and 19 of the contested decision, the Board of Appeal observed, in the case of the mark applied for, that the word element ‘mediflex’ was dominant, on the ground that it was the first element in that mark and that it stood out owing to the larger size of its last four letters, without going so far as to state that the other word element, ‘easystep’ was negligible. The Board of Appeal took the view that the first word element was also the most distinctive element in that mark. It found that, taken as a whole, it had no meaning in English or in the other languages of the European Union. It also found that the fact that the relevant public could analyse that element as the combination of two terms, namely ‘medi’ and ‘flex’, referring to the English words ‘medical’ and ‘flexible’, was irrelevant, because the abbreviation ‘mediflex’ did not, as such, exist in English and could not have any specific meaning in relation to the goods at issue, since it made no sense to describe those goods as being ‘medical flexible’. By contrast, it found that the second word element was composed of two simple and well-known English words, namely ‘easy’ and ‘step’. It took the view that the word ‘step’ was used, in particular, in the common expression ‘step-by-step’ or to describe a popular sports activity. It found that, in the second word element, the words were joined in a simple and correct grammatical construction, which the whole of the relevant public could understand as meaning ‘walk with ease’ and thus as being descriptive of footwear and clothing that allow a person to walk with ease. It took the view that, accordingly, the first word element was distinctive to an average degree, whereas the second word element had little, if any, distinctive character. In addition, it pointed out that the word element ‘mediflex’ was the first element in the mark in question and that the last four letters of that element were larger than the other letters in that mark.

59 Furthermore, in paragraph 20 of the contested decision, the Board of Appeal observed, in the case of the earlier mark, that that mark consisted of weakly distinctive word and figurative elements. It found, for the same reasons as those mentioned as regards the word element ‘easystep’ in the mark applied for (see paragraph 58 above), that the relevant public would see the element ‘stepeasy’ in the earlier mark as a mere combination of the English words ‘step’ and ‘easy’ describing footwear and clothing which allow a person to walk easily. As regards the abstract blue and orange latticed drawing which is positioned at the beginning of that earlier mark, the Board of Appeal found that it would merely be perceived by the relevant public as a decorative motif in the shape of a shoe sole and therefore had very little distinctive character for footwear. The Board of Appeal took the view that the word ‘step’ was dominant in that mark, on the ground that it was the first word element in that mark and on the ground that it stood out clearly from the other elements because it was reproduced in a darker colour and in a bolder font than those elements. It did not, however, find that the other elements in the earlier mark were negligible.

60 The applicant disputes, in essence, some of the assessments which the Board of Appeal made in the context of its analysis of the most distinctive and dominant elements in the marks at issue.

61 First, the applicant submits that, as the Opposition Division correctly found, in part of the territory of the European Union, in particular in Belgium, Greece, Spain, France, Italy, Poland or Portugal, the average consumer within the general public does not have a command of basic English vocabulary and will not therefore understand the meaning of the English words ‘step’ and ‘easy’. It maintains that, for that non-negligible part of the relevant public, the word element ‘easystep’ in the mark applied for and the element ‘stepeasy’ in the earlier mark do not have any specific meaning and are therefore distinctive to an average degree. It argues that the Board of Appeal did not, in the contested decision, provide evidence to the contrary, even though, according to the case-law, it cannot be assumed that the average consumer within the general public has knowledge of a foreign language, in particular of words which are not part of basic vocabulary. Furthermore, it submits that the Board of Appeal could not, according to the case-law, deny that the earlier mark had any distinctive character when that mark had been accepted for registration. It maintains that, in any event, the word elements ‘easystep’ and ‘stepeasy’ do not, in themselves, have any meaning in English or in other languages of the European Union and are not commonly used in connection with the goods at issue, as is established by searches carried out on an Internet search engine.

62 Secondly, the applicant submits that the word element ‘easystep’ in the mark applied for and the element ‘stepeasy’ in the earlier mark are the most distinctive and dominant elements in the marks at issue on account of their inherent characteristics or their position in those marks. In that regard, it observes, in the first place, that, in the light, first, of case-law holding that, in composite marks, the impact created by the word elements is generally stronger than that created by the figurative elements and, secondly, of the fact that, in the earlier mark, the figurative elements and the stylisation of the letters have a rather decorative function, those figurative elements are secondary in the overall impression produced by that mark and will not distract the relevant public’s attention from the word elements. In the second place, it submits that the word element ‘mediflex’ is also a weak element in the mark applied for. According to the applicant, that element has a very weak distinctive character, inasmuch as it is capable of being perceived, by the relevant public, as a straightforward combination of ‘medi’ and ‘flex’, namely two word elements which refer, in all the languages of the European Union and, in particular, in Spanish, German, English, French and Italian, to the words ‘medical’ or ‘medicine’ and to the word ‘flexible’, and can therefore be understood as a mere reference to a characteristic of the shoes, which are flexible medical products.

64 It must be pointed out at the outset that 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 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 46 and the case-law cited).

65 For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).

66 Although it is settled case-law that, as a general rule, the relevant public will not consider a descriptive element forming part of a composite mark to be the distinctive and dominant element in the overall impression conveyed by that mark, the weak distinctive character of an element of such a mark does not necessarily imply that that element cannot constitute a dominant element since it may, on account, in particular, of its position in the sign, its size and the secondary nature of the other elements in that sign, make an impression on consumers and be remembered by them (see judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 32 and the case-law cited, and of 11 February 2015, Fetim v OHIM — Solid Floor (Solidfloor The professional’s choice), T‑395/12, not published, EU:T:2015:92, paragraph 32 and the case-law cited).

67 Assessment of the similarity between two marks means more than taking just one element of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its elements. It is only if all the other elements of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that element is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other elements are negligible in the overall impression created by that mark. The fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 48 and the case-law cited).

68 In the present case, the Board of Appeal did not err in finding, in essence, in the contested decision, that none of the elements in the marks at issue was negligible. Furthermore, and contrary to what the applicant claims, it is clear from paragraph 20 of that decision that the Board of Appeal did not deny that the earlier mark had any distinctive character, but simply concluded that, in that mark, no element was more distinctive than any other.

69 Regarding the Board of Appeal’s assessment that the element ‘mediflex’ was the dominant and most distinctive element in the mark applied for, it is important, in the first place, to point out that that mark is a word mark. The protection which results from the registration of such a mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements which that mark might possibly have. According to the case-law, word marks are marks consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (see judgment of 17 October 2018, Szabados v EUIPO — Sociedad Española de Neumología y Cirugía Torácica (Separ) (MicroSepar), T‑788/17, not published, EU:T:2018:691, paragraph 29 and the case-law cited). In particular, the fact that the word mark mentioned in the application for registration consists, in part, of upper-case letters and, in part, of lower-case letters is irrelevant because those specific graphic or stylistic elements are not protected (see, to that effect, judgment of 25 November 2015, Soprema v OHIM — Sopro Bauchemie (SOPRAPUR), T‑763/14, not published, EU:T:2015:883, paragraph 56).

70 Consequently, the Board of Appeal could not validly put forward an argument based on the typography of the mark applied for, which is a word mark, namely the argument that the last four letters of the element ‘mediflex’, which are in upper-case in the application for registration, were larger, in order to maintain that that element was dominant.

71 In the second place, the mere fact that the element ‘mediflex’ comes first in the mark applied for is not sufficient to conclude that it dominates the overall impression created by that mark.

72 Although it is true that the average consumer generally pays more attention to elements at the beginning of a mark (judgment of 16 December 2015, CareAbout v OHIM — Florido Rodríquez (Kerashot), T‑356/14, not published, EU:T:2015:978, paragraph 46), it does not, however, follow that that is sufficient to hold that any element which is at the beginning of a word mark is dominant for the purposes of the case-law cited in paragraph 66 above.

73 In the present case, account must be taken of the fact that the element ‘easystep’ in the mark applied for is the same length as the element ‘mediflex’ in that mark, since it contains the same number of letters.

74 Furthermore, the element ‘easystep’ in the mark applied for does not have less inherent distinctive character than the element ‘mediflex’ in that mark. The first of those elements is a combination of two common English words, namely ‘easy’ and ‘step’, which refers to the idea of an easy step or the action of walking easily. According to settled case-law, knowledge of a foreign language cannot, in general, be assumed (judgment of 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83; see also, to that effect, judgment of 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 40). However, it is apparent from the case-law that many consumers in the European Union know basic English vocabulary (see, to that effect, judgments of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 53; of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 52, and of 15 October 2018, Apple and Pear Australia and Star Fruits Diffusion v EUIPO — Pink Lady America (WILD PINK), T‑164/17, not published, EU:T:2018:678, paragraph 58) but not other English terms or one of their meanings which cannot be considered to be part of that basic vocabulary (see, to that effect, judgments of 16 October 2014, Junited Autoglas Deutschland v OHIM — Belron Hungary (United Autoglas), T‑297/13, not published, EU:T:2014:893, paragraphs 32 and 42, and of 16 February 2017, Jaguar Land Rover v EUIPO — Nissan Jidosha (Land Glider), T‑71/15, not published, EU:T:2017:82, paragraph 45). In the present case, the English words ‘easy’ and ‘step’, in their abovementioned meanings, are part of basic English vocabulary. For a large part of the relevant public which is English-speaking or has a command of that basic vocabulary, any link between the element ‘easystep’ and the goods at issue, namely ‘clothing’, ‘headgear’ and ‘footwear’ (in general) and ‘health shoes’, ‘orthopaedic footwear’ and ‘boots for medical purposes’, is, however, too vague and indeterminate to confer a descriptive character on that element in relation to those goods. That element is only capable of suggesting (or alluding to) certain qualities or characteristics of those goods, such as the fluidity, flexibility, elasticity, or technology, which make it possible to move easily. Consequently, for that part of that public, it is not directly descriptive, but merely evokes or alludes to certain qualities or characteristics of the goods in question. The rest of the relevant public, which does not have a command of that basic vocabulary and which will not find, in the other languages of the European Union, any linguistic equivalent for the combination of the English words ‘easy’ and ‘step’, will perceive that combination of words as purely fanciful.

75 To that extent, the element ‘easystep’ in the mark applied for cannot be held to be less distinctive than the element ‘mediflex’ in that mark, the inherent distinctiveness of which will itself be limited for a very large part of the relevant public, including the English-speaking public or the public which has a command of basic English vocabulary. The element ‘mediflex’ is capable of being understood, by that very large part of the relevant public, as a neologism consisting of the combination of two prefixes, namely ‘medi’ and ‘flex’, the first of which, in many official languages of the European Union, inter alia, in English, refers to the fields of medicine or health and the second of which, in many official languages of the European Union, in particular, in English refers to the idea of flexibility. Consequently, although it is not directly descriptive of certain qualities or characteristics of the goods in question, it may suggest, for that part of that public, the idea that they are flexible goods which have an impact on health or medical or health products which provide flexibility for those who wear them. The rest of that public, which does not have a command of that basic vocabulary, will perceive it as fanciful.

76 Lastly, since the mark applied for is a word mark, it must be held that, depending on the specific graphic or stylistic elements which that mark might possibly have, the element ‘easystep’ in that mark, which is not less distinctive than the element ‘mediflex’ in that mark, might attract the relevant public’s attention more than the element ‘mediflex’.

77 For the reasons set out in paragraphs 69 to 76 above, the Board of Appeal erred in finding that the element ‘mediflex’ in the mark applied for was the most distinctive and dominant element in that mark.

78 Regarding the Board of Appeal’s assessment that the term ‘step’ in the earlier mark was dominant in the overall impression created by that mark, it is important to point out that that mark is a composite mark, combining word and figurative elements.

79 According to the case-law, when assessing whether one or more given elements of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of its elements by comparing them with those of the other elements. The relative position of the various elements within the arrangement of the composite mark is to be taken into account only accessorily (see judgment of 22 April 2008, Casa Editorial el Tiempo v OHIM — Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 45 and the case-law cited).

80 The element ‘stepeasy’ in the earlier mark does not have less inherent distinctive character than the figurative element in that mark, which corresponds to an abstract blue and orange latticed drawing. The former element is a combination of two common English words, namely ‘step’ and ‘easy’, which refers to the idea of an easy step or the action of walking easily. Those words are even more identifiable because they are reproduced in two different colours and fonts. Like the element ‘easystep’ in the mark applied for (see paragraph 74 above), the element ‘stepeasy’ in the earlier mark is only capable of evoking (or alluding to) certain qualities or characteristics of the goods in question, such as the fluidity, flexibility, elasticity, or technology, which make it possible to move easily. Consequently, for the part of the relevant public which is English speaking or has a command of basic English vocabulary, it is not directly descriptive, but merely evokes or alludes to certain qualities or characteristics of the goods concerned. The rest of the relevant public, which does not have a command of that basic vocabulary, will perceive it as being purely fanciful.

81 However, the Board of Appeal erred in taking the view that the fact that the word ‘step’ came first in the element ‘stepeasy’ and was reproduced in a dark colour was sufficient for it to be found that that term dominated the overall impression created by the earlier mark. In so doing, it failed to take account of the fact that that term contrasted less with the abstract drawing, which was dominated by the same colour, namely blue, and was reproduced in a font, namely italics, which was less legible than the word ‘easy’ in that element. Considered as a whole, there is therefore no reason to hold that the word in question is dominant in the overall impression created by that element and by the earlier mark itself.

82 The element ‘stepeasy’ in the earlier mark cannot, itself, be held to be dominant or more distinctive than the figurative element in that mark, which corresponds to an abstract blue and orange latticed drawing and the inherent distinctive character of which is itself limited with regard to ‘footwear’. That figurative element may be perceived as a technical drawing of the sole of a shoe. Consequently, although it is not directly descriptive of certain qualities or characteristics of the goods concerned, it may suggest to the relevant public, with regard to ‘footwear’, the idea that the goods have been specially designed by technicians. With regard to the remainder of the goods concerned, namely ‘clothing’ and ‘headwear’, it will be perceived as being purely fanciful. The principle that the word elements of a composite mark must, in principle, be considered to be more distinctive than the figurative elements of such a mark, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the mark (see, to that effect, judgments of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37, and of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 60 (not published) and the case-law cited), is, in the present case, offset by the fact that, on account of its being at least as inherently distinctive as the element ‘stepeasy’, its being larger than that element and its coming first in the sign, the figurative element corresponding to an abstract blue and orange latticed drawing contributes, in practice, in the same way as the element ‘stepeasy’ to the overall impression created by the earlier mark.

83 For the reasons set out in paragraphs 78 to 82 above, the Board of Appeal erred in finding that the word ‘step’ was dominant in the overall impression created by the earlier mark.

84 In paragraphs 21 and 22 of the contested decision, the Board of Appeal found that the marks at issue were visually and phonetically similar to a low degree, inasmuch as they both contained a combination of the words ‘easy’ and ‘step’, the order of which was merely reversed. Furthermore, in paragraph 23 of that decision, it found that those marks were conceptually similar to a certain degree because that combination of words, no matter what order they were in, referred to the same idea, namely the action of walking with ease.

85 The applicant criticises the Board of Appeal for finding, in the contested decision, that the marks at issue were visually and phonetically similar to a low degree, inasmuch as they both contained a combination of the words ‘easy’ and ‘step’, the order of which was merely reversed. It submits that, since the element of similarity is the most distinctive and dominant element in each of those marks, the Board of Appeal should have concluded that there was a high degree of visual and phonetic similarity between them. It argues that the fact that those words are seen or pronounced in reverse order or contain some variations in their graphic representations does not eliminate the similarity resulting from their coincidence in those marks.

86 EUIPO disputes the applicant’s arguments. It states, however, that the ‘certain degree of’ conceptual ‘similarity’ between the marks at issue which the Board of Appeal found to exist because they both contain the words ‘easy’ and ‘step’ referring to the idea of ‘walk with ease’, should not have a significant impact, because a coincidence in descriptive elements does not have a decisive influence on the conceptual comparison.

87 The intervener disputes the applicant’s arguments, while maintaining that there were certain incorrect assessments of the facts on the part of the Board of Appeal.

88 The intervener stresses, first of all, from a visual standpoint, that the marks at issue do not overlap with regard to their most distinctive or dominant elements, namely, on the one hand, the word element ‘mediflex’ in the mark applied for and, on the other hand, the figurative elements (the colours blue and orange and the drawing in the shape of a shoe sole) in the earlier mark, with the result that each of those marks creates a different overall impression.

89 Next, from a phonetic standpoint, the intervener submits that the overall impressions created by the marks at issue are different because they do not have in common any element which is pronounced in the same way. It maintains that even the pronunciation and intonation of the words ‘easy’ and ‘step’ in those marks are different because they are combined in reverse order. Furthermore, it argues that the most distinctive and dominant element in the mark applied for, namely the word element ‘mediflex’, is not present or pronounced in the earlier mark.

90 Lastly, from a conceptual standpoint, the intervener submits that no comparison is possible because the most distinctive and dominant element in the mark applied for, namely the word element ‘mediflex’, has no coherent meaning with regard to the goods at issue and the meaning which the elements ‘easystep’ and ‘stepeasy’ in the marks at issue have in common is merely descriptive with regard to those goods.

91 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. As is apparent from the case-law of the Court of Justice, the visual, phonetic and conceptual aspects are relevant (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25).

92 It is necessary to take into account the fact that the average consumer only rarely has a chance to compare the various marks directly and must therefore rely on his imperfect recollection of them (judgments of 23 October 2002, Oberhauser v OHIM — Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 28, and of 30 June 2004, BMI Bertollo v OHIM — Diesel (DIESELIT), T‑186/02, EU:T:2004:197, paragraph 38).

93 Lastly, it is important to point out that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 16 October 2013, Mundipharma v OHIM — AFT Pharmaceuticals (Maxigesic), T‑328/12, not published, EU:T:2013:537, paragraph 55 and the case-law cited).

94 In the present case, the marks at issue both contain a combination of the words ‘easy’ and ‘step’, corresponding to English words reproduced in reverse order, which does not alter their meaning in that language.

95 In that regard, it is apparent from the case-law that the mere inversion of elements in the marks under comparison, an inversion which is capable of being identified by the relevant public, cannot allow the conclusion to be drawn that there is no visual or phonetic similarity between those marks (see, to that effect, judgment of 25 June 2010, MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, EU:T:2010:256, paragraphs 38 and 40 and the case-law cited).

96 From a visual standpoint, it is important to point out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since both types of mark have graphic form capable of creating a visual impression (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 50 and the case-law cited).

97 In the present case, for the part of the relevant public which is English speaking or has a command of basic English vocabulary, the Board of Appeal’s assessment that the marks at issue are visually similar, at best, to a low degree is justified. First, those marks both contain a combination of the same words ‘easy’ and ‘step’, which contributes fully to the overall impressions created by those marks, a combination which that part of the relevant public will, in spite of the inversion of those words, be able to identify in those marks. Secondly, those impressions differ markedly because, first, in the mark applied for, the combination of those words is preceded by another element, ‘mediflex’, which also contributes to the overall impression created by that mark, secondly, that mark is notably longer than the earlier mark on account of the additional word element that it contains and, thirdly, the combination of the words ‘easy’ and ‘step’ in the earlier mark is preceded by an abstract drawing, which also contributes fully to the overall impression created by that mark.

98 As regards the part of the relevant public which does not have a command of basic English vocabulary, it must be pointed out, first of all, that the element ‘easystep’ in the mark applied for and the element ‘stepeasy’ in the earlier mark do not consist of words that have clear and comprehensible meanings. Secondly, nothing in the arrangement of the letters in the element ‘easystep’ in the mark applied for suggests that that part of that public will break that element down into two separate words, namely ‘easy’ and ‘step’. Lastly, there is nothing to suggest that, in contrast to normal reading practice, it will read the word ‘step’ before the word easy. Consequently, in the circumstances of the present case, the inversion of those two elements in the marks at issue is sufficient, in conjunction with the other visual differences between those marks, to rule out any point of similarity between them.

99 So far as concerns the phonetic comparison, as regards the part of the relevant public which is English speaking or has a command of basic English vocabulary, the Board of Appeal’s assessment that the marks at issue are, at most, similar to a low degree is also justified. Even though those marks both contain a combination of the same sounds corresponding to the words ‘easy’ and ‘step’, which contributes fully to the overall impressions created by those marks, those impressions differ markedly because, first, in the mark applied for, the combination of those sounds is preceded by the pronunciation of the sounds corresponding to the element ‘mediflex’, which also contributes fully to the overall impression created by that mark, and because, secondly, owing to the additional word element that the mark applied for contains, many syllables in those marks do not coincide.

100 As regards the part of the relevant public which does not have a command of basic English vocabulary and for reasons similar to those explained in paragraph 98 above, it must be held that, in addition to the phonetic difference resulting from the pronunciation of the term ‘mediflex’ in the mark applied for, no phonetic similarity will in the present case arise from the pronunciation of the syllables making up the terms ‘easystep’ and ‘stepeasy’ in the marks at issue, since those syllables will be pronounced in a different order which alters the overall sound of those terms.

101 As regards the conceptual comparison, as the Board of Appeal rightly found in the contested decision there is, for the part of the relevant public which is English-speaking or has a command of basic English vocabulary, a certain degree of conceptual similarity between the marks at issue resulting from the fact that they both contain a combination of the words ‘easy’ and ‘step’ which refers to the identical idea of being able ‘to move easily’, an idea that contributes fully to the overall impressions which they create. However, the degree of conceptual similarity between those marks must be held to be low, because the idea in common to which those marks refer is evocative or allusive and each of them also refers to different ideas, which also contribute fully to the overall impressions which those marks create, such as, with regard to the mark applied for, the idea of flexible goods which have an impact on health or of medical products which provide flexibility for those who wear them and, with regard to the earlier mark, the idea of footwear that has been specially designed by technicians.

102 As regards the part of the relevant public which does not have a command of basic English vocabulary, it must be held that that part of the relevant public, since it is not able to understand the meaning of the English words ‘easy’ and ‘step’, will not be able to associate the marks at issue with the identical idea of being able ‘to move easily’ referred to in paragraph 101 above, with the result that there cannot be held to be any conceptual similarity.

103 In paragraphs 26 and 27 of the contested decision, the Board of Appeal found that, with regard to all of the goods at issue, even with regard to those which were identical, there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on account of the fact that the low degree of similarity between the marks at issue was the result of an overlap which did not relate to the most distinctive or dominant elements of those marks, namely the word element ‘mediflex’ in the mark applied for and the word ‘step’ in the earlier mark, and on account of the fact that, owing to the characteristic and eye-catching figurative composition, colours and sole device in the earlier mark, that mark produced a very different overall impression to that produced by the mark applied for.

104 The applicant criticises the Board of Appeal for finding that, with regard to all of the goods at issue, even those which were identical, there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on account of the fact that the low degree of similarity between the marks at issue was the result of an overlap which did not relate to the most distinctive or dominant elements of those marks. It submits that those marks are highly similar visually and phonetically, because they coincide in the element which is the most distinctive and dominant element in each of them. It maintains that, given that those marks coincide in the words ‘easy’ and ‘step’ and that the goods at issue are, moreover, highly similar or identical, the mark applied for could be perceived as a mere variant of the earlier mark. It submits that the Board of Appeal should therefore have found, in the contested decision, that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, even if only on the part of the relevant public which does not have a command of basic English vocabulary, such as the Polish and Spanish general public.

105 EUIPO and the intervener dispute the applicant’s arguments. The intervener observes, in particular, that the earlier mark’s distinctive character is weak, on account of the descriptiveness of the element ‘stepeasy’ and the purely ornamental or descriptive (shoe sole) character of the figurative elements, whereas that of the mark applied for is, at least, average, since the element ‘mediflex’ has no meaning in English or in any other language of the European Union.

106 According to settled case-law, the risk that the relevant 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 concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services concerned (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). In accordance with the principle of interdependence, there may be a likelihood of confusion, notwithstanding a low degree of similarity between the marks at issue, where the goods or services covered by them are very similar (see judgment of 23 October 2002, Fifties, T‑104/01, EU:T:2002:262, paragraph 50 and the case-law cited).

107 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

108 It is apparent from the case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).

109 Furthermore, the likelihood of confusion varies according to the level of attention which the relevant public displays. Consequently, according to the case-law, although the relevant public only rarely has a chance to compare the various marks directly and must therefore rely on ‘an imperfect recollection of them’, a high level of attention on the part of the relevant public can lead to the conclusion that it will not confuse the marks at issue despite the lack of any direct comparison between the various marks (see judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO — Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 86 and the case-law cited).

110 In the present case, it must be held that the goods at issue are, in part, identical, as regards the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25 covered by the marks at issue and the ‘health shoes’ in Class 25 covered by the mark applied for, and, in part, similar to a low degree, as regards the ‘footwear’ in Class 25 covered by the earlier mark and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for.

111 Furthermore, it has been held that, for the part of the relevant public which does not have a command of basic English vocabulary, the marks at issue are visually, phonetically and conceptually different and that, for the rest of that public, they are visually, phonetically and conceptually similar to a low degree. It follows that, considered as a whole, those marks are different for the first part of that public and similar to a low degree for the second part of that public.

112 Consequently, the necessary conditions for a likelihood of confusion to be capable of being held to exist are satisfied, in the present case, only in relation to the part of the relevant public which is English speaking or has a command of basic English vocabulary.

113 In so far as the intervener submits that the earlier mark has a low degree of inherent distinctiveness on account of the descriptiveness of the element ‘stepeasy’ and the purely ornamental or descriptive (shoe sole) character of the figurative elements, it is important to point out that the Board of Appeal did not expressly, in the contested decision, adopt a position on the degree of inherent distinctiveness of that mark. In the present case, that degree of inherent distinctiveness will vary, for the part of the relevant public which is English speaking or has a command of basic English vocabulary, from low, with regard to ‘footwear’, in respect of which the abstract blue and orange latticed drawing will, like the abovementioned element, be allusive or evocative, to average, with regard to ‘clothing’ and ‘headgear’, in relation to which that abstract design will not be allusive or evocative.

114 As regards the general public which is English speaking or has a command of basic English vocabulary and is likely to purchase the ‘footwear’ in Class 25 covered by each of the marks at issue, it must be pointed out that, even though the goods at issue are identical, the low degree of overall similarity that exists between those marks is not sufficient, in the present case, in the light of the average level of attention which the public concerned will display and the low degree of inherent distinctiveness of the earlier mark in relation to ‘footwear’, for it to be held that that public may believe that those goods come from the same undertaking or, as the case may be, from economically linked undertakings.

115 As regards the general public which is English speaking or has a command of basic English vocabulary and is likely to purchase the ‘clothing’ and ‘headgear’ in Class 25 covered by each of the marks at issue, it must be pointed out that, in the light of the average level of attention which the public concerned will display, the identical nature of the goods at issue and the average degree of inherent distinctiveness of the earlier mark in relation to those goods, the low degree of overall similarity that exists between those marks is sufficient, in the present case, for it to be held that that public may believe that those goods come from the same undertaking or, as the case may be, from economically linked undertakings.

116 As regards the non-negligible part of the general public which is English speaking or has a command of basic English vocabulary and is likely to purchase the ‘health shoes’ in Class 25 or ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for as well as the ‘footwear’ in Class 25 covered by the earlier mark, it must be pointed out that, even with regard to those of the goods in question which are identical and not merely similar to a low degree, the low degree of overall similarity that exists between those marks is not sufficient, in the present case, in the light of the high level of attention which the public concerned will display and the low degree of inherent distinctiveness of the earlier mark in relation to ‘footwear’, for it to be held that that public may believe that those goods come from the same undertaking or, as the case may be, from economically linked undertakings.

117 Accordingly, the applicant is justified in claiming that, in the contested decision, the Board of Appeal erred in finding that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in annulling the Opposition Division’s decision of 12 December 2017 and in rejecting the opposition as regards the ‘clothing’ and ‘headgear’ in Class 25 covered by the mark applied for.

118 The applicant’s claim for annulment of the contested decision must, to that extent, be granted and must, as to the remainder, be dismissed as unfounded.

119 Furthermore, as regards the applicant’s claim requesting that the Court alter the contested decision, it must be pointed out that, although the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position, it must be exercised in situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).

120 In the present case, it must be pointed out that, in the contested decision, the Board of Appeal adopted a position on whether there was a likelihood of confusion between the marks at issue with regard to ‘clothing’ and ‘headgear’ in Class 25, with the result that the Court has the power to alter that decision in that regard.

121 As is apparent, in particular, from paragraphs 110 to 117 above, the Board of Appeal was required to find that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, with regard to those goods.

122 Accordingly, the appeal which the intervener brought before the Board of Appeal must, by alteration of the contested decision, be dismissed in so far as it concerns those goods. As to the remainder, the claim for alteration of the contested decision must be dismissed as unfounded.

123 Under Article 191 of the Rules of Procedure of the General Court, read in conjunction with Article 134(3) thereof, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

124 Since the applicant, EUIPO and the intervener have succeeded on some and failed on other heads, each party must be ordered to bear its own costs.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 November 2018 (Case R 77/2018-4), relating to opposition proceedings between Pablosky, SL and docPrice GmbH, in so far as it concerns ‘clothing’ and ‘headgear’ in Class 25 of the Nice Agreement;

2. Dismisses the appeal which docPrice brought before the Board of Appeal of EUIPO in so far as it concerns the goods referred to in point 1;

The second head of claim and the issue of whether the Court has jurisdiction to deal with it

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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) >> Pablosky v EUIPO - docPrice (mediFLEX easystep) (EU trade mark - Judgment) [2020] EUECJ T-20/19 (08 July 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T2019.html Cite as: EU:T:2020:309, [2020] EUECJ T-20/19, ECLI:EU:T:2020:309

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