Fashion Energy v EUIPO - Retail Royalty (1st AMERICAN) (EU trade mark - Judgment) [2021] EUECJ T-699/20 (21 December 2021)

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(EU trade mark – Opposition proceedings – Application for EU figurative mark 1st AMERICAN – Earlier EU figurative mark representing an eagle or other bird of prey – Relative ground for refusal – Likelihood of confusion – Phonetic similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Article 72(6) of Regulation 2017/1001 – Article 94(1) of Regulation 2017/1001)

Fashion Energy Srl, established in Milan (Italy), represented by T. Müller and F. Togo, lawyers,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini 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

Retail Royalty Co., established in Las Vegas, Nevada (United States), represented by J. Bogatz and Y. Stone, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 10 September 2020 (Case R 426/2020‑4), relating to opposition proceedings between Retail Royalty and Fashion Energy,

composed of A. Marcoulli, President, S. Frimodt Nielsen and R. Norkus (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 20 November 2020,

having regard to the response of EUIPO lodged at the Court Registry on 11 February 2021,

having regard to the response of the intervener lodged at the Court Registry on 18 February 2021,

1 On 16 October 2009, the applicant, Fashion Energy Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 9, 24 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 The trade mark application was published in Community Trade Marks Bulletin No 4/2010 of 11 January 2010.

5 On 1 April 2010, the intervener, Retail Royalty Co., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the EU figurative mark reproduced below, filed on 9 May 2006 and registered on 10 June 2010 under No 5066113, covering goods and services in Classes 3, 18, 25 and 35 and corresponding, for certain goods and services, to ‘blazers, robes, footwear, hats’ (Class 25) and to ‘retail store services, all for a wide range of sunglasses’ (Class 35):

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

8 On 10 February 2017, the Opposition Division upheld the opposition in its entirety.

9 On 6 April 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 15 November 2017, the Second Board of Appeal of EUIPO dismissed the appeal. Like the Opposition Division, the Second Board of Appeal found that, in the present case, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

11 By application lodged at the Court Registry on 31 January 2018, the applicant brought an action seeking the annulment of the Second Board of Appeal’s decision of 15 November 2017, registered under the number T‑54/18. In the context of that action, the applicant, inter alia, alleged infringement of Article 8(1)(b) of Regulation 2017/1001.

12 By judgment of 12 July 2019, Fashion Energy v EUIPO – Retail Royalty (1 ^st AMERICAN) (T‑54/18, not published, EU:T:2019:518), the Court annulled the Second Board of Appeal’s decision of 15 November 2017.

13 The Court held that the Second Board of Appeal had not determined the meaning of the word element ‘1^st american’ taken as a whole, with the result that its conclusion relating to the weak distinctive character of that element was not substantiated in any way, and that that error was liable to vitiate its entire assessment contained in its decision.

14 The case was reallocated to the Fourth Board of Appeal for further examination, now under reference R 426/2020‑4.

15 By decision of 10 September 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. Like the Second Board of Appeal, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

16 In particular, the Fourth Board of Appeal of EUIPO found that the word element ‘1^st american’, taken as a whole, had either less than average distinctive character or average distinctive character, depending on how it would be understood by the relevant public. It also found that the figurative element and the word element of the mark applied for were co-dominant. Consequently, it found that, since there were strong visual similarities between the representations of the bird in each sign, the addition of that word element could not outweigh those similarities, with the result that the visual similarity was average, that a phonetic comparison was not possible and that the signs were conceptually similar to at least an average degree.

The application ratione temporis of the regulations on the EU trade mark

20 In view of the date on which the application for registration at issue was filed, namely, 16 October 2009, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, in the version applicable on that date (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 2).

21 Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision, and those made by the applicant, the intervener and EUIPO in their respective arguments, to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, which is identical in content.

22 Furthermore, since, in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present proceedings are governed by the procedural provisions of Regulation 2017/1001.

23 By its second head of claim, the applicant requests the Court to grant the application for registration of the mark applied for.

24 It follows from the clarification provided by the applicant in the application that that request must be understood as asking the Court to alter the contested decision within the meaning of Article 72(3) of Regulation 2017/1001 by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of that regulation. The competent bodies of EUIPO do not adopt formal decisions recording the registration of an EU trade mark which could be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it should register an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect (see judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited).

25 The applicant’s second head of claim must, therefore, be dismissed as inadmissible.

26 The applicant relies on three pleas in law, alleging (i) infringement of Article 72(6) of Regulation 2017/1001, (ii) infringement of Article 94(1) of Regulation 2017/1001 and (iii) infringement of Article 8(1)(b) of Regulation No 207/2009.

The first plea in law, alleging infringement of Article 72(6) of Regulation 2017/1001

27 In support of the first plea in law, the applicant claims that the Fourth Board of Appeal did not take the necessary measures to comply with the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), in breach of Article 72(6) of Regulation 2017/1001. First, the applicant submits that although it is common ground between the parties that the word element of the mark applied for is dominant, the Fourth Board of Appeal, by stating in paragraph 34 of the contested decision that the figurative element and the word element are co-dominant, contradicts the finding in paragraph 95 of that judgment that the figurative element merely has an independent distinctive role. Secondly, the applicant argues that the Court’s assertion in paragraph 101 of that judgment that the word element constitutes a whole in the mark applied for does not bear out the assumption made by the Fourth Board of Appeal that the word element will be interpreted as separate from the figurative element of the mark applied for. Thirdly, the applicant submits that, in paragraph 31 of the contested decision, the Fourth Board of Appeal incorrectly derived an average degree of distinctive character for the word element ‘1^st american’ from the Court’s statements relating to the independent role and the average distinctive character of the figurative element, given that the Court did not refer to any alleged average distinctive character of the word element.

29 First, it must be pointed out that the Fourth Board of Appeal’s finding, in paragraph 34 of the contested decision, that the figurative element and the word element are co-dominant is not in contradiction of the Court’s finding, in paragraph 95 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), that the word element has an independent distinctive role. By that finding, the Court did not indicate whether one of those elements was of greater importance than the other. Accordingly, it was open to the Fourth Board of Appeal to find that the figurative element and the word element were co-dominant.

30 Secondly, since the Court stated, in paragraph 101 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), that the word elements constituted a whole in the mark applied for, in so far as the elements ‘1^st’ and ‘american’ are written side by side on a black rectangle placed above the representation of the eagle, what is not included in that black rectangle must be interpreted as distinct from the word element. Therefore, as the figurative element is not included in the black rectangle, the Board of Appeal correctly stated that its conclusion that the figurative element was distinct from the word element was supported by paragraph 101 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518).

31 Thirdly, it is sufficient to note that the Fourth Board of Appeal did not state that the Court had found that the expression ‘1^st american’ had an average degree of distinctive character, but carried out a two-stage analysis. In paragraph 30 of the contested decision, the Fourth Board of Appeal noted that the Court had found, in paragraph 91 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), that the distinctive character of the figurative element of the mark applied for (the eagle) must be regarded as average. Next, in paragraph 31 of the contested decision, the Fourth Board of Appeal inferred that the distinctive character of the word element ‘1^st american’ was at best the same as that of the figurative element, that is to say average, given that, in its view, the word element ‘1^st american’ would be perceived as having average distinctive character both by the section of the public which would not attribute any meaning to the combination of those words and by the section which would understand the wording, but not in a descriptive or laudatory manner as regards the goods covered. The applicant has not shown how that inference is incorrect.

The second plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001

33 In support of the second plea in law, the applicant complains of a failure to state reasons as regards visual similarity. In paragraph 35 of the contested decision, the Fourth Board of Appeal examined the visual similarity of the signs but did not explain why the visual similarity should be classified as average, a classification which is merely referred to in paragraph 42 of that decision.

35 It should be borne in mind that the obligation to state reasons, an obligation incumbent on the Board of Appeal and which follows inter alia from Article 94(1) of Regulation 2017/1001, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see judgment of 19 December 2019, Currency One v EUIPO – Cinkciarz.pl (CINKCIARZ), T‑501/18, EU:T:2019:879, paragraph 67 and the case-law cited).

36 The obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasons given are correct, the latter being a matter going to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgments of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited, and of 14 July 2017, Sata v EUIPO (4600), T‑214/16, not published, EU:T:2017:501, paragraph 59 and the case-law cited). It follows that claims and arguments intended to deny that the contested measure is well founded are irrelevant in the context of a plea alleging the lack or inadequacy of a statement of reasons (see, to that effect, judgment of 12 May 2011, Région Nord-Pas-de-Calais and Communauté d’agglomération du Douaisis v Commission, T‑267/08 and T‑279/08, EU:T:2011:209, paragraph 45 and the case-law cited).

37 In the present case, it must be found that, in paragraph 34 of the contested decision, the Fourth Board of Appeal stated, first, that it could not be held that the word element of the mark applied for was more dominant than the representation of the bird, since that bird was nearly three times taller than the rectangular element bearing the word element. The Board of Appeal also stated, in paragraph 34, that that device was equally eye-catching due to its size, its irregular outline and the contrast created by a dark device on a white background, that contrast creating no less an impact than the white lettering on the dark background and that, accordingly, both elements were co-dominant.

38 Next, in paragraph 35 of the contested decision, the Fourth Board of Appeal stated that, visually, since there were, as held by the Court in paragraph 96 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), strong visual similarities between the representation of the bird in each sign, the addition of the word element ‘1^st american’ in a black square could not outweigh those similarities.

39 The Fourth Board of Appeal thus did not indeed expressly classify the similarity of the signs as ‘average’ in that section, relating to the ‘comparison of the signs’.

40 However, it expressly classified the similarity of the signs as ‘average’ in paragraph 21 of the contested decision, from which point it had already given the finding which it had reached.

41 That classification is also expressly stated in paragraph 42 of the contested decision, relating to the global assessment of the likelihood of confusion.

42 It must, therefore, be found that the Fourth Board of Appeal gave sufficient reasons for its assessment concerning the visual similarity of the signs at issue.

43 Accordingly, the plea in law alleging a failure to state reasons must be rejected as unfounded.

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

44 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.

45 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

46 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

47 As a preliminary point, it must be noted that the parties do not call into question the conclusion of the Fourth Board of Appeal, in paragraphs 11 and 24 of the contested decision, that the Court held, first, that it was appropriate to assess the likelihood of confusion from the perspective of the EU public that speaks English and that the level of attention of the relevant public was average (judgment of 12 July 2019, 1 ^st AMERICAN, T‑54/18, not published, EU:T:2019:518, paragraphs 51 and 61) and, secondly, that some goods had an average degree of similarity and other goods and the services at issue were similar or identical (judgment of 12 July 2019, 1 ^st AMERICAN, T‑54/18, not published, EU:T:2019:518, paragraphs 73 and 76).

48 It must also be pointed out that the parties do not call into question the finding of the Fourth Board of Appeal, in paragraph 33 of the contested decision, that the word element ‘1^st american’ as a whole has less than average distinctive character with regard to the goods at issue, to the extent that it is ‘understood to mean a citizen or native of America who came or comes before all others in time or order’, thus having a ‘laudatory character’, and an average distinctive character, to the extent that it is ‘understood merely as a reference to, historically, the first people or person of America, whoever that might be, the sign [thus being] neither laudatory nor descriptive vis-à-vis the goods at hand’.

49 Moreover, there is nothing in the file capable of calling those findings into question.

50 Thus, in support of the third plea in law, the applicant only submits that the dominant role of the word element of the mark applied for is strengthened by its graphical representation, in white capital and bold letters on a black rectangle, placed over the figurative element in the form of a ‘header’ covering a surface which is clearly wider than the figure of the bird placed below it. Furthermore, in the applicant’s view, the reasoning underlying the existence of a likelihood of confusion between the signs is vitiated by various errors as regards the visual, phonetic and conceptual similarities.

51 First, it must be found that the Fourth Board of Appeal correctly concluded, in paragraph 34 of the contested decision, that the word element and the figurative element were co-dominant. Despite being placed below that word element and being slightly narrower, that figurative element is nearly three times taller than the rectangular element in which the word element is written and it is equally as eye-catching due to its size and the contrast of its black device on a white background, a contrast which creates no less an impact than the white word element on a black background.

52 Secondly, it should be borne in mind 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 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

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

54 In the present case, as noted by the Court in paragraph 79 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), and as already found, the earlier mark is a figurative mark consisting in a pictorial representation of a bird, probably intended to be an eagle, spreading its wings upwards and with the beak and claws open. The mark applied for is a figurative element representing a bird, which can be described in the same way as that of the earlier mark, and the word element ‘1^st american’ on a black rectangle above the representation of the bird.

55 The Fourth Board of Appeal found that the signs were visually similar to an average degree. More specifically, in paragraph 35 of the contested decision, it stated that, given that there was, as held by the Court in paragraph 96 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), strong visual similarity between the representation of the bird in each sign, the addition of the word element ‘1^st american’ in a black square could not outweigh those similarities, and expressly classified the visual similarity as average in paragraphs 21 and 42 of that decision.

56 The applicant disputes the Board of Appeal’s assessment and submits that the degree of visual similarity is only low. According to the applicant, the word element has an important place and role in the sign as a whole. The applicant refers to the judgment of 7 May 2015, Cosmowell v OHIM – Haw Par (GELENKGOLD) (T‑599/13, EU:T:2015:262), which concerned a comparable case in which the Court found a low degree of visual similarity. Such a finding is all the more correct in view of the settled case-law according to which, where a mark is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter.

58 It should be borne in mind that, in accordance with settled case-law, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, as the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 7 February 2013, AMC-Representações Têxteis v OHIM – MIP Metro (METRO KIDS COMPANY), T‑50/12, not published, EU:T:2013:68, paragraph 29 and the case-law cited).

59 However, as noted in paragraph 51 above, the Fourth Board of Appeal correctly found that the figurative element and the word element of the mark applied for were ‘co-dominant’.

60 Furthermore, the figurative element has an independent distinctive role in the mark applied for and is the sole constituent element of the earlier mark.

61 As regards the signs in the case which gave rise to the judgment of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262), referred to by the applicant, they had more elements of visual dissimilarity than in the present case.

62 While the applicant does not dispute the Court’s finding, made in paragraph 96 of the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518), relating to the strong visual similarity between the two birds of prey, the tigers represented in the case to which it refers were different, particularly with regard to the direction of the leap which they were making, the patterns of their hide and the visibility of their claws.

63 Accordingly, the Fourth Board of Appeal’s finding that the signs at issue have an average degree of visual similarity must be upheld.

64 In paragraph 36 of the contested decision, the Fourth Board of Appeal found that it was not possible to compare the signs at issue phonetically, since the earlier mark had no word element and could thus not be uttered.

65 The applicant submits that, in the light of the case-law of the Court, and in particular the judgment of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262), the relevant public will refer to the mark applied for by uttering its word element ‘1^st american’, whereas, as regards the earlier mark, the relevant public will utter only the term ‘bird of prey’. Consequently, the Fourth Board of Appeal was wrong to conclude that it was not possible, in the present case, to make a phonetic comparison of the signs at issue, which are phonetically clearly different.

66 EUIPO and the intervener dispute those arguments. Furthermore, the intervener notes that no copy of one of the judgments referred to by the applicant was included in the annexes to the application, even though that judgment is available only in French. Under Article 46(2) of the Rules of Procedure of the General Court, the applicant should have attached to that decision a translation into the language of the case.

67 As a preliminary point, as regards the intervener’s argument that the applicant should have provided a translation into the language of the case of one of the judgments to which it refers in support of its arguments, it should be borne in mind that, although, in accordance with Article 76 of the Rules of Procedure – which is applicable to intellectual property matters, pursuant to Article 171 and Article 177(1) of those rules – an application lodged in the context of an action brought against EUIPO must contain a certain amount of information, that provision does not require the text of the judgments referred to in support thereof to be provided.

68 It follows that the applicant was not required to provide a translation of that judgment of the Court in the language of the case, even if it is available only in French.

69 Next, as regards phonetic similarity, it should be borne in mind 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 uttered. At 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 (judgments of 3 May 2017, Environmental Manufacturing v EUIPO – Société Elmar Wolf (Representation of the head of a wolf), T‑681/15, not published, EU:T:2017:296, paragraphs 52 and 53, and of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree), T‑559/19, not published, EU:T:2020:19, paragraph 32).

70 It is true, as the applicant submits, that, in accordance with 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, in general it will be through the use of that word element that the relevant public will refer to the mark (judgments of 7 May 2015, GELENKGOLD, T‑599/13, EU:T:2015:262, paragraph 53, and of 3 May 2017, Representation of the head of a wolf, T‑681/15, not published, EU:T:2017:296, paragraph 52).

71 However, it has been made clear in the case-law that that presupposes that the semantic content of the purely figurative mark can immediately be associated with a specific, concrete word (judgments of 7 May 2015, GELENKGOLD, T‑599/13, EU:T:2015:262, paragraph 62; of 3 May 2017, Representation of the head of a wolf, T‑681/15, not published, EU:T:2017:296, paragraph 53; and of 30 January 2020, Representation of a tree, T‑559/19, not published, EU:T:2020:19, paragraph 33).

72 Thus, in paragraph 65 of the judgment mainly referred to by the applicant itself, namely that of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262), the Court found that, taking into account the fact that the relevant public would refer to the mark applied for by uttering its word element ‘gelenkgold’, whereas in relation to the earlier mark, the relevant public could only utter the word ‘tiger’, it had to be held that the signs at issue were phonetically different, contrary to the conclusion reached by the Board of Appeal.

73 In the present case, it should be noted that, according to the words chosen by the Court in the judgment of 12 July 2019, 1 ^st AMERICAN (T‑54/18, not published, EU:T:2019:518, paragraph 79), which are not disputed by the parties, the figurative element in both marks consists in a ‘pictorial representation of a bird, probably intended to be an eagle’.

74 The Fourth Board of Appeal, for its part, used the terms ‘bird’, ‘bird of prey’ and ‘eagle’ without distinction. The parties to the proceedings also use different terms. While the applicant takes the view that the matter concerns a ‘bald eagle’, EUIPO refers to a ‘bird of prey (likely an eagle)’ and the intervener uses the word ‘eagle’. Other expressions may also be considered, such as ‘falcon’, ‘hawk’, ‘raptor’ or ‘predatory bird’.

75 Thus, although as has just been pointed out, the Court had found, in the judgment of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262), that the purely figurative mark could be uttered only by the word ‘tiger’, in the present case, the purely figurative mark can be uttered in different ways, and it is, therefore, not possible to attribute a sound to it.

76 The applicant is thus wrong to claim that the relevant public will refer to the mark applied for by uttering its word element ‘1^st american’, whereas, as regards the earlier mark, it will only be able to utter the term ‘bird of prey’.

77 The other two judgments mentioned by the applicant, referred to in fact in paragraph 54 of the judgment of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262), cannot call into question the case-law, referred to in paragraph 71 above, according to which a phonetic comparison between a figurative mark containing a word element and a purely figurative mark requires that the semantic content of that latter mark can immediately be associated with a specific, concrete word.

78 The first judgment is that of 7 September 2006, L & D v OHIM – Sämann (Aire Limpio) (T‑168/04, EU:T:2006:245). In that judgment, the Court had found that there was a phonetic difference between the signs at issue, in so far as the earlier mark, which was purely figurative and consisted in the representation of a fir tree, could be transmitted orally by way of a description of the sign, whereas the mark applied for, which consisted in a figurative element reproducing a fir tree similar to that of the earlier mark and the word element ‘aire limpio’, could be expressed orally by using that word element. It is common ground between the parties that, in that case, the figurative elements of the marks at issue could not be referred to by the public other than by the term ‘fir tree’.

79 The second judgment is that of 2 July 2009, Fitoussi v OHIM – Loriot (IBIZA REPUBLIC) (T‑311/08, not published, EU:T:2009:244, paragraph 43), in which the Court had found that there was also a phonetic difference as regards an earlier purely figurative mark representing a star, and a mark applied for which, in addition to a star, contained the word element ‘ibiza republic’. Similarly, it must be found that the figurative elements of the marks at issue in that case could be referred to by the public only by the word ‘star’.

80 Furthermore, the Court has confirmed in more recent judgments that a phonetic comparison between a figurative mark containing a word element and a purely figurative mark implies that the semantic content of that latter mark can immediately be associated with a specific, concrete term.

81 Thus, in the judgment of 3 May 2017, Representation of the head of a wolf (T‑681/15, not published, EU:T:2017:296), the Court found that the figurative element in the mark applied for reproduced the head of a canine, which was capable of being perceived as a wolf, a dog or a fox. Consequently, no specific word could, with certainty, be attributed to the mark applied for. Moreover, the menacing representation of that animal’s head tended to reinforce that uncertainty as to the precise and exact attribution of a word, and therefore of a sound, to the mark applied for. The Court therefore held that the Board of Appeal had correctly found that it was not possible to compare the signs at issue phonetically (judgment of 3 May 2017, Representation of the head of a wolf, T‑681/15, not published, EU:T:2017:296, paragraphs 53 and 54).

82 The judgment of 30 January 2020, Representation of a tree (T‑559/19, not published, EU:T:2020:19), reached a similar finding. In that judgment, the Court found that since the figurative elements of the mark applied for in that case depicted a deciduous tree, the branches of which were covered with leaves, with four branches bearing a fruit or flower, the tree having large roots and being capable of being perceived as a reference to the symbol of ‘the tree of life’, placed in a circle, no specific word could be attributed with certainty to the mark applied for; it also found that since the figurative element of the earlier marks represented the silhouette of a fir tree and one of those marks contained the word element ‘arbre magique’, the relevant public would refer orally to that latter mark by uttering its word element. The Court then held that even supposing that a phonetic comparison of the signs at issue could be made – which would involve uttering words – when the fact of recognising or associating a shape with a word does not necessarily mean that that word will be uttered, the Board of Appeal had correctly found that it was not possible to assert that those signs would both be referred to by the generic word ‘tree’, with the result that they were not phonetically similar (judgment of 30 January 2020, Representation of a tree, T‑559/19, not published, EU:T:2020:19, paragraphs 34 to 36).

83 In the light of the foregoing, the Fourth Board of Appeal correctly found that it was not possible to compare the signs at issue phonetically.

84 In paragraph 37 of the contested decision, the Fourth Board of Appeal found that the signs at issue were conceptually similar at least to an average degree, since they shared the identical concept of a swooping bird of prey, which the Court had confirmed as having a strong visual similarity; it also found that the sign of the mark applied for also contained the word element ‘1^st american’, which would either be seen as meaning a citizen or a native of America who came or comes before all others in time or order, or merely as a reference to, historically, the first people or person of America, or be seen as meaningless and which has no counterpart in the earlier sign.

85 The applicant submits that the perception of the mark applied for, considered as a whole, will lead the relevant public to reflect, particularly since the bald eagle, the national bird of the United States of America, is a sacred bird in some North American cultures and its feathers, like those of the golden eagle, appear to be central to various religious and spiritual customs among Native Americans. Furthermore, the word element will also be remembered due to the fact that the concept of ‘the first American eagle’, as pointed out by the Fourth Board of Appeal, makes no sense as regards the figurative sign. Lastly, in a comparable case, the Court ruled out any conceptual similarity. In the circumstances of the present case, the degree of conceptual similarity is only weak.

86 EUIPO and the intervener dispute those arguments. In addition, the intervener requests that Annexes A.11 and A.12 should not be taken into account in accordance with Article 188 of the Rules of Procedure.

87 As a preliminary point, it must be held that Annexes A.11 and A.12 to the application are produced for the first time before the Court.

88 In that regard, it should be borne in mind that, although the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, and consequently it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see judgment of 5 February 2020, Hickies v EUIPO (Shape of a shoe lace), T‑573/18, EU:T:2020:32, paragraph 15 (not published) and the case-law cited), an applicant is entitled to submit before the Court documents in order either to substantiate or to challenge before it the accuracy of a matter of common knowledge (see judgment of 5 February 2020, Shape of a shoe lace, T‑573/18, EU:T:2020:32, paragraph 18 (not published) and the case-law cited).

89 As regards Annex A.11, it consists in the printing of an extract in English from the online encyclopaedia Wikipedia relating to the bald eagle.

90 The applicant produces that document in support of its argument that the relevant public would identify the figurative element in that manner, which would lead it to reflect and make it easier to remember.

91 However, it is uncertain whether that document can be regarded as demonstrating the accuracy of a matter of common knowledge, given that it is uncertain whether the relevant public will identify the figurative element as a ‘bald eagle’.

92 In any event, the applicant does not explain what inference should be drawn from that possible identification.

93 On the contrary, if the relevant public were able to identify the figurative elements of the marks at issue, which are in the present case highly similar, in such a specific way, the conceptual similarity would logically only be strengthened.

94 Therefore, even if that document were to be declared admissible, the applicant’s argument that the relevant public would be led to reflect since it would recognise a ‘bald eagle’ must be rejected.

95 As regards Annex A.12, it consists in a reproduction of the certificate of registration of the word element ‘1^st american’ as an EU trade mark.

96 In that regard, it is apparent from the case-law that such a document is not evidence in the strict sense, but concerns EUIPO’s decision-making practice, to which a party must be able to refer for the first time before the Court, where the plea is not that the Board of Appeal failed to take into account the factual aspects of a particular judgment or decision, but that it infringed a provision of Regulation No 207/2009, and reliance is placed upon the case-law or decision-making practice in support of that plea (see judgment of 26 June 2018, Sicignano v EUIPO – IN.PRO.DI (GiCapri “a giacchett’e capri”), T‑619/16, not published, EU:T:2018:385, paragraph 31 and the case-law cited).

97 The applicant produces that document, explaining that registration of the word element ‘1^st american’ would have been refused if it were merely descriptive. According to the applicant, the fact that it is not merely descriptive also leads the relevant public to reflect and therefore makes it easier to remember.

98 In that regard, it is sufficient to state that the fact that the word element ‘1^st american’ is not descriptive cannot lead the relevant public to reflect. It cannot be argued that a word element whose registration has been accepted as an EU trade mark, and which is not therefore descriptive, leads the relevant public to reflect.

99 Consequently, the applicant’s argument that the relevant public will be led to reflect since the word element ‘1^st american’ is not descriptive must be rejected.

100 Furthermore, it should be pointed out that the applicant does not dispute that the signs share the identical concept of a swooping bird of prey, the strong visual similarity of which has already been confirmed by the Court (see paragraph 55 above), and that the word element of the mark applied for will either have a meaning which is difficult to define with certainty or will be meaningless.

101 Lastly, as regards the case to which the applicant refers, namely that which gave rise to the judgment of 2 July 2009, IBIZA REPUBLIC (T‑311/08, not published, EU:T:2009:244), although, in paragraph 44 of that judgment the Court held that the signs at issue did not have any conceptual similarity, this was because the Court had found that the earlier sign evoked, at most, a star, the only figurative element of which it was made up; conversely, the mark applied for would be understood by the public concerned as evoking an imaginary republic located in Ibiza, a famous tourist destination, and the words making up the word element of the mark applied for, since they had a specific meaning, were thus likely to attract the attention of consumers to that word element and were likely to be remembered by them. The Court also noted that since the dominant element of the mark applied for was made up of the terms ‘ibiza’ and ‘republic’, it could not be argued that a conceptual similarity arose out of the figurative component, common to both signs, which was argued to be dominant.

102 In the present case, as the applicant itself explains, the word element has no specific meaning. Accordingly, the applicant cannot claim that it is likely to attract the attention of the relevant public or that it is likely to be remembered by it. Furthermore, it follows from the foregoing that the word element ‘1^st american’ is not a dominant element, but is, like the figurative element, only co-dominant in the mark applied for.

103 The Fourth Board of Appeal therefore rightly concluded that the signs at issue were conceptually similar to at least an average degree.

104 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

105 Thus, as is apparent from paragraphs 40 to 43 of the contested decision, the Fourth Board of Appeal took account of the fact that the earlier mark had an average degree of inherent distinctiveness, as had already been found by the Court, and took into consideration the fact that, in the clothing sector, visual similarity might have greater weight. It then concluded that, in view of the identity or similarity of the goods and services at issue, the average visual and conceptual similarity between the signs, the particular importance of the visual aspect for all the goods concerned, the average level of attention and the imperfect recollection of the relevant public and the independent distinctive role of the figurative element, namely the bird of prey, in the sign of the mark applied for, which is visually highly similar to the representation of the sign of the earlier mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for all the goods and services in question. Lastly, it stated that that would be the case even if the rectangular element bearing the word element were perceived as the dominant element, given that, as confirmed by the Court, the depiction of the bird had an independent distinctive role in the mark applied for.

106 The applicant disputes that finding. It submits that, in particular in the clothing, textiles and spectacles sector, the word elements are generally more important than figurative elements and that the Fourth Board of Appeal’s assertion, in paragraph 41 of the contested decision, that the choice of clothing is generally made visually is not supported by any evidence, all the more so since clothing purchased online is identified by its verbal denomination and e-commerce has increased sharply in recent decades, particularly during the recent coronavirus pandemic. Furthermore, the applicant refers to paragraphs 24 to 26 of the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528), from which it follows that, given that the earlier mark is not claimed to be especially well known to the public and consists in an image with little imaginative content, the mere fact that the two figurative elements may conceptually be somehow associated is not sufficient to give rise to a likelihood of confusion. Furthermore, it also follows from the case-law of the Court of Justice that it is only in exceptional situations that the assessment of the similarity can be carried out solely on the basis of a dominant element. Lastly, the applicant submits that, in two earlier decisions, the first of which involved the mark applied for in the present case, the Opposition Division found that there was no likelihood of confusion.

107 EUIPO and the intervener dispute those arguments. Furthermore, the intervener contends that Annexes A.7 to A.10, which were submitted for the first time before the Court, are inadmissible.

108 As a preliminary point, it must be held that Annexes A.7 to A.10, relating to copies of internet pages of online shops, of documents originating from the Statistical Office of the European Union (Eurostat) and of an article from the Reuters Agency, produced by the applicant in support of its argument that e-commerce has become increasingly important in recent decades, are admissible, given that an applicant is entitled to submit before the Court documents in order to substantiate before it the accuracy of a matter of common knowledge (see paragraph 88 above).

109 In the first place, as regards the applicant’s argument that the word elements are generally more important than the figurative elements, as pointed out in paragraph 51 above, in the present case, the Fourth Board of Appeal correctly concluded that the figurative element and the word element of the mark applied for were ‘co-dominant’.

110 In the second place, as regards the applicant’s argument that the Fourth Board of Appeal incorrectly found, in paragraph 41 of the contested decision, that the choice of clothing is generally made visually, it should be borne in mind that, generally, in clothes shops, customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the goods and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks designating such goods will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (judgments of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 50, and of 10 February 2021, El Corte Inglés v EUIPO – MKR Design (PANTHÉ), T‑117/20, not published, EU:T:2021:81, paragraph 61).

111 The considerations set out by the Fourth Board of Appeal in paragraph 41 of the contested decision as to the greater role of the visual aspect of the marks at issue in the global assessment of the likelihood of confusion in the present case must, therefore, be upheld.

112 In addition, those considerations cannot be called into question by the applicant’s argument that clothing purchased online is identified by its verbal denomination either through alphabetical dropdown menus or web-shop internal search engines.

113 The finding that the visual aspect has a greater role in the global assessment of the likelihood of confusion as regards the purchase of clothing in a shop also applies, in accordance with the case-law, with regard to sale by mail-order or via the internet, which implies, at least to the same extent as sale in a shop, marketing which calls for a visual evaluation of the product purchased by the consumer, whether the goods concerned are clothes, shoes or clothing accessories, and which does not generally allow assistance to be sought from a salesperson (judgment of 18 May 2011, IIC-Intersport International v OHIM – McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 51).

114 Annexes A.7 to A.10, produced by the applicant in support of its argument that e-commerce has become increasingly important in recent decades, cannot, therefore, call into question the considerations set out by the Fourth Board of Appeal in paragraph 41 of the contested decision as to the greater role of the visual aspect of the marks at issue in the global assessment of the likelihood of confusion.

115 Lastly, those considerations cannot be called into question by the applicant’s argument relating to the recent coronavirus pandemic.

116 In order to assess whether there exists a relative ground for opposition, it is appropriate to look at the time of filing of the application for an EU trade mark against which a notice of opposition has been filed (judgments of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 19, and of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS), T‑421/18, EU:T:2020:433, paragraph 34).

117 In the third place, as regards the applicant’s reference to paragraphs 24 to 26 of the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528), it should be noted that, in those paragraphs, the Court of Justice stated that it cannot 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 and that, in the circumstances of that case, the mere fact that the two marks were conceptually similar was not sufficient to give rise to a likelihood of confusion. However, it is sufficient to note that it follows from the foregoing that the Fourth Board of Appeal did not base the contested decision solely on a mere conceptual similarity.

118 In the fourth place, as regards the applicant’s reference to various judgments of the Court of Justice according to which it is only in exceptional situations that the assessment of similarity can be carried out solely on the basis of the dominant element, it is also sufficient to note that it follows from the foregoing that the Fourth Board of Appeal did not base the contested decision solely on the basis of a dominant element.

119 In the fifth place, besides that the fact that it is apparent from the settled case-law that the legality of the decisions of the Boards of Appeal must be assessed, in principle, solely on the basis of the regulations on the EU trade mark, as interpreted by the EU judicature and not on the basis of EUIPO previous decision-making practice (see judgment of 16 December 2020, Production Christian Gallimard v EUIPO – Éditions Gallimard (PCG CALLIGRAM CHRISTIAN GALLIMARD), T‑863/19, not published, EU:T:2020:632, paragraph 63 and the case-law cited), it must be noted that, as regards the first decision of the Opposition Division to which the applicant refers – namely the decision of 28 January 2011 concerning opposition proceedings B 1 645 202 (1 ^st AMERICAN & Representation of an eagle) – the Opposition Division did indeed find that there was no likelihood of confusion in view of the visual differences between the marks. However, in that case, the depictions of the birds of prey differed in particular with regard to the wings, beak, legs, tail and orientation of the birds. In the present case, it follows from the foregoing that there are no such visual differences. Furthermore, the Opposition Division noted that those differences were particularly important in the global assessment of the likelihood of confusion, given that consumers were visually exposed to the clothing, footwear and headgear at the time of purchase, as found by the Fourth Board of Appeal in the present case. With regard to the second decision of the Opposition Division to which the applicant refers, namely the decision of 20 July 2017 relating to opposition proceedings B 2 738 147 (American Street Premium), the Opposition Division also found that there was no likelihood of confusion, but that finding was due to the visual differences between the marks – since the inclination, colour and position of the eagles were different – which were combined with a greater level of attention in respect of the goods in question in Class 34 (tobacco). However, in the present case, there are no such visual differences and it is not disputed that the attention of the relevant public is only average.

120 Accordingly, it must be held that the Fourth Board of Appeal did not commit any error in finding that there was a likelihood of confusion. It follows that the plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected as unfounded.

121 In the light of all the foregoing, the action must be dismissed in its entirety, and there is no need to rule on the admissibility of the heads of claim seeking to reject the opposition and to allow the registration of the mark applied for.

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

123 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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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Fashion Energy v EUIPO - Retail Royalty (1st AMERICAN) (EU trade mark - Judgment) [2021] EUECJ T-699/20 (21 December 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T69920.html Cite as: ECLI:EU:T:2021:928, [2021] EUECJ T-699/20, EU:T:2021:928

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