Greenwich Polo Club v EUIPO - Lifestyle Equities (GREENWICH POLO CLUB) (EU trade mark - Judgment) [2022] EUECJ T-437/21 (19 October 2022)

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(EU trade mark – Opposition proceedings – Application for the EU figurative mark GREENWICH POLO CLUB – Earlier EU word mark BEVERLY HILLS POLO CLUB – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Scope of the examination to be carried out by the Board of Appeal – Article 71 of Regulation 2017/1001 – Article 27(2) of Delegated Regulation (EU) 2018/625)

Greenwich Polo Club, Inc., established in Greenwich, Connecticut (United States), represented by R. Zammitt, lawyer,

European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and J. Ivanauskas, acting as Agents,

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

Lifestyle Equities CV, established in Amsterdam (Netherlands), represented by S. Terpstra, lawyer,

composed, at the time of the deliberations, of D. Spielmann, President, U. Öberg and M. Brkan (Rapporteur), Judges,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 By its action under Article 263 TFEU, the applicant, Greenwich Polo Club, Inc., seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 May 2021 (Case R 300/2020-1), relating to opposition proceedings between the intervener, Lifestyle Equities CV, and itself (‘the contested decision’).

2 On 8 February 2018, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to 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). Registration as a mark was sought for the following figurative sign:

3 The mark applied for covered goods in, inter alia, Classes 9, 14, 18, 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, corresponding, for each of those classes, to the following description:

– Class 9: ‘Optical apparatus and instruments; eyeglasses, sunglasses and cases’;

– Class 14: ‘Jewellery, precious stones; horological and chronometric instruments; clocks; alarm clocks; desk clocks; watches; alarm watches; sporting watches; jewellery; costume jewellery; bracelets, ankle bracelets; brooches; chains; charms; cuff-links; earrings; lapel pins; tie pins; tie clips; necklaces; ornamental pins; pendants; rings; key rings, all of precious metal or coated therewith; figurines (decorative) of precious metal or plated therewith; cases for clocks, watches or jewels; cases and containers of precious metal’;

– Class 18: ‘Bags, backpacks, rucksacks, hand bags, shoulder bags, garment bags, holdalls; luggage, travelling bags, suitcases, travelling cases, trunks, vanity cases; money belts, wallets, purses; luggage labels and holders for luggage labels; umbrellas and walking sticks’;

– Class 24: ‘Textiles and textile goods, not included in other classes; bed and table covers; travelling rugs and lap rugs; towels; bed linen, blankets, bedspreads, quilts, canopies, bed pads, bed sheets, pillow cases, comforters, duvet covers, mattress covers, pillow shams; sleeping bags (sheeting); cloth; fabric, table covers and table linen; place mats; napkins, serviettes and table runners; kitchen linens, namely, cloth doilies, cloth napkins, dish cloths, tea cloths and tea towels, fabric table cloths, kitchen towels, fabric place mats, washing mitts, fabric table runners, cloth coasters; curtains; draperies; curtain holders of cloth; banners; handkerchiefs; bath linen; bath towels, face cloths and wash cloths; towelling robes; household linen; mats of linen; covers for toilet lids of fabric; covers for cushions; loose covers for furniture; textile wall hangings; shower curtains; cotton, polyester and/or nylon fabric, fabric of imitation animal skins; upholstery fabrics; lingerie fabric; golf towels’;

– Class 25: ‘Men’s, women’s and children’s clothing, belts, braces, footwear and headgear’.

4 On 29 March 2018, the intervener filed a notice of opposition to registration of the mark applied for in respect of, inter alia, the goods referred to in paragraph 3 above.

– the EU word mark BEVERLY HILLS POLO CLUB, which was filed on 19 July 2017 and registered on 14 November 2017 under the number 17010273 and covers goods in Classes 3, 9, 14, 18, 21, 24 and 25 corresponding, for each of those classes to the following description:

– Class 3: ‘Perfumes; colognes; body sprays; toilet water; soap; skin moisturizers and creams; shower gels, shaving creams, shaving lotions, shaving gels; shampoos; hair gels, hair creams; nail polish, nail polish remover; lipsticks, lip gloss, lip balms; skin lotions, facial lotions, body lotions, hand creams; deodorants and anti-perspirants; after shave lotions; home fragrances’;

– Class 9: ‘Eyewear; eyeglasses and sunglasses; eyeglass- and sunglass frames; eyeglass- and sunglass cases; binoculars’;

– Class 14: ‘Watches; watch straps, watch bands; jewelry; earrings, necklaces, rings, bracelets and pendants; cuff links’;

– Class 18: ‘Luggage; hand bags; sport bags; beach bags; carry-on bags; clutch bags; trunks and travelling bags; school bags; shoulder bags; shopping bags; tote bags; rucksacks; backpacks; duffel bags; cosmetic bags, briefcases; suitcases; holdalls; purses; wallets; leather key chains; business card cases; umbrellas; parasols; walking sticks’;

– Class 21: ‘Glassware for household purposes; household or kitchen utensils and containers (not of precious metal or coated therewith); crystal [glassware]; coffee sets; ceramics for household purposes; kitchenware, cooking pot sets; dishware; porcelain and earthenware, as far as included in class 21; tableware, other than knives, forks and spoons; services [dishes]; tea services [tableware]; pots; crockery; pottery; cups; teapots; table plates; drinking vessels; beverage glassware; saucers; plates; dishes; bowls; mugs; coolers; corkscrews; decanters’;

– Class 24: ‘Towels; bath towels; hand towels; kitchen towels; beach towels; bath linen; bed blankets; bed clothes; bed covers; bedspreads; duvet covers; bed linen; pillowcases; pillow covers; face towels of textile; handkerchiefs of textile; household linen; linen cloth; place mats, not of paper; sheets [textile]; tablecloths, not of paper; table linen, not of paper; tablemats, not of paper; table napkins of textile; textile material; towels of textile; curtains’;

– Class 25: ‘Clothing; suits; tuxedos; blazers; vests; blouses; overalls; pullovers; sweaters; sweater vests; sweatpants; sweatshirts; T-shirts; shirts; polo-shirts; shirts and casual tops with long and short sleeves; halter tops; sleeveless shirts; sport shirts; tops for exercise; jeans; pants; trousers; shorts; skirts; coats; jackets (clothing); outerclothing; ponchos; raincoats; sport coats; bathing suits; swimsuits; bikinis; bikini tops; Bermuda shorts; beach clothes; bath robes; body linen (garments); underwear; undergarments; undershirts; bodysuits; boxer shorts; bras; bustiers; hosiery; stockings; lingerie; leggings; night clothes; nightgowns; nightshirts; pajamas; panties; dresses; dressing gowns; belts (clothing); socks; footwear; athletic shoes; beach shoes; booties; espadrilles; flip-flops; gym boots; heels; pumps; sandals; shoes; slippers; sporting and gymnastic shoes; headwear; bandannas; baseball caps; caps; hats; headbands’;

– the EU figurative mark reproduced below, which was filed on 10 August 2016 and registered on 9 January 2017 under the number 15737653 in respect of the same goods as those covered by EU word mark No 17010273.

6 The grounds relied on in support of the opposition were, inter alia, those set out in Article 8(1)(b) of Regulation 2017/1001.

7 On 13 December 2019, the Opposition Division partially upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001. In essence, the Opposition Division found that the goods covered by the mark applied for were in part identical or similar to various degrees and in part different to the goods covered by the earlier word mark. As regards the comparison of the signs at issue, the Opposition Division found that those signs were visually and phonetically similar to a low degree and conceptually similar to at least an average degree, since the word elements in common ‘polo club’ both conveyed the same concept. It therefore took the view that the relevant public, which consisted of the general public and the professional public with an average to high level of attention, might be led to believe that the goods which had been found to be identical or similar came from the same undertaking or from economically linked undertakings. Furthermore, it found that, according to the principle of interdependence, the low degree of similarity between some of the goods was offset by the higher degree of similarity between the signs, in particular from a conceptual standpoint. Consequently, it concluded that there was a likelihood of confusion with regard to the identical and similar goods, whereas, with regard to the other goods, which had been found to be dissimilar, the opposition was rejected.

8 On 7 February 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9 By the contested decision, the Board of Appeal dismissed the appeal, on the ground that a likelihood of confusion between the marks at issue with regard to the goods at issue could not be safely excluded. First, the Board of Appeal found that the relevant public consisted of the general public in the European Union, which had a normal level of attention. Secondly, as regards the comparison of the goods at issue, it confirmed the Opposition Division’s findings with regard to the goods which had been found to be identical and carried out a new assessment of the degrees of similarity between the goods which the Opposition Division had found to be similar, although it did not, however, find that there had been any error in the Opposition Division’s findings. Thirdly, as regards the comparison of the signs, the Board of Appeal, after finding that the earlier word mark had an average degree of inherent distinctive character, took the view that they were visually similar to an average degree, phonetically similar to at least a low degree and conceptually similar to a high degree, with the result that those signs were similar overall to an average degree. Lastly, in the light of those considerations and of an analysis of the conditions under which the marks at issue might be present on the market, the Board of Appeal concluded that the coinciding distinctive word elements ‘polo club’ were sufficient to lead to a likelihood of confusion on the part of the relevant public, since the differences between the marks at issue were not able to outweigh the similarities.

– order that the mark applied for be registered in respect of the goods with regard to which registration was refused as well as in respect of the goods which were not the subject of the appeal;

12 As regards the second head of claim, it must be pointed out that that head of claim seeks that the Court order the registration of the mark applied for in respect of the goods with regard to which registration was refused as well as in respect of the goods which were not the subject of the appeal.

13 Such a claim may be understood as requesting that the Court issue a direction to EUIPO. In that regard, it is sufficient to point out that, when exercising judicial review of legality under Article 263 TFEU, the Court does not have the jurisdiction to issue directions to European Union institutions, bodies, offices and agencies (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).

14 That claim may also be understood as requesting that the Court 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 a claim that it should register an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of a claim for alteration requesting it to amend the decision of a Board of Appeal to that effect (see, to that effect, 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).

15 It follows that the second head of claim must be rejected on the grounds of lack of jurisdiction.

16 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 71 of Regulation 2017/1001 and Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) and, secondly, infringement of Article 8(1)(b) of Regulation 2017/1001.

1. The first plea, alleging infringement of Article 71 of Regulation 2017/1001 and Article 27(2) of Delegated Regulation 2018/625

17 The applicant submits, first, that the Board of Appeal vitiated the contested decision by a procedural error by making new findings in relation to the visual similarity, since neither party had challenged the findings of the Opposition Division. It contends that the Board of Appeal should not therefore have reconsidered those issues which had not been appealed or cross-appealed, since Article 71 of Regulation 2017/1001 and Article 27(2) of Delegated Regulation 2018/625 prevent it from ruling on matters which go beyond the subject matter of the appeal. Consequently, it argues that the Board of Appeal’s finding that the marks at issue are visually similar to an average degree should be annulled and the Opposition Division’s finding that they are visually similar to a low degree should be reinstated. Furthermore, the applicant observes that, even though the Board of Appeal made the same finding as the Opposition Division with regard to the phonetic similarity, reconsidering that issue nevertheless constituted a procedural error.

18 Secondly the applicant submits that the Board of Appeal vitiated the contested decision by a procedural error by re-examining the comparison of the goods at issue and by adding goods to the list of those which were considered to be identical and similar to a high degree, even though the goods which the Opposition Division had found to be identical or dissimilar had not formed part of an appeal or cross-appeal by the parties.

20 It is apparent from Article 71(1) of Regulation 2017/1001 that the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It follows from that provision and from the scheme of Regulation 2017/1001 that, in ruling on an appeal, the Board of Appeal has the same powers as the department which was responsible for the decision appealed and that its examination concerns the dispute as a whole as it stands on the date of its ruling. It is also apparent from that provision, as well as from settled case-law, that there is continuity in terms of their functions between the different units of EUIPO, namely the examiner, the Opposition Division, the division responsible for the administration of trade marks and legal issues and the Cancellation Divisions on the one hand, and the Boards of Appeal on the other. It follows from that continuity in terms of their functions between the different departments of EUIPO that, in the context of the review which the Boards of Appeal must undertake of the decisions taken by the EUIPO units which heard the application at first instance, the Boards of Appeal are required to base their decisions on all the matters of fact and of law which the parties put forward, either in the proceedings before the department which heard the application at first instance or in the appeal (see judgments of 26 September 2014, Koscher + Würtz v OHIM – Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraph 28 and the case-law cited, and of 6 October 2017, Falegnameria Universo dei F.lli Priarollo v EUIPO – Zanini Porte (silente PORTE & PORTE), T‑386/16, not published, EU:T:2017:706, paragraph 29 and the case-law cited).

21 Furthermore, Article 27(2) of Delegated Regulation 2018/625 provides the following:

‘In inter partes proceedings, the examination of the appeal and, as the case may be, the cross appeal, shall be restricted to the grounds invoked in the statement of grounds and, as the case may be, in the cross appeal. Matters of law not raised by the parties shall be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation (EU) 2017/1001 having regard to the facts, evidence and arguments presented by the parties.’

22 In that regard, it has already been held that, under Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, with the result that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties. The fact remains that the Board of Appeal is required to decide on all issues which, in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of that regulation and in respect of which it has all the information required in order to be able to take a decision, even if no matter of law relating to those issues has been relied on by the parties before it (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41; see also judgment of 14 July 2021, JT v EUIPO – Carrasco Pirard and Others (QUILAPAYÚN), T‑197/20, not published, EU:T:2021:429, paragraph 56 and the case-law cited).

23 The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case and the similarity of the goods and of the signs at issue are among those relevant factors (see, to that effect and by analogy, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 51 and the case-law cited), as is, moreover, apparent from the wording of Article 8(1)(b) of Regulation 2017/1001, a provision which will be examined below.

24 Consequently, in the context of opposition proceedings based on Article 8(1)(b) of Regulation 2017/1001, the assessment of the similarity of the goods at issue and of the signs at issue constitute matters of law which are necessary to ensure the correct application of that regulation, with the result that the adjudicating bodies of EUIPO are required to examine those matters, if necessary of their own motion. As that assessment does not presuppose any matter of fact which it is for the parties to provide and does not require the parties to provide grounds or arguments tending to establish the existence of those similarities, EUIPO is able, on its own, to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based (see, to that effect and by analogy, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 43).

25 In the present case, it must be stated, as is apparent from the contested decision, that the Board of Appeal carried out its own assessment of whether there was a likelihood of confusion, by examining all the relevant factors, namely the relevant public, the similarity of the goods, the visual, phonetic and conceptual similarity of the signs and the distinctive character of the marks at issue. In particular, it restricted the scope of the appeal to only the goods which the Opposition Division had found to be identical or similar, in respect of which the opposition had been upheld by the Opposition Division. Furthermore, it stated that the applicant had not challenged the Opposition Division’s conclusions in relation to the goods which had been found to be identical and that, after revision, it confirmed those conclusions.

26 In addition, it is common ground that, as is apparent from the case file, neither the applicant nor the intervener, since there was no cross appeal, disputed the Opposition Division’s findings relating to the goods which had been found to be different or identical and the visual and phonetic similarity of the signs at issue.

27 The Opposition Division’s findings relating to the similarity of the goods which were found to be identical or similar and to the visual and phonetic similarity of the signs constitute matters of law which are necessary to ensure the correct application of Regulation 2017/1001, in accordance with the case-law which has been cited in paragraph 24 above.

28 Consequently, the Board of Appeal did not vitiate the contested decision by a procedural error in examining the Opposition Division’s findings relating to the similarity of the goods which were found to be identical or similar and to the visual and phonetic similarity of the signs at issue.

2. The second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

30 By its second plea, the applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue. In particular and in essence, it disputes the Board of Appeal’s findings that, first, all of the goods in Class 9 are identical to those covered by the earlier mark, secondly, the signs at issue are visually similar to an average degree and, thirdly, those signs are conceptually similar to a high degree. Consequently, the applicant submits that the Board of Appeal should have found that there was a low degree of overall similarity between the marks at issue, which would have been sufficient to conclude that there was no likelihood of confusion.

31 EUIPO states that the applicant’s substantive criticism of the contested decision is limited to the conceptual comparison of the signs at issue and its effect on the overall assessment of a likelihood of confusion, with the result that the remaining elements of that decision, which are not disputed, should be endorsed.

32 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.

33 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. 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).

34 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).

35 In the present case, it must be stated that the applicant does not dispute the merits of the definition of the relevant public with regard to which the Board of Appeal examined whether there was a likelihood of confusion, namely the general public in the European Union, which displays a normal level of attention.

36 It also does not dispute the Board of Appeal’s finding that the signs at issue are phonetically similar to at least a low degree.

37 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was, for the purposes of Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion on the part of the relevant public.

38 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 concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

39 Where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods 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).

40 In the present case, the Board of Appeal, first, upheld the Opposition Division’s findings regarding the goods in Classes 9, 14, 18, 24 and 25 which had been found to be identical. Secondly, regarding the goods which the Opposition Division had found to be similar, either to a low degree or without any precision as regards the degree of similarity, the Board of Appeal found that some of those goods were identical whereas others were similar to a specific degree, stating that:

– regarding the goods in Class 14, the ‘precious stones’ were similar to a high degree to the jewellery covered by the earlier mark, whereas the ‘key rings, all of precious metal or coated therewith’ and ‘figurines (decorative) of precious metal or plated therewith’ were similar to an average degree to that jewellery and the ‘cases for clocks, watches or jewels; cases and containers of precious metal’ were also similar to an average degree to the watches and jewellery covered by the earlier mark;

– with respect to the goods in Class 18, the ‘vanity cases’ were similar to a high degree to the ‘luggage’ and ‘cosmetic bags’ covered by the earlier mark, whereas the ‘luggage labels and holders for luggage labels’ were similar to a normal degree to the ‘luggage’ and ‘travelling bags’ covered by the earlier mark;

– as regards the goods in Class 24, the ‘mats of linen’ and ‘cloth coasters’ were included in and therefore identical to the ‘table linen, not of paper; table mats not of paper’ covered by the earlier mark, just as the ‘loose covers for furniture’ were included in and identical to the ‘bed covers’, ‘tablecloths’ and ‘textile material’ covered by the earlier mark, and that the ‘textile wall hangings; draperies’ and ‘curtain holders of cloth’ were highly similar to the ‘curtains’ covered by the earlier mark, whereas the ‘travelling rugs and lap rugs’ were similar to a normal degree to the ‘textile material’ covered by the earlier mark.

41 The applicant claims that the Board of Appeal reassessed the Opposition Division’s findings relating to the goods which had been found to be identical or dissimilar, even though it had not disputed those findings.

42 As regards the goods in Class 9, the applicant submits that, although only the ‘eyeglasses, sunglasses and cases’ were similar to the goods covered by the earlier mark, the Board of Appeal found, without providing any reasoning, that the rest of the goods in that class were identical to the goods covered by the earlier mark. It argues that, consequently, the Opposition Division’s finding that only the ‘eyeglasses, sunglasses and cases’ were identical, whereas the rest of the goods were dissimilar, should be reinstated.

43 As regards the goods in Classes 14, 16, 18, 24 and 25 which were found to be dissimilar, similar or identical to the goods covered by the earlier mark, the applicant points out that the Board of Appeal came to the same conclusions as the Opposition Division, with the result that those findings do not form part of the present action.

45 First of all, it is clear from the contested decision that the Board of Appeal restricted the scope of the action to the goods in Classes 9, 14, 18, 24 and 25 covered by the mark applied for in respect of which the opposition had been upheld, by exhaustively listing the goods at issue, as set out in paragraph 3 above. It also added that, with regard to the goods which had been found to be dissimilar by the Opposition Division and in respect of which the opposition had been rejected, namely some of the goods in Classes 9, 14, 18 and 24 and all the goods in Class 16, the findings of the Opposition Division had become final. The Board of Appeal therefore clearly stated that the goods which had been found to be dissimilar by the Opposition Division did not form part of the appeal which had been brought before it, as the applicant, moreover, itself acknowledges.

46 Secondly, as regards the goods at issue in Classes 14, 18, 24 and 25, it must be pointed out that the Opposition Division found them to be either identical or similar, with or without any precision as to the degree of similarity, to the goods covered by the earlier mark. As is clear from paragraph 40 above, the Board of Appeal, on the one hand, confirmed that the goods at issue which had been found to be identical to those covered by the earlier mark were identical to them. On the other hand, without, however, pointing out any errors in the findings of the Opposition Division, the Board of Appeal either determined the degree of similarity with precision or reassessed the degree of similarity between some of the goods at issue, which were found to be identical rather than similar to the goods covered by the earlier mark.

47 As the intervener points out, the Board of Appeal did not therefore reach the same conclusions as the Opposition Division regarding the goods at issue which had been found to be similar, but provided clarification as regards the Opposition Division’s reasoning, although that is not capable of affecting the outcome of the contested decision. However, it must be stated that the applicant does not dispute the merits of those new findings, since it itself acknowledges that they do not form part of the present action.

48 Furthermore, it is clear from the application that the applicant does not dispute the finding relating to the goods which were found to be dissimilar or identical, but claims that the Board of Appeal added goods to the list of those which were found to be identical and similar to a high degree, although the similarity or identity of those goods had not been disputed. In that regard, it must be stated that the applicant does not specify the goods to which it is referring or state in what way that reassessment is incorrect, even though the Board of Appeal did in fact reassess the degree of similarity between some of the goods, which were found to be identical or to have a higher degree of similarity to the goods covered by the earlier mark.

49 Thirdly, in claiming that the Board of Appeal found that all the goods in Class 9 were identical to the goods covered by the earlier mark, although the Opposition Division had found the majority of them to be dissimilar, the applicant misreads that finding.

50 Contrary to what the applicant claims, when the Board of Appeal found that ‘all the goods at issue in Class 9’ were identical to those covered by the earlier mark, it was not referring to all the goods in Class 9 in respect of which registration had been sought, but to the goods in that class which had been found to be identical, namely the ‘optical apparatus and instruments; eyeglasses, sunglasses and cases’, as listed in paragraph 15 of the contested decision. Consequently, by using a defined term to refer to the goods which were the subject of the appeal, namely ‘the goods at issue’, the Board of Appeal clearly stated that it was referring solely to the goods in Class 9 in respect of which the opposition had been upheld, namely the ‘optical apparatus and instruments; eyeglasses, sunglasses and cases’. Moreover, it must be noted that the identity between those goods at issue in Class 9 and those covered by the earlier mark is not disputed by the applicant, as the Board of Appeal also stated in the contested decision.

51 In view of the foregoing, it must be held that the Board of Appeal did not reassess the degree of similarity between the goods at issue which the Opposition Division had found to be dissimilar or vitiate the contested decision by any illegality in confirming that some of the goods at issue were identical to those covered by the earlier mark.

52 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).

53 Furthermore, the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited).

54 Lastly, it must be borne in mind that the signs to be compared are those constituting, on the one hand, the figurative mark applied for, GREENWICH POLO CLUB, and, on the other hand, the earlier word mark, BEVERLY HILLS POLO CLUB.

55 On the basis of the judgment of 26 March 2015, Royal County of Berkshire POLO CLUB (T‑581/13, not published, EU:T:2015:192), the Board of Appeal found that the distinctiveness of the image of a polo player and the words ‘polo club’ was normal with regard to the goods in Class 25 and enhanced or, at the very least, normal with regard to the goods in Classes 9, 14, 18 and 24, with the result that, overall, the earlier mark had an average degree of distinctiveness. It therefore stated that the signs at issue had in common the word elements ‘polo club’ which were distinctive to at least an average degree. It also found that the first words ‘beverly hills’ in the earlier sign, as an indication of a well-known location in the United States, were regarded as purely descriptive of their characteristics and thus, like the term ‘greenwich’, had only limited distinctiveness.

56 The applicant does not dispute the average degree of distinctiveness of the earlier mark, but seems to call into question the Board of Appeal’s finding that the terms ‘polo club’ constitute the distinctive element in the marks at issue, without, however, putting forward any arguments in that regard. It merely submits that a likelihood of confusion would have been ruled out if the Board of Appeal had considered the marks at issue properly, without making the material error of finding that the terms ‘polo club’ were the distinctive element in both marks.

58 In that regard it must be stated, as observed by EUIPO, that, although the applicant seems to dispute the finding that the words ‘polo club’ form the distinctive part of the marks at issue, it does not, however, dispute the Board of Appeal’s finding that the word element ‘beverly hills’ in the earlier mark and the word element ‘greenwich’ in the mark applied for are descriptive of well-known locations in the United States and in the United Kingdom respectively, with the result that they have only limited distinctiveness. Moreover, it must be pointed out that, even assuming that the words ‘polo club’ do not on their own constitute the distinctive element of the marks at issue, the applicant does not put forward any argument which is capable of showing that the terms ‘beverly hills’ and ‘greenwich’, which it acknowledges as being the names of places, are distinctive, or, in any event, more distinctive than the words ‘polo club’.

59 In any event, it is clear from the case-law that the image of a polo player and the words ‘polo club’ have a degree of distinctiveness ranging from low to enhanced depending on the connection which the goods and services at issue may have with polo playing. Accordingly, the Court has already held that the image of a polo player and the words ‘polo club’ have, on the one hand, enhanced distinctiveness with regard to goods in Classes 9, 14 and 18, since they have no connection with the playing of polo, and, on the other hand, normal distinctiveness with regard to goods in Class 25, given that they can be used for polo playing, although there is nothing in their description to the effect that they relate specifically to polo playing (see, to that effect, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 49; see also, by analogy, judgment of 10 November 2016, Polo Club v EUIPO – Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN), T‑67/15, not published, EU:T:2016:657, paragraphs 51 and 54 and the case-law cited).

60 Consequently, the Board of Appeal correctly applied the case-law to the present case. The words ‘polo club’, which are common to the signs at issue, have enhanced distinctiveness with regard to the goods at issue in Classes 9, 14, 18 and 24, since they are not connected with polo playing, whereas they have a normal degree of distinctiveness with regard to the goods at issue in Class 25, the description of which does not state that they are goods which are specially designed for polo playing.

61 The Board of Appeal was therefore right in finding that the words ‘polo club’ constituted the distinctive element in the marks at issue.

62 The Board of Appeal found that the word elements ‘polo club’ were common to both of the signs, but that the differences relating to the word elements ‘greenwich’ and ‘beverly hills’ and to the figurative element in the contested sign were not negligible. Consequently, it concluded that the signs at issue were visually similar to an average degree.

63 The applicant submits that the action relates to the Board of Appeal’s finding that there is an average degree of visual similarity and that the Opposition Division’s finding that the marks at issue are visually similar to a low degree should be reinstated.

65 First of all, it must be pointed out that the applicant has already disputed the Board of Appeal’s finding that there is an average degree of visual similarity in the context of its first plea, inasmuch as it has submitted that the Board of Appeal was not entitled to reassess the Opposition Division’s finding that there was a low degree of visual similarity in the light of the parties’ lack of any challenge to that finding.

66 In that regard, it must be stated, as is clear from paragraphs 26 to 28 above, the Board of Appeal was justified in re-examining and reassessing the degree of visual similarity, because that assessment constitutes a matter of law which is necessary to ensure the correct application of Article 8(1)(b) of Regulation 2017/1001.

67 By contrast, even assuming that, by the same argument, the applicant is also seeking to dispute the merits of the Board of Appeal’s finding that there is an average degree of visual similarity, it confines itself, however, to claiming that that finding on the part of the Board of Appeal should be annulled and the Opposition Division’s finding that there was a low degree of similarity should be reinstated, without setting out any arguments to explain why that visual similarity is merely low and not average in degree.

68 Consequently, the applicant’s unsubstantiated arguments do not make it possible to call into question the Board of Appeal’s finding that the signs at issue are visually similar to an average degree.

69 The Board of Appeal found that both signs would bring the idea of polo and a polo club to the minds of the relevant public and that the figurative element of the two polo players on their galloping horses only reinforced that idea, whereas the word elements ‘greenwich’ and ‘beverly hills’, which referred to different polo clubs, only marginally reduced the degree of conceptual similarity. Consequently, since the concept was distinctive with regard to the goods at issue, it found that there was a high degree of conceptual similarity.

70 The applicant disputes the Board of Appeal’s finding relating to the conceptual similarity of the signs at issue, in so far as the Board of Appeal found, on the basis of the judgment of 29 March 2017, J & Joy v EUIPO – Joy-Sportswear (J AND JOY) (T‑387/15, not published, EU:T:2017:233, paragraph 80), that the place names ‘Greenwich’ and ‘Beverly Hills’ would have only a low impact and could not be a determining differentiating factor for the purposes of the conceptual comparison. According to the applicant, that case-law does not relate to the public’s attention to a geographical location. It submits that the relevant public is well aware that the geographical location is fundamental to distinguishing between different clubs (polo clubs or other sports clubs), in the same way that that public usually distinguishes between football clubs on the basis of their place names. Consequently, relying also on the case which gave rise to the judgment of 10 May 2021 of the High Court of Justice (England & Wales), Chancery Division, United Kingdom, in which it was, in the applicant’s submission, held that the marks at issue in that case were conceptually different, the applicant contends that the signs at issue are conceptually different, since there is only low degree of similarity between them.

71 Furthermore, it claims that the Board of Appeal did not take into account the figurative element in the sign applied for, which consists of two horses galloping one behind the other. It argues that that is an additional message, which is not present in the earlier sign and which lowers the degree of conceptual similarity.

73 In that regard, it must be pointed out, as observed by the Board of Appeal, that the signs at issue will, for the relevant public, refer to the idea of polo or polo clubs, because they have the words ‘polo club’ in common.

74 Furthermore, contrary to what the applicant claims, the figurative element in the sign applied for, which represents two polo players holding mallets on galloping horses, only reinforces that reference to polo.

75 As regards the elements ‘greenwich’ and ‘beverly hills’, it must be stated that the relevant public will understand those elements as referring to well-known place names and therefore to the locations of the polo clubs concerned. It is common for sports clubs to use place names in order to differentiate themselves from each other and to indicate where they are located. However, those place names will have only a low or even very low impact on the conceptual content of the signs at issue, since they will still refer to the same concept, namely, as the Board of Appeal correctly found, that of playing polo at a club.

76 Moreover, it has already been held that the fact that the relevant public may associate those signs with two different polo clubs only marginally reduces their degree of conceptual similarity. Even in that case, those signs would nevertheless both continue to refer to the same concept, that of polo playing at a club, although the clubs may be in different geographical locations (see judgment of 10 November 2016, POLO CLUB SAINT-TROPEZ HARAS DE GASSIN, T‑67/15, not published, EU:T:2016:657, paragraph 76 and the case-law cited).

77 The applicant’s argument that the relevant public is well aware of the importance of the geographical location in distinguishing between clubs, as is the case with regard to football clubs, cannot succeed. The applicant has not put forward any evidence as grounds for concluding that it is possible to compare the general public’s knowledge of polo with its knowledge of football; nor has the applicant explained how the two polo clubs concerned in the present case would be comparable, in the eyes of that public, to football teams (see, by analogy, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 70).

78 Lastly, it must be stated that those findings cannot be called into question by the judgment of 10 May 2021 of the High Court of Justice (England & Wales), Chancery Division, on which the applicant relies and which it has submitted in Annex A.5 to the application.

79 In that regard, it is clear from settled case-law that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national and international system and the legality of decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union. Although it is true that neither the parties nor the Court can be precluded from drawing on national or international case-law or decision-making practice for the purposes of interpreting EU law, the Courts of the European Union are not bound by a decision adopted in a Member State or a third country (see, to that effect, judgments of 12 November 2008, Lego Juris v OHIM – Mega Brands (Red Lego brick), T‑270/06, EU:T:2008:483, paragraph 91 and the case-law cited, and of 17 January 2019, Equity Cheque Capital Corporation v EUIPO (DIAMOND CARD), T‑91/18, not published, EU:T:2019:17, paragraph 48 and the case-law cited).

80 The Board of Appeal was therefore right in finding that the signs at issue are conceptually similar to a high degree.

81 In view of all of the foregoing considerations relating to the comparison of the signs, the Board of Appeal’s assessment that, in essence, the signs at issue are visually similar to an average degree, phonetically similar to a low degree and conceptually similar to a high degree must be upheld.

82 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).

83 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).

84 In the present case, after stating that the goods at issue were either identical or similar to a high and normal degree, that the earlier mark had an average degree of inherent distinctiveness and that the signs at issue were similar overall to an average degree, the Board of Appeal found that there was a likelihood of confusion, since the relevant public would recall the distinctive words in common ‘polo club’ and the concept of the game of polo conveyed by both of the signs at issue, which was unrelated to the goods at issue and was therefore surprising and original. Furthermore, it found that the differences were not able to outweigh the similarities stemming from the distinctive element in common, which reproduced the identical distinctive concept in those signs.

85 The Board of Appeal also stated that, even if the relevant public were to see the signs at issue as referring to a polo club which was in two different locations, it was possible that it would believe that the mark applied for was a sub-brand of the earlier mark, as in fashion-related sectors. Furthermore, it pointed out that the argument that that public was accustomed to seeing polo horses and riders did not prove that the concept of polo had a lower degree of distinctive character than that of the words ‘polo club’.

86 The applicant disputes the Board of Appeal’s analysis in that it submits that the Board of Appeal repeated its error relating to the conceptual similarity, in particular as regards the role of the place name in the understanding of the consumer, and ignored the lack of phonetic and visual similarities between the marks, which would have made it possible to rule out a likelihood of confusion. Furthermore, it submits that the conceptual distinction between two different clubs is, on its own, sufficient to eliminate a likelihood of confusion, since the relevant public will think that the goods come from competing polo clubs.

87 In addition, as regards other marks on the market, the applicant contends that the public is accustomed to polo club marks, such as the mark Polo Ralph Lauren, which is considered to be one of the most famous in the world, and will be able to distinguish between them, assuming that the place name does not do that already. According to the applicant, the Board of Appeal erred in rejecting that argument and in not considering the evidence which had been submitted regarding the existence of those marks.

89 In the present case, it must be borne in mind, first, as is clear from paragraphs 45 to 51 above, that the Board of Appeal did not make any error of assessment in finding that the goods at issue were, in part, identical and, in part, similar to a normal to high degree.

90 Secondly, as has been stated in paragraph 60 above, since the goods at issue are not directly connected with polo playing, the signs at issue have a normal to enhanced degree of distinctiveness with regard to those goods.

91 Thirdly, as is clear from paragraphs 36, 68 and 81 above, the signs at issue are characterised by an average degree of visual similarity, a low degree of phonetic similarity and a high degree of conceptual similarity. The Board of Appeal was therefore right in finding that the signs at issue were similar overall to an average degree.

92 Accordingly, given that the factors relevant to the assessment of whether there is a likelihood of confusion are interdependent, as has been stated in paragraph 82 above, the identity of the goods, coupled with the high degree of conceptual similarity between the signs at issue, is sufficient to conclude, in the present case, that there is a likelihood of confusion with regard to the goods at issue which have been held to be identical (see, to that effect, judgment of 18 February 2004, Koubi v OHIM – Flabesa (CONFORFLEX), T‑10/03, EU:T:2004:46, paragraph 58).

93 As regards the goods which have been held to be similar to an average to high degree, that factor, combined with the signs’ similarity – above all their conceptual similarity – and with the average degree of distinctiveness of the signs with regard to those goods, is sufficient to conclude, as the Board of Appeal found, that a likelihood of confusion cannot be excluded (see, to that effect, judgment of 10 November 2016, POLO CLUB SAINT-TROPEZ HARAS DE GASSIN, T‑67/15, not published, EU:T:2016:657, paragraph 88).

94 The applicant’s arguments are not capable of calling those findings into question.

95 In that connection, as regards the applicant’s argument that the conceptual distinction between two different clubs is, on its own, sufficient to eliminate a likelihood of confusion, it is sufficient to point out that it has been established in paragraphs 73 to 80 above that the Board of Appeal did not err in the assessment of the conceptual similarity.

96 As regards the applicant’s argument relating to the presence of other marks on the market between which the relevant public is accustomed to drawing a distinction, it must be borne in mind that, it is true that it cannot be entirely ruled out that, in some cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the adjudicating bodies of EUIPO have found to exist between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark has duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgments of 18 May 2011, Glenton España v OHIM – Polo/Lauren (POLO SANTA MARIA), T‑376/09, not published, EU:T:2011:225, paragraph 57 and the case-law cited, and of 18 September 2014, Herdade de S. Tiago II v OHIM – Polo/Lauren (V), T‑90/13, not published, EU:T:2014:778, paragraph 45 and the case-law cited).

97 In the present case, the mark Polo Ralph Lauren on which the applicant relies and the marks at issue are not identical. Furthermore, it has not proved that those marks coexisted or that that coexistence was based upon the absence of any likelihood of confusion.

98 It follows from all of the foregoing that the Board of Appeal was right in finding that, for the purposes of Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion between the marks at issue on the part of the relevant public could not be excluded.

99 Consequently, the second plea must also be rejected and the action must therefore be dismissed in its entirety.

100 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.

101 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) >> Greenwich Polo Club v EUIPO - Lifestyle Equities (GREENWICH POLO CLUB) (EU trade mark - Judgment) [2022] EUECJ T-437/21 (19 October 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T43721.html Cite as: [2022] EUECJ T-437/21, ECLI:EU:T:2022:643, EU:T:2022:643

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