Gappol Marzena Porczynska v EUIPO - Gap (ITM) ((EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-411/15 (04 October 2017)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark GAPPOL — Earlier EU word mark GAP — Cross-appeal — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Reputation — Unfair advantage taken of the distinctive character or reputation — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001))

PP Gappol Marzena Porczyńska, established in Łódź (Poland), represented by J. Gwiazdowska, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

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

Gap (ITM), Inc., established in San Francisco, California (United States), represented by M. Siciarek and J. Mrozowski, lawyers,

APPEAL against the decision of the First Board of Appeal of EUIPO of 13 May 2015 (Case R 686/2013-1), relating to opposition proceedings between Gap (ITM) and PP Gappol Marzena Porczyńska,

composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), judges,

having regard to the response of EUIPO lodged at the Court Registry on 5 November 2015,

having regard to the response of the intervener lodged at the Court Registry on 9 December 2015,

having regard to the written questions put by the Court to the applicant and EUIPO and their answers to those questions lodged at the Court Registry on 8 December 2016,

further to the hearing on 25 January 2017 in which the applicant did not take part,

1 On 6 June 2009, the applicant, PP Gappol Marzena Porczyńska, lodged 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 is sought are, in particular, in Classes 20 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, following the restrictions made during the proceedings before EUIPO, to the following description:

– Class 25: ‘Shirts (knitted and woven); T‑shirts; polo shirts; leggings; dresses; vests; jackets; pyjamas; body rompers; suits for children; skirts; sweaters; suits; trousers; underpants; caps; thermal clothing, namely shirts with long and short sleeves, jumpers, shorts, trousers, leggings, underpants, gym suits’.

4 The application for an EU trade mark was published in the Bulletin of Community Trade Marks No 64/2009 of 21 December 2009.

5 On 22 March 2010, the intervener, Gap (ITM), Inc., filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on various earlier word marks and figurative marks including the EU word mark ‘GAP’, filed on 1 April 1996 and registered on 27 May 2002 under number 27292 (‘the earlier mark’), in respect in particular of goods in Class 25 and corresponding to the following description: ‘Clothing, footwear, headgear’.

7 The grounds for opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).

8 On 11 February 2013, the Opposition Division partially upheld the opposition. It rejected the EU trade mark application at issue for the goods in Class 25.

9 On 12 April 2013, 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. It requested that that decision be annulled to the extent that the opposition had been upheld.

10 On 28 August 2013, the intervener submitted its observations and asked the Board of Appeal to confirm the Opposition Division’s decision in so far as it refused registration of the mark applied for. It further requested that the registration of that trade mark be refused for the goods in Class 20, namely those in respect of which the opposition had been rejected (‘the cross-appeal’).

11 By decision of 2 December 2013, EUIPO’s First Board of Appeal rejected the applicant’s appeal and upheld the intervener’s cross-appeal.

12 On 14 February 2014, the applicant brought an action before the General Court against the decision of the Board of Appeal of 2 December 2013. That application was registered at the Registry of the Court under reference T‑125/14.

13 On 30 May 2014, the First Board of Appeal revoked its decision of 2 December 2013 on the grounds that it had made a procedural error by failing to invite the applicant to submit observations on the intervener’s cross-appeal.

14 By letter from EUIPO of 15 July 2014, the Board of Appeal invited the applicant to file a reply, if any, in response to the intervener’s cross-appeal. The applicant did so on 16 October 2014.

15 By an order of 21 October 2014, the General Court (Fourth Chamber) ruled that there was no further need to adjudicate on the action brought by the applicant against the Board of Appeal’s decision of 2 December 2013.

16 By letter from EUIPO of 9 January 2015, the Board of Appeal invited the intervener to file its rejoinder, if any. The intervener did so on 9 February 2015.

17 By decision of 13 May 2015 (‘the contested decision’), the First Board of Appeal of EUIPO ruled again on the applicant’s appeal and on the intervener’s cross-appeal.

18 First, the Board of Appeal dismissed the applicant’s appeal and confirmed the Opposition Division’s decision to the extent that it had rejected the application for registration of the EU trade mark at issue in respect of all the goods in Class 25. In particular, it confirmed the Opposition Division’s finding that the signs at issue were similar and that the conflicting goods in Class 25 were identical. Accordingly, it concluded that, pursuant to Article 8(1)(b) of Regulation No 207/2009, there was a likelihood of confusion between the signs at issue on the part of the public in the relevant territory for the goods in Class 25.

19 Secondly, the Board of Appeal upheld the intervener’s cross-appeal and rejected the application for registration of the goods in Class 20 pursuant to Article 8(5) of Regulation No 207/2009. In that context, the Board found that the signs at issue were visually and phonetically similar. It also confirmed the Opposition Division’s finding that the evidence submitted by the intervener demonstrated that the earlier mark had acquired a reputation in the United Kingdom in connection with ‘clothing’. In addition, the Board of Appeal found that the mark applied for was likely to take unfair advantage of the earlier mark’s repute. According to the applicant, the intervener’s statements were sufficient to prove that the applicant was effectively attempting to ride on the coat‑tails of the mark with a reputation in order to benefit from the attractiveness, repute and prestige of that mark and to exploit, without financial compensation, the commercial effort expended by the proprietor of the mark to create and maintain the mark’s image. The Board of Appeal therefore took the view that it was probable that the use of the mark applied for would give the applicant an advantage in the marketing of its own goods, in the sense that it could benefit from the reputation and image associated with the earlier mark in order to enhance sales of its own goods.

– give a final decision by amending the contested decision by rejecting the opposition, including in relation to the goods in Classes 20 and 25;

– order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal and the Opposition Division.

22 The applicant submits five pleas in law in support of its action. The first plea alleges infringement of Article 59 and Article 64(1) of Regulation No 207/2009 (now Articles 67 and 71(1) of Regulation 2017/1001). The second plea alleges infringement of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) and of Rule 50(2)(h) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1994 L 303, p. 1) (now Article 32(i) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)). The third plea alleges infringement of Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001) and of Rule 50(2)(g) of Regulation No 2868/95 (now Article 32(h) of Delegated Regulation 2017/1430). The fourth plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and the fifth alleges infringement of Article 8(5) and, in essence, Article 9(2)(c) of Regulation No 207/2009 (now Article 9(2)(c) of Regulation 2017/1001) and of Rule 19(2)(c) of Regulation No 2868/95 (now Article 7(2)(f) of Delegated Regulation 2017/1430).

23 With respect to the order in which those pleas should be dealt with, it is appropriate to begin with the first plea, and to continue with the fourth followed by the second, third and fifth pleas in law.

The first plea, alleging infringement of Articles 59 and 64(1) of Regulation No 207/2009

24 The applicant submits, first, that the Board of Appeal put the applicant in a position which was less advantageous than the one it was in before filing the appeal. The Board of Appeal therefore committed a reformatio in peius in relation to the decision of the Opposition Division, which is prohibited by Article 59 of Regulation No 207/2009.

25 The applicant submits, secondly, that the Board of Appeal exceeded the bounds of its jurisdiction, as defined in Article 64(1) of Regulation No 207/2009, in so far as it set aside one of the points of the operative part of the decision of the Opposition Division, in which the Opposition Division ruled in favour of allowing registration of the mark applied for in respect of the goods not referred to in the appeal brought by the applicant before the Board of Appeal.

27 In the present case, it is necessary to ascertain, in essence, whether the Board of Appeal was entitled to examine, in the contested decision, the intervener’s cross-appeal, relating to issues not raised in the appeal brought by the applicant before the Board.

28 In that regard, first of all, it should be recalled that it follows from Article 64(1) of Regulation No 207/2009 that, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the contested decision’, that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be unfounded, thereby either upholding or reversing the contested decision. As the Court of Justice held in its judgment of 13 March 2007, OHIM v Kaul (C‑29/05 P, EU:C:2007:162, paragraph 57), it follows from that provision that the effect of the appeal brought before it is that the Board of Appeal is called upon to carry out a full re-examination of the merits of the opposition, both in fact and in law.

29 Secondly, it should be pointed out that, under the first sentence of Article 59 of Regulation No 207/2009 (now the first sentence of Article 67 of Regulation 2017/1001), parties to proceedings before EUIPO may appeal to the Board of Appeal against a decision taken by a lower department of EUIPO only in so far as that decision has rejected their claims or applications (see, to that effect, judgment of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 38 and the case-law cited).

30 Thirdly, it should be recalled that Article 8(3) of Commission Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 11) provides that:

‘In inter partes proceedings, the defendant may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. Such submissions shall cease to have effect should the appellant discontinue the proceedings.’

31 It follows that, in proceedings before the Board of Appeal, the defendant before the Board may, in its submissions, exercise its right to challenge the contested decision; simply by virtue of its status as a defendant, it is allowed to challenge the validity of the Opposition Division’s decision (see, to that effect, judgment of 7 April 2011, Intesa Sanpaolo v OHIM — MIP Metro (COMIT), T‑84/08, EU:T:2011:144, paragraph 23).

32 Nor does Article 8(3) of Regulation No 216/96 limit that right to the pleas in law already raised in the appeal before the Board of Appeal and explicitly provides that the claims at issue concern a point not raised in the appeal (see, to that effect, judgment of 7 April 2011, COMIT, T‑84/08, EU:T:2011:144, paragraph 23).

33 Consequently, it is clear from a reading of Article 64(1) of Regulation No 207/2009 in conjunction with the first sentence of Article 59 of that regulation and Article 8(3) of Regulation No 216/96 that the context of the dispute before the Board of Appeal concerning a decision of the Opposition Division is to be determined both by the action brought before it and by the submissions made pursuant to Article 8(3) of Regulation No 216/96, that is to say, the cross-appeal.

34 It follows that the Board of Appeal was correct to examine the intervener’s cross-appeal and to re-examine the merits of the opposition in the light of the submissions made by the applicant in its appeal and, furthermore, of those made by the intervener in the cross-appeal.

35 Accordingly, the Board of Appeal, in examining the cross-appeal, did not exceed the limits of its jurisdiction.

36 Furthermore, the applicant cannot argue that the Board of Appeal adopted a reformatio in peius, since, in rejecting the application for registration for the goods in Class 20, it only granted the applicant’s cross-appeal, it being specified that, in order to avoid such a decision, the applicant could have withdrawn its appeal before the Board, which would have rendered the intervener’s cross-appeal devoid of purpose under Article 8(3) of Regulation No 216/96.

37 In those circumstances, the plea alleging infringement of Article 59 and Article 64(1) of Regulation No 207/2009 must be rejected.

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

38 In its fourth plea, the applicant submits, in essence, that the Board of Appeal carried out a flawed comparative analysis of the signs at issue and failed to take account of certain factors in the assessment of the likelihood of confusion, with the result that its conclusion that there is a likelihood of confusion between the marks at issue in respect of goods in Class 25 within the meaning of Article 8(1)(b) of Regulation No 207/2009 is incorrect.

39 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.

40 According to settled case-law, the risk that the public might 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 that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services (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).

41 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).

42 When the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).

43 It is in the light of the foregoing considerations that it is appropriate to consider whether there is in the present case a likelihood of confusion, such as the Board of Appeal found there was between the mark applied for and the earlier mark.

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

45 As regards the relevant public, the Board of Appeal found that the goods in question were ordinary consumer goods which were bought by the general public. It also stated that consumers of those goods generally had an average level of attention, although they were likely to be more careful in so far as the goods in question could fall into a higher price category. The Board of Appeal also held that, in view of the fact that the earlier mark was an EU trade mark, in order to assess the existence of the likelihood of confusion, EU consumers’ perception was relevant, and that it was sufficient that there was a likelihood of confusion for the public of a Member State.

46 As regards goods in Class 25, those assessments must be upheld and, moreover, are not disputed by the applicant.

47 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, 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 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

48 In the present case, the Board of Appeal, correctly and, furthermore, without it being challenged by the applicant, upheld the Opposition Division’s finding that the goods in Class 25, for which registration of the mark applied for had been sought (see paragraph 3 above), were identical to the goods ‘clothing, footwear, headgear’, falling within that class, for which the earlier trade mark had been registered, inasmuch as the goods covered by the mark applied for were included in those covered by the earlier mark. The reference, in paragraph 56 of the contested decision, to goods which were no longer claimed by the applicant following the restriction of the initial list of goods covered during the proceedings before the Opposition Division is irrelevant, since it is apparent, at least implicitly, from paragraph 57 of that decision, that the goods in question were not taken into consideration by the Board of Appeal. Moreover, those goods are not mentioned in the decision of the Opposition Division, whose conclusion concerning the comparison of the goods in Class 25 was confirmed by the Board of Appeal.

49 Furthermore, as regards the applicant’s argument relating to the structure of the analysis carried out by the Board of Appeal in the contested decision and, more specifically, to the fact that the similarity of the signs at issue was examined before the similarity of the goods, suffice it to note that it is not apparent, either from the wording of Article 8(1)(b) of Regulation No 207/2009 or from the case-law, that the factors to be taken into account, in the context of the assessment of the likelihood of confusion between the earlier mark and the mark applied for, should be assessed in a specific order. That line of argument cannot therefore be upheld and must be rejected.

50 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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 that 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).

51 According to case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).

52 Moreover, 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 at issue as a whole, which does not preclude the overall impression conveyed to the relevant public by a composite trade mark being, in certain circumstances, 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 43). 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 remember, with the result that all the other components of the mark are negligible in the overall impression which it creates (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

53 In the present case, the Board of Appeal compared the figurative mark applied for, GAPPOL, on the one hand, and the earlier word mark, GAP, on the other.

54 As regards the visual comparison between the signs at issue, the Board of Appeal first found, in paragraphs 47 and 48 of the contested decision, that the mark applied for had a binary structure because of its graphic representation and that it could therefore easily be divided into two terms, the first being ‘gap’, written in black capital letters, and the second ‘pol’, written in white on a blue background with a shape similar to a rectangle. It then found that the term ‘gap’ dominated the visual impression produced by the mark applied for, since it came first and was easily legible in black, and that therefore the ‘gap’ element retained a distinctive autonomous position within the mark applied for, without by itself determining the overall impression of the compound sign. Finally, it concluded that the signs at issue were visually similar in that they had in common the word element ‘gap’, which was the earlier mark, and differed at the level of the additional word element ‘pol’, specific to the mark applied for.

55 The applicant submits that the Board of Appeal’s analysis of the visual similarity of the signs at issue was incorrect. According to the applicant, the Board of Appeal focused only on one element of the mark applied for, as a result of which the signs at issue were not compared as a whole. Furthermore, the applicant disputes, in essence, the fact that the trade mark applied for is dominated by the ‘gap’ element and that the other elements may be regarded as negligible. The applicant also maintains that the Board of Appeal did not determine the degree of similarity between the signs at issue when compared as a whole.

57 First of all, as regards the degree of similarity, it must be held that, contrary to the applicant’s assertion, the Board of Appeal did determine sufficiently clearly in the contested decision the degree of visual similarity between the signs at issue. By stating, on the one hand, that those signs were similar, inasmuch as they had in common the word element ‘gap’, which constituted the earlier mark and the first component of the mark applied for, and differed at the level of the word element ‘pol’ (see paragraph 48 of the contested decision), and, on the other, that those signs produced a general impression of similarity (paragraph 52 of the contested decision), the Board of Appeal implicitly, but necessarily, acknowledged that the signs at issue were, at the very least, visually similar to an average degree.

58 Secondly, as regards the applicant’s complaint that the Board of Appeal failed to make an overall assessment of the signs at issue and calling into question the dominant character of the ‘gap’ element, it should be noted that the Board of Appeal did not focus exclusively on the ‘gap’ element as part of the comparison of the signs at issue and did not consider the other elements of the mark applied for to be negligible.

59 It is clear, in particular, from paragraphs 47 and 48 of the contested decision (see paragraph 54 above) that the Board of Appeal took into account not only the ‘gap’ element but also the ‘pol’ element, specific to the trade mark applied for, as well as the graphical representation thereof. It follows that the Board of Appeal, while referring to the dominant character of the ‘gap’ element, did not regard as negligible the other elements composing the trade mark applied for in the context of its analysis. This is also apparent from paragraph 52 of the contested decision, in which the Board of Appeal made explicit reference to the differences between the signs at issue.

60 The applicant’s complaint must therefore be rejected, since it is based on an erroneous reading of the contested decision.

61 Thirdly, as regards the question whether there is any visual similarity between the signs at issue, it should first be noted that the figurative mark applied for consists, as stated by the applicant, of six letters and two syllables. The first syllable, ‘gap’, is written in black letters and presented on a white background; the second, ‘pol’, is written in white on a blue background with a shape similar to a rectangle. In contrast, the earlier word mark consists only of the word ‘gap’.

62 It follows that the signs at issue have in common the term ‘gap’, which constitutes the earlier mark and is at the beginning of the mark applied for. The signs at issue are therefore identical in part, which the applicant does not dispute.

63 In that context, it must be borne in mind that, according to settled case-law, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgment of 28 April 2016, Fon Wireless v EUIPO — Henniger (Neofon), T‑777/14, not published, EU:T:2016:253, paragraph 37 and the case-law cited).

64 It should also be recalled that, according to case-law, consumers in general pay more attention to the first part of a mark than to the ending (see judgment of 19 May 2011, PJ Hungary v OHIM — Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 77 and the case-law cited).

65 Furthermore, as the Board of Appeal rightly held in paragraph 47 of the contested decision, the relevant public will break down the GAPPOL sign into two parts, ‘gap’ and ‘pol’, because of their depiction in letters of various colours and backgrounds of various colours, as recalled in paragraph 61 above.

66 Consequently, the signs at issue may be regarded as being of at least average visual similarity.

67 That conclusion is not called into question by the other arguments submitted by the applicant.

68 First, as regards the applicant’s argument that the Board of Appeal did not take account of the specific features of the use of trade marks on clothing or of the method for affixing thereto the trade mark applied for, whether by stitching or using woven labels, it is sufficient to point out that it is settled case-law that the examination of the similarity of the signs at issue takes account of those signs as a whole, as they are registered or applied for (see judgment of 9 March 2012, EyeSense v OHIM — Osypka Medical (ISENSE), T‑207/11, not published, EU:T:2012:121, paragraph 26 and the case-law cited). Therefore, it is not necessary to take account, for the purpose of examining the similarity of the signs at issue, of the fact that the trade mark applied for may be affixed to dark garments or woven labels or of the possible resulting visual effects for the ‘pol’ element.

69 Second, as regards the applicant’s arguments based on the graphic representation of the mark applied for, it is important to note that the figurative elements of that mark are not likely to limit the similarities between the signs at issue. The characters used, and the blue frame similar to a rectangle in which the word element ‘pol’, which is specific to the mark applied for, is incorporated, are banal, and the frame in question serves only to highlight that verbal element.

70 Third, as regards the ‘pol’ element, which is certainly not negligible for the purposes of the comparison of the signs at issue, it is sufficient to note that it does not mitigate the visual similarity identified by the Board of Appeal between the signs at issue. The relevant public, having regard to the position and the graphic representation of that element, will not attribute more weight to that element than to the ‘gap’ element, which constitutes the earlier mark and the first component of the mark applied for. Furthermore, the ‘pol’ element is not more distinctive than the ‘gap’ element, and, moreover, the applicant does not even allege this.

71 It must therefore be concluded that the signs at issue, taken as a whole, must be regarded as being of at least average visual similarity, as the Board of Appeal in essence pointed out.

72 As regards the phonetic comparison, the Board of Appeal stated in paragraph 49 of the contested decision that the marks at issue coincided in the word ‘gap’, which constituted both the earlier mark and the dominant element of the mark applied for, and that those marks were identical to that extent. It also stated that the pronunciation differed at the level of the letters ‘p’, ‘o’ and ‘l’, specific to the mark applied for.

73 In that regard, the applicant submits that the signs are phonetically different. It criticises the Board of Appeal for not having determined the degree of similarity between the signs at issue and, by focusing on the ‘gap’ element, for not having carried out an overall phonetic analysis of those signs. It further states that the earlier mark is monosyllabic, whereas the mark applied for is a sign twice as long, consisting of two syllables, which is distinct from the earlier mark by rhythm and intonation. Moreover, the mark applied for is sufficiently short to be pronounced as a whole.

75 First of all, it is apparent from paragraph 49 of the contested decision that the Board of Appeal, in stating that ‘[t]he pronunciation differs in the sound of the letters “[pol]”’, took account of the ‘pol’ element, which is specific to the mark applied for, in the context of its assessment of the phonetic similarity of the signs at issue. Accordingly, contrary to what the applicant submits, the Board of Appeal did not focus exclusively on the ‘gap’ element as part of its analysis and did not regard as negligible the other element of which the mark applied for consists. This is also apparent from paragraph 52 of the contested decision, in which the Board of Appeal referred to the differences between the signs at issue.

76 Secondly, as regards the degree of similarity, it is admittedly true that the Board of Appeal did not expressly identify the degree of phonetic similarity between the signs at issue. It merely held that the signs were partially identical and produced a general impression of similarity (paragraphs 49 and 52 of the contested decision). However, it must be pointed out that, by its findings, it implicitly, but necessarily, acknowledged that the signs at issue were, at the very least, similar to an average degree.

77 Thirdly, it must be held that the Board of Appeal did not err in finding that there was a phonetic similarity between the signs at issue.

78 First, the mark applied for and the earlier mark are partially identical, inasmuch as the ‘gap’ element, which is pronounced in the same way, is common to both marks.

79 Second, the common element ‘gap’ corresponds to the earlier mark and is placed in the first position of the mark applied for. On the phonetic level, consumers generally pay greater attention to the beginning of a mark than to the ending, since the first part of a trademark normally has a greater impact than the final part (see, to that effect, judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraph 36 and the case-law cited).

80 Third, in those circumstances, the phonetic difference between the two signs at issue, resulting from the addition of a second syllable, ‘pol’, in the mark applied for, is not sufficient to overcome the phonetic similarity between the signs at issue taken as a whole. It has already been held that the fact that the number of syllables is different is not sufficient to conclude that there is no phonetic similarity between the signs at issue (see, to that effect, judgment of 19 May 2011, PEPEQUILLO, T‑580/08, EU:T:2011:227, paragraph 79 and the case-law cited). In the present case, the first syllable of the signs at issue is identical and it is not disputed that it is pronounced in the same way.

81 Fourth, the fact that the Board of Appeal referred in paragraph 49 of the contested decision to the dominant character of the term ‘gap’ within the mark applied for does not invalidate its assessment of the phonetic similarity of the signs at issue.

82 As EUIPO points out, the board did not draw any specific conclusions from that finding in the context of its analysis of phonetic similarity. In any event, as already stated in paragraph 75 above, the Board of Appeal did not consider that the other component of the trade mark applied for was phonetically negligible.

83 In those circumstances, the Board of Appeal correctly held that the signs at issue, taken as a whole, are in substance phonetically similar at least to an average degree, inasmuch as they coincide in the element ‘gap’, which constitutes the earlier mark and the initial part of the mark applied for, which is half of that mark.

84 As to the conceptual comparison, the Board of Appeal stated at paragraph 50 of the contested decision that the word ‘gap’, which is common to both signs, in particular meant ‘a space between two things’ in English and referred to the concept of ‘open mouth’ in Swedish. It also stated that that word had no meaning with respect to the goods at issue. Moreover, it found that the additional element ‘pol’, which is specific to the mark applied for, had no meaning and that, therefore, the mark was meaningless as a whole, irrespective of whether the relevant public had knowledge of English. It further stated that the term ‘pol’ could be an indication of origin, namely Poland, at least for part of the public which speaks Polish.

85 For the remaining part of the public who do not understand English, Swedish or Polish, the Board of Appeal considered that the signs were meaningless and that therefore the conceptual comparison did not influence the assessment of the similarity between the signs for those consumers (paragraph 51 of the contested decision).

86 The applicant submits that the Board of Appeal incorrectly held that the conceptual comparison did not influence the assessment of the similarity of the signs at issue. In its view, they are conceptually different. It argues in that context that the word ‘gap’ has a precise meaning in English and Swedish. In contrast, the word ‘gappol’ is a whimsical and meaningless word, created from the word ‘gapa’, which in Polish refers to an awkward and clumsy person. Moreover, that term refers in particular to the applicant’s dog.

88 In that regard, it should be noted, first, that the Board of Appeal rightly pointed out that, for the relevant section of the public which did not understand English, Swedish or Polish, the signs at issue were devoid of meaning. Consequently, for that part of the relevant public, the signs at issue have no conceptual content, as a result of which no comparison of them is possible from that point of view.

89 Secondly, as regards the part of the public which understands English or Swedish, it is appropriate to uphold the Board of Appeal’s analysis, which is not, moreover, called into question by the applicant, that the word ‘gap’, which is common to both signs, means, in particular, ‘a space between two things’ in English and ‘open mouth’ in Swedish, and that the additional ‘pol’ element, which is specific to the mark applied for, has no meaning. It is also appropriate to agree with the Board’s assessment that the mark applied for, taken as a whole, is meaningless, which is what the applicant also argues.

90 In that context, it should be pointed out that although, as a general rule, the average consumer normally perceives a mark as a whole and does not proceed to analyse the various details thereof, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, have a concrete meaning or which resemble words known to him (see judgment of 6 June 2013, McNeil v OHIM — Alkalon (NICORONO), T‑580/11, not published, EU:T:2013:301, paragraph 41 and the case-law cited).

91 It follows, in the present case, that the relevant public, which understands English or Swedish, will be able, in view of the meaning of the word ‘gap’, to distinguish that element in the mark applied for and to perceive that mark as being composed of the verbal elements ‘gap’ and ‘pol’.

92 Furthermore, it should be noted that only the word ‘gap’ has a clear meaning for that public (see paragraph 89 above), without being descriptive of the goods in question, and that the element ‘pol’ is meaningless to that public.

93 Accordingly, in so far as the signs at issue coincide in the element ‘gap’, in which the earlier mark consists, the mark applied for also contains the concept which may be attributed to the word ‘gap’. Consequently, for the part of the public which understands English or Swedish, the signs at issue have a certain conceptual similarity.

94 Thirdly, as regards the applicant’s argument alleging a possible concept which may be associated with the mark applied for in Polish, it is sufficient to note that the issue is, in the light of the finding in paragraph 93 above, irrelevant, since, in order to assess the likelihood of confusion between the signs at issue, European Union consumers’ perception is relevant, and that it is sufficient that there is a likelihood of confusion for the public of a Member State (see paragraphs 45 and 46 above). It follows that the argument is, irrespective of whether a concept can be attributed to the earlier mark in Polish, immaterial.

95 It follows that, conceptually, there is a certain similarity between the signs at issue for the part of the relevant public which understands English or Swedish. Furthermore, any conceptual differences between the signs in Polish, even if established, are irrelevant for the purposes of examining the likelihood of confusion. Finally, the conceptual comparison does not affect the comparison of the signs at issue for the part of the public which does not understand English, Swedish or Polish.

96 In the light of all the foregoing observations on the comparison of the signs at issue, it must be held that the Board of Appeal correctly held, in paragraph 52 of the contested decision, that they produced a general impression of similarity.

97 Moreover, contrary to what the applicant submits, that conclusion of the Board of Appeal is sufficiently precise to make it possible to understand, in the light of the explanations given in paragraphs 47 to 51 of the contested decision, the degree of visual, phonetic and conceptual similarity between the signs at issue noted by the Board.

98 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

99 The Board of Appeal held that, in view of the fact that the goods in question falling within Class 25 were identical and of the similarity between the signs at issue, there was a likelihood of confusion between the latter in respect of those goods. The fact that the earlier mark was both included in the trade mark applied for and shared the most visible part thereof was sufficient in order to conclude that the signs at issue produced an overall impression of similarity. Furthermore, it stated that, in view of the identity of the goods at issue falling within Class 25 and the similarity between the signs at issue, the differences between those signs were not sufficient to eliminate the likelihood that the relevant public could believe that the goods originated from the same undertaking or from economically-linked undertakings. It also found that, in so far as the goods concerned fell within that category, the marks at issue could be regarded as sub-brands and consumers would most probably associate them with the same undertaking, or at least with related undertakings.

100 The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue. In its view, the similarity between the signs was established wrongfully and several important factors were not taken into consideration. It also disputes the fact that the ‘gap’ element is dominant in the mark applied for. In addition, it criticises the Board of Appeal, in essence, for not having taken account of the national decisions in proceedings between the applicant and the intervener.

102 It should be borne in mind that the goods in question falling within Class 25 are identical and that the signs at issue, taken as a whole, are visually and phonetically similar to an average degree. Moreover, there is a certain conceptual similarity between the signs at issue for that part of the relevant public which understands English or Swedish.

103 Taking into account also the fact that the average consumer only rarely has the opportunity to carry out a direct comparison of the various trade marks but must rely on his imperfect mental image of them (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26), the Board of Appeal did not err in holding that the overall impression given by the mark applied for could lead the relevant public to believe that the goods in Class 25 came from the same undertaking or, at the very least, from an undertaking economically linked to the proprietor of the earlier trade mark, which was sufficient in order to conclude that there was a likelihood of confusion between the signs at issue in respect of the goods covered by the trade mark applied for falling within Class 25.

104 Furthermore, it should be noted that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common in that sector for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another (see, to that effect, judgment 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 51). Accordingly, the Board of Appeal’s finding that it is probable that consumers will perceive the mark applied for in respect of goods falling within the category ‘clothing’ as a complementary or different collection of the earlier mark may be approved.

105 The conclusion that there is a likelihood of confusion between the earlier mark and the mark applied for is not called into question by the arguments put forward by the applicant.

106 First, as regards the alleged errors made by the Board of Appeal in the comparison of the signs, it should be pointed out that such arguments have already been examined and, therefore, are not such as to call into question the conclusions drawn in that regard in paragraphs 54 to 96 above.

107 Secondly, as regards the applicant’s arguments based, essentially, on the proceedings between the applicant and the intervener in Poland, they should be rejected. According to case-law, the EU trade mark regime is an autonomous system with its own set of objectives and rules specific to it; its application is independent of any national system and the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union judicature (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 36).

108 Thirdly and lastly, as regards the applicant’s other arguments seeking to establish that the Board of Appeal erred in its assessment of the likelihood of confusion, it is sufficient to state that they are not set out in a sufficiently precise and intelligible manner such as to enable the General Court to carry out a review. They must therefore be rejected as inadmissible pursuant to Article 177(1)(d) of the Rules of Procedure of the General Court.

The second plea, alleging infringement of Article 75 of Regulation No 207/2009 and Rule 50(2)(h) of Regulation No 2868/95, and the third plea, alleging infringement of Article 76 of Regulation No 207/2009 and Rule 50(2)(g) of Regulation No 2868/95

110 By its second plea, the applicant submits that the contested decision does not state sufficient reasons and is incoherent and contradictory, in breach of Article 75 of Regulation No 207/2009 and of Rule 50(2)(h) of Regulation No 2868/95. The applicant submits, in essence, that the Board of Appeal did not give sufficient reasons in law for its finding that there was no due cause for the applicant’s use of the mark applied for, within the meaning of Article 8(5) of Regulation No 207/2009. In addition, the applicant maintains that the Board of Appeal made contradictory findings in respect of ‘furniture’ goods in Class 20 and ‘clothing, footwear, headwear’ goods in Class 25.

111 In the third plea, which formally alleges infringement of Article 76 of Regulation No 207/2009 and Rule 50(2)(g) of Regulation No 2868/95, the applicant claims that the Board of Appeal, in essence, on the one hand, did not give sufficient legal reasons for its finding that the earlier mark had acquired a reputation in the United Kingdom for ‘clothing’ goods and, on the other hand, that it did not take a position in the contested decision on the intervener’s claim, made in the proceedings before that Board, that the decisions of the Urząd Patentowy Rzeczypospolitej Polskiej (the Polish Patent Office) relied on by the applicant were not produced by the applicant during the appeal proceedings.

113 The Court takes the view that the second and third pleas in law must be examined together, on the ground that they both relate in substance to a breach of the obligation to state reasons by the Board of Appeal.

114 The first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94(1) of Regulation 2017/1001), provides that decisions of EUIPO are to state the reasons on which they are based. Rule 50(2)(h) of Regulation No 2868/95 confirms that obligation.

115 According to settled case-law, that obligation has the same scope as that laid down in Article 296 TFEU. The statement of reasons required by that article must set out clearly and unequivocally the reasoning of the body which adopted the act in question. The purpose of that obligation is twofold: first, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and, second, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 42 and the case-law cited).

116 In the present case, first, as regards the applicant’s complaint that the Board of Appeal did not specify the reasons why it dismissed its arguments and evidence seeking to establish, within the meaning of Article 8(5) of Regulation No 207/2009, that it had due cause for the use of the trade mark applied for, it must be held that that complaint cannot be upheld.

117 It is true that the wording of paragraph 97 of the contested decision could be interpreted as meaning that the applicant did not put forward any arguments in support of its claim of due cause for the use of the mark applied for. That fact is not, however, sufficient to permit the conclusion that the applicant was unable to understand the reasoning of the Board as regards the rejection of the arguments which it put forward in that regard during the proceedings before the Opposition Division and the Board of Appeal.

118 As correctly noted by EUIPO and the intervener, it is apparent from paragraphs 99 to 104 of the contested decision that the Board of Appeal, on the one hand, took a position, as part of the examination of the requirements governing the application of Article 8(5) of Regulation No 207/2009, on the arguments and evidence submitted by the applicant to EUIPO for the purpose of establishing the existence of due cause for the use of the mark applied for and, on the other, explained the reasons why the arguments and evidence were irrelevant in the present case. More specifically, as is apparent from paragraph 99 of the contested decision, the Board of Appeal took a position on the arguments concerning the economic and political situation in Poland in 1991, the fact that the applicant was the proprietor of an earlier right in Poland, the alleged coexistence of the trademarks in Poland, the documents relating to the history of the origins of the GAPPOL name in Poland, the diplomas and documents relating to a dog named ‘Lena/Lora Mala Gapa’, an agreement concluded in Poland in 2004 between GAPPOL and another company as well as two decisions of the Polish Patent Office.

119 Furthermore, as regards the decisions of the Polish Patent Office relied on by the applicant, the Board of Appeal held, in paragraph 89 of the contested decision, read in conjunction with paragraph 69 of that decision, that EUIPO was not bound by those decisions on the ground that the EU trade mark regime is an autonomous system which applies independently of any national system.

120 It should also be noted that the applicant did not specify the arguments or evidence submitted for the purpose of demonstrating the existence of due cause, under Article 8(5) of Regulation No 207/2009, for the use of the mark applied for, on which the Board of Appeal did not take a position in the contested decision. Even assuming that the Board of Appeal failed to rule on certain arguments or evidence relied on by the applicant, it is sufficient to point out that the Boards of Appeal are not obliged, in stating the reasons for the decisions which they may adopt, to take a view on all the arguments which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 2 December 2015, Kenzo v OHIM — Tsujimoto (KENZO ESTATE), T‑528/13, not published, EU:T:2015:921, paragraph 22 and the case-law cited), which is the case here in respect of the existence of due cause under Article 8(5) of Regulation No 207/2009 for the use of the mark applied for (see paragraphs 118 and 119 above).

121 Thus, contrary to the applicant’s submissions, it must be held that the applicant was able to understand the reasons why the arguments and evidence relating to the existence of due cause for the use of the mark applied for were not upheld by the Board of Appeal and it may not, therefore, criticise the Board of Appeal for failing to give reasons for the contested decision in that regard.

122 Secondly, as regards the applicant’s complaint that the contested decision contains contradictory findings with regard to the assessments of the ‘furniture’ goods, falling within Class 20, and the ‘clothing, footwear, headwear’ goods, falling within Class 25, it must be borne in mind first of all that the statement of the reasons for a measure must be logical and contain no internal inconsistency that would prevent a proper understanding of the reasons underlying the measure (see, to that effect, judgment of 21 January 2016, BR IP Holder v OHIM — Greyleg Investments (HOKEY POKEY), T‑62/14, not published, EU:T:2016:23, paragraph 30 and the case-law cited).

123 Next, it is apparent from paragraphs 61 and 62 of the contested decision that the Board of Appeal found, as part of the assessment of the similarity between the goods concerned for the purposes of the examination carried out under Article 8(1)(b) of Regulation No 207/2009, that ‘furniture’ goods falling within Class 20 and covered by the trade mark applied for were different from ‘clothing, footwear, headgear’ goods, falling within Class 25 and covered by the earlier mark. It stated, in that regard, that it was highly unlikely that those goods would be manufactured by the same undertakings. It further stated that they did not belong to the same product market, or even to neighbouring product markets, that they did not have the same purpose or use, and that they were neither complementary nor in competition with one another. It concluded that the relevant consumers would not assume that those goods were being sold by the same undertaking or by related undertakings.

124 Lastly, it is apparent from paragraphs 88 to 95 of the contested decision that the Board of Appeal held, in examining the requirements governing the application of Article 8(5) of Regulation No 207/2009, that the arguments put forward by the intervener were sufficient to prove that the applicant, through the use of the trade mark applied for in respect of ‘furniture’, falling within Class 20, was attempting to ride on the coat‑tails of the well-known mark, which had acquired a reputation in the United Kingdom in respect of ‘clothing’, falling within Class 25, in order to benefit from it in order to promote the sale of its own goods, because of the transfer of the positive association with the image of the earlier mark.

125 As regards the nature and degree of proximity of the goods concerned, the Board of Appeal upheld, in paragraph 90 of the contested decision, the intervener’s argument that several reputable trade marks had extended their range from clothing to furniture under the same trade mark. It also upheld, in paragraph 91 of the contested decision, the intervener’s argument that the earlier mark would transfer onto ‘furniture’ goods, falling within Class 20 and covered by the trade mark applied for, positive associations attributed to ‘clothing’ for which the earlier mark had acquired a reputation. The intervener had stated that renowned fashion designers were designing collections of interior furniture and that renowned fashion brands were extending their range of collections to interior decoration accessories.

126 In that regard, it should be noted that the statement of reasons for the contested decision relating to ‘furniture’ and ‘clothing’ does not contain an inherent contradiction impeding a proper understanding of the reasons underlying the contested decision.

127 The conclusion drawn in paragraphs 61 and 62 of the contested decision and relating to the fact that those goods are different is clearly based on considerations made in the context of the assessment of the likelihood of confusion of the signs in question pursuant to Article 8(1)(b) of Regulation No 207/2009. In contrast, the assessments concerning the goods in question, in particular in paragraphs 90 and 91 of the contested decision, are based on an analysis carried out by the Board of Appeal when examining the conditions set out in Article 8(5) of Regulation No 207/2009, and in particular the question whether the mark applied for was capable of taking unfair advantage of the repute of the earlier mark in respect of goods which were not similar to those covered by that mark. Given the fact that the scope and requirements governing the application of those provisions are different and the fact that the Board of Appeal’s reasoning is sufficiently clear, the applicant cannot maintain that the grounds for the contested decision are contradictory and that the latter infringes the requirements relating to the obligation to state reasons.

128 Thirdly, as regards the applicant’s complaint that, in essence, the Board of Appeal did not give sufficient legal reasons for its conclusion on the reputation acquired by the earlier mark in the United Kingdom for ‘clothing’, it should be recalled that the question whether a statement of reasons satisfies those requirements must be assessed with reference not only to its wording but also to its context and the entire body of legal rules governing the matter in question (see, to that effect, judgment of 13 December 2011, Meica v OHIM — Bösinger Fleischwaren (Schinken King), T‑61/09, not published, EU:T:2011:733, paragraph 18 and the case-law cited).

129 In addition, when the Board of Appeal confirms some aspects of a decision of the Opposition Division, and given the continuity in terms of function between the Opposition Divisions and the Boards of Appeal, to which Article 64(1) of Regulation No 207/2009 attests, that decision, together with the statement of reasons pertaining to those aspects, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and enables the Court to carry out fully its review as to whether the Board of Appeal’s assessment was well founded (see judgment 25 October 2012, riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, paragraph 19 and the case-law cited).

130 In the present case, it should be noted that, in paragraph 78 of the contested decision, the Board of Appeal confirmed the Opposition Division’s conclusion concerning the reputation of the earlier mark. Furthermore, in paragraphs 79 and 80 of the contested decision, the Board of Appeal took a view on the applicant’s argument that the Opposition Division erred in its assessment of the evidence presented by the intervener in relation to the reputation of the earlier mark.

131 In addition, the Opposition Division stated the reasons and the evidence on the basis of which it reached the conclusion that the earlier mark had acquired a reputation in the United Kingdom for ‘clothing’. It should further be stated that a description of that evidence is also set out in paragraph 5 of the contested decision.

132 Accordingly, having regard to the case-law referred to in paragraphs 120, 128 and 129 above, the applicant’s complaint cannot be upheld, since, as EUIPO correctly points out, on the basis of the explanations given in paragraphs 5 and 78 to 80 of the contested decision and those set out in the decision of the Opposition Division, the applicant is in a position to understand the grounds underpinning the Board of Appeal’s conclusion on the reputation of the earlier mark.

133 Fourthly, as regards the applicant’s argument that the Board of Appeal did not take a position in the contested decision on the intervener’s complaint made in the proceedings before that Board, according to which the decisions of the Polish Patent Office relied on by the applicant had not been produced by the applicant in the appeal proceedings, it is sufficient to note that the intervener’s complaint was implicitly rejected at paragraphs 89 and 99 of the contested decision, in which the Board of Appeal declared the applicant’s arguments based on those decisions to be unconvincing or irrelevant (see paragraphs 118 and 119 above), which is sufficient in the present case.

134 The Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the arguments advanced by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (judgment of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55).

135 Fifthly, inasmuch as the applicant submits, in the second and third pleas and in very general terms, that the Board of Appeal has reached, without giving reasons, different conclusions from those of the Opposition Division, and that the Board did not specify the reasons why it held certain items of evidence to be reliable and not others, it is sufficient to note that those arguments are not relied upon in a sufficiently precise and intelligible manner so as to enable the General Court to carry out a review. They must therefore be rejected, as suggested by EUIPO, as inadmissible pursuant to Article 177(1)(d) of the Rules of Procedure.

136 Sixthly, in so far as the applicant raises, in the second and third pleas, arguments seeking to demonstrate that the Board of Appeal’s assessment, as part of the examination of the requirements laid down in Article 8(5) of Regulation No 207/2009, is incorrect, it is to be noted that, by those arguments, the applicant seeks to challenge the merits of the grounds of the contested decision.

137 According to settled case-law, the duty to state reasons is an essential procedural requirement which is distinct from the question of whether the reasons given are correct (judgments of 8 October 2015, Rosian Express v OHIM (Shape of a games box), T‑547/13, EU:T:2015:769, paragraph 20, and of 21 January 2016, Spokey v OHIM — Leder Jaeger (SPOKeY), T‑846/14, not published, EU:T:2016:24, paragraph 18). Those arguments must therefore be regarded as having been made in support of the fifth plea alleging infringement of Article 8(5) of Regulation No 207/2009 and will be examined in the context of the analysis of that plea.

The fifth plea, alleging infringement of Article 8(5) and, in essence, Article 9(2)(c) of Regulation No 207/2009 and of Rule 19(2)(c) of Regulation No 2868/95

139 In relation to the fifth plea, the applicant submits, in essence, that the Board of Appeal was wrong to find that the requirements governing the application of Article 8(5) of Regulation No 207/2009 were satisfied in the present case.

140 Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

141 In order to better identify the risk referred to in Article 8(5) of Regulation No 207/2009, it should be noted that, while the primary function of a trade mark is, of course, an ‘indication of origin’ (recital 8 of Regulation No 207/2009), the fact remains that a trade mark also acts as a means of transmitting other messages concerning in particular the specific qualities or characteristics of the goods or services which it designates, or the images and sensations it projects, such as luxury, lifestyle, exclusivity, adventure, youth. In that sense, the trade mark has an intrinsic economic value that is separate and distinct from that of the goods and services for which it is registered. The messages in question conveyed by, or associated with, a reputed mark, give it significant value that warrants protection, and all the more so when, in most cases, the reputation of a mark is a result of the considerable efforts and investments made by its owner. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).

142 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgments of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34, and of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).

143 It is in the light of those considerations that it is appropriate to consider whether the Board of Appeal correctly held that the requirements governing the application of Article 8(5) of Regulation No 207/2009 were satisfied in the present case and dismissed the applicant’s trade mark application in respect of ‘furniture’ goods in Class 20.

144 First, as regards the claim alleging that some of the intervener’s arguments in the proceedings before the Board of Appeal were out of time, it must be held that it is not set out in a sufficiently precise and intelligible manner and is not based on any legislation or case-law. Accordingly, that claim must be rejected as inadmissible pursuant to Article 177(1)(d) of the Rules of Procedure.

145 Next, it should be pointed out that the earlier right, in respect of which the Board of Appeal examined the risk of the infringements referred to in Article 8(5) of Regulation No 207/2009, is the EU mark referred to in paragraph 6 above, as stated by EUIPO in reply to a written question from the Court. Although the Board of Appeal refers to earlier marks in paragraph 78 of the contested decision, the reading, in particular, of paragraphs 7, 77 and 100 of that decision makes it possible to identify the earlier right in question.

146 Finally, as regards the relevant public, the definition of which, for the purposes of applying Article 8(5) of Regulation No 207/2009, as in the context of the application of Article 8(1), is a prerequisite for assessing the existence of a similarity between the signs at issue, a repute of the earlier mark, and a link between the signs at issue, it is appropriate to hold, in the light of the findings made with regard to the definition of the relevant public in paragraph 43 of the contested decision in the context of the examination of a likelihood of confusion between the signs at issue under Article 8(1)(b) of Regulation No 207/2009, that that public consists, both for the goods in question covered by the earlier mark and for those covered by the trade mark applied for, of the general public of the Union.

147 As regards the similarity between the signs at issue, which is one of the requirements governing the application of Article 8(5) of Regulation No 207/2009 (see paragraph 142 above), the Board of Appeal ‘confirm[ed]’, in paragraph 77 of the contested decision, that the signs at issue were visually and phonetically similar.

148 In that context, it should be recalled that the existence of a similarity between the earlier mark and the mark applied for is a precondition for the application both of Article 8(1)(b) of Regulation No 207/2009 and of Article 8(5) of Regulation No 207/2009. That requirement that the opposing marks are similar presupposes, both within the framework of Article 8(1)(b) and 8(5), that there are, in particular, elements of visual, phonetic or conceptual similarity (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52).

149 It is true that the provisions referred to in paragraph 148 above differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 53).

150 On the other hand, it does not appear either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way depending on whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) of Regulation No 207/2009 (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 54).

151 Accordingly, as was noted in the analysis of the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 (see paragraphs 54 to 83 above), the earlier mark and the mark applied for are visually and phonetically similar to an average degree.

152 It should also be borne in mind that, in so far as the relevant public understands English or Swedish, there is also some conceptual similarity between the marks (see paragraphs 84 to 93 above).

153 Consequently, the marks at issue produce a general impression of similarity and the second requirement for the application of Article 8(5) of Regulation No 207/2009 (see paragraph 142 above) is therefore satisfied in the present case.

154 As regards the reputation of the earlier mark, the Board of Appeal confirmed, in paragraph 78 of the contested decision, the Opposition Division’s finding that the earlier mark had acquired a reputation in the United Kingdom in respect of ‘clothing’.

155 It is apparent from the decision of the Opposition Division, which, in the light of the case-law cited in paragraph 129 above, forms part of the context in which the contested decision was adopted, that the Opposition Division relied on several items of evidence provided by the intervener, a description of which is set out in paragraph 5 of the contested decision, in order to conclude that the earlier mark had acquired a highly distinctive character through use, at least in the United Kingdom, and that, on the basis of the evidence submitted, it had to be considered to be well known in that country in respect of ‘clothing’ in Class 25.

156 The applicant argues that the intervener did not provide any evidence to show that the earlier mark had a reputation in a substantial part of the territory of the European Union. In essence, first, it argues that evidence relating to trade marks other than the earlier mark was incorrectly taken into account in assessing the reputation of that mark. Secondly, it challenges the evidentiary value of certain items of evidence provided by the intervener on the ground that they were drafted by the intervener itself and that they are incomplete. Thirdly, it submits that the statement in the contested decision that the reputation of the earlier mark in the United Kingdom leads to that mark being well known throughout the Union is incorrect.

158 It should be noted at the outset that, according to case-law, in order to satisfy the requirement of reputation, the mark must be known to a significant part of the public concerned by the goods or services covered by that trademark. In examining whether that requirement is met, consideration must be given to all the relevant facts of the case, in particular the market share held by the earlier trade mark, the intensity, geographical extent and duration of its use, and the amount of the investment made by the undertaking in promoting it, although it is not required that the mark be known by a given percentage of the public so defined or that its reputation extend throughout the territory in question, so long as the reputation exists in a substantial part of that territory (see judgment of 27 September 2012, El Corte Inglés v OHIM — Pucci International (Emidio Tucci), T‑373/09, not published, EU:T:2012:500, paragraph 58 and the case-law cited).

159 In addition, an overall assessment of the evidence produced by the proprietor of the mark should be carried out in order to establish whether the mark is well known (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 72).

160 In the present case, first, as regards the applicant’s complaint alleging, in essence, that the evidence concerning the use of marks other than the earlier mark was taken into account in the context of the assessment of the reputation of the latter, it should be noted that the applicant merely makes a criticism of the Board of Appeal’s finding, in paragraph 80 of the contested decision, that the fact that the earlier mark is represented in different ways on the documents produced does not call into question the function of the trade mark as a means of identifying the goods concerned, since the relevant provisions, and in particular Article 15(1), second subparagraph, (a), of Regulation No 207/2009 (now Article 18(1), second subparagraph, (a), of Regulation 2017/1001), do not require the registered form of the earlier mark and its used form to be strictly identical.

161 In that regard, it must be held that the applicant’s criticism is unsubstantiated and that the applicant does not adduce any concrete evidence capable of calling into question the Board of Appeal’s assessment. The applicant merely claims that the ‘marks differ by elements which change their distinctive character’, without specifying what those elements are.

162 Secondly, as regards the applicant’s complaint challenging, in general terms, the probative value of certain documents produced by the intervener in order to prove the reputation of the earlier mark, it must be pointed out that certain items of evidence submitted by the intervener in the proceedings before EUIPO (namely a document presenting the intervener’s history, an annual activity report for 2008, lists of stores in the United Kingdom, France and Ireland, including details relating to the type of store, tables showing the turnover achieved by the intervener, in particular in the United Kingdom, France and Ireland, and documents setting out information relating to its expenses and advertising activities), referred to in paragraph 5 of the contested decision, were in fact drawn up by the intervener itself.

163 In that context, it must be borne in mind that the Court has held that, in order to assess the probative value of the documents provided by the undertaking itself, it is necessary to verify the likelihood of the information contained therein. The Court further stated that it was then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (see judgment of 16 November 2011, Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), T‑500/10, not published, EU:T:2011:679, paragraph 49 and the case-law cited).

164 In the present case, it should be noted that, in so far as the documents drafted by the intervener itself are very detailed, it seems unlikely that they were drawn up exclusively for the purposes of the proceedings before EUIPO.

165 In that regard, more specifically, in respect of the intervener’s annual activity report for 2008, based, according to its own introduction, on information available on 27 March 2009, it is appropriate to add that the fact that it is a document drawn up in accordance with the standards in force in the United States, in which the intervener has its registered office, in particular in order to inform its investors about its financial situation, in respect of which it could be held liable in the event of the disclosure of false or misleading information, increases its probative value. In addition, some information identified in an internal document, such as, for example, the number of stores and the existence of advertisements published in 2005 in British magazines (such as Vogue, Cosmopolitan, Marie Claire, Glamour, Grazia, Men’s Health, FHM, GQ, Arena), may be easily verified on the basis of the data provided. In that regard, it must be stated that the truth of that information is not disputed by the applicant. Finally, with regard to the tables showing the turnover for the years 2001 to 2006 and the advertising expenditure for the years 2002 to 2006, even though they are neither dated nor signed and do not indicate the origin of the figures set out therein, the references at the bottom of each page make it possible to deduce that they were documents properly drawn up by undertakings for internal purposes.

166 As regards other alleged deficiencies in the evidence put forward by the intervener itself, it is sufficient to note that the argument submitted by the applicant is not sufficiently precise to enable the Court to carry out a review. Moreover, the applicant does not submit any specific arguments capable of calling into question the information set out in the documents, provided by the intervener during the administrative proceedings, drawn up by the intervener itself.

167 In the light of the foregoing, it must be held that the documents drawn up directly by the intervener must be accorded a certain probative value. In that regard, it should be noted that they contain detailed and relevant information on the intensity, geographical extent, and duration of use of the earlier mark, as well as the advertising campaigns relating to it, in particular in the United Kingdom.

168 Moreover, as is apparent from paragraph 5 of the contested decision, that information is corroborated by evidence from third parties.

169 First, the intervener produced a number of press cuttings published in the United Kingdom presenting, inter alia, clothing. The press cuttings, whose date and place of publication can be identified, are from the years 1986 and 2004 to 2006 and were published in general newspapers and British magazines such as Tatler, Metro, The Telegraph, The Sunday Telegraph Magazine, You, The Guardian Weekend, The Independent, Men’s Health, Daily Mirror, The Observer Magazine. However, some of the press cuttings produced by the intervener do not mention where they are taken from, as noted, correctly, by the applicant, or the date of their publication, or mention any of that information, which entails that they have no probative value.

170 Second, during the administrative proceedings, the intervener produced cuttings from BusinessWeek magazine published between 2001 and 2006 concerning the ‘100 Top Brands’, in which the GAP trade mark features, based on an analysis carried out by a consultant in accordance with a specific methodology, in the top 100 global brands. In that regard, it should be noted that, even if that information does not specifically concern the territory of the European Union or United Kingdom, they argue, having regard to the content thereof, that the earlier trade mark was known in the relevant territory.

171 In the light of the foregoing, in the context of an overall assessment of the evidence submitted by the intervener, it must be pointed out that the intervener has made considerable efforts to promote the earlier trade mark in the United Kingdom to the general public, which resulted in average annual advertising spending of more than 15 million dollars (USD) between 2002 and 2006, as well as a significant media presence, in particular, in newspapers and magazines intended for the general public, between 2004 and 2006. Moreover, the average turnover achieved by the intervener in the United Kingdom for the years 2001 to 2006, namely 385 million pounds sterling (GBP), underlines the extent of the sales made. Those factors, together with information on the number of stores in the United Kingdom and the other factors mentioned in paragraph 5 of the contested decision, support the claim as to the earlier mark’s reputation, although the documents taken into account by EUIPO do not make it possible to establish that mark’s market share or the relevant public’s degree of awareness of that mark.

172 Accordingly, the Board of Appeal was correct to uphold, in paragraph 78 of the contested decision, the Opposition Division’s finding that the earlier mark had acquired a reputation in the United Kingdom in respect of ‘clothing’.

173 Thirdly, as regards the applicant’s claim that the fact that the earlier mark has a reputation in the United Kingdom does not lead to that mark having a reputation in the European Union, it is sufficient to note that the United Kingdom constitutes a substantial part of the Union. In that regard, it is apparent from case-law that the territory of a Member State, and in particular the territory of the United Kingdom, may be considered to constitute a substantial part of the territory of the European Union (see, to that effect, judgment of 6 July 2012, Jackson International v OHIM — Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 44).

174 Furthermore, assuming that the allegations put forward by the applicant in the fifth plea in relation to the reputation of the earlier mark are intended to call into question the reasoning of the contested decision on that point, it is sufficient to state that that question has already been analysed in the examination of the second and third pleas (see paragraphs 128 to 132 above).

175 In the light of the foregoing, the applicant’s claim that the Board of Appeal erred in finding that the earlier mark had acquired a reputation must be dismissed.

Unfair advantage taken of the distinctive character or the repute of the earlier trade marks

176 As regards the risks referred to in Article 8(5) of Regulation No 207/2009, it should be recalled that that provision refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).

177 In the present case, the Board of Appeal took the view that the intervener’s statements were sufficient to prove that the applicant was indeed seeking to ride on the coat‑tails of the reputed trade mark in order to benefit from the power of attraction, reputation and prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the reputed mark’s image. Accordingly, the Board of Appeal found that the third type of risk referred to in Article 8(5) of Regulation No 207/2009, namely the risk of infringement constituted by the profit unduly derived from the distinctive character or the reputation of the earlier mark, was present.

178 The applicant argues that the intervener has not managed to show the existence of any of the injuries referred to in Article 8(5) of Regulation No 207/2009, in particular, the existence of an unfair advantage taken of the distinctive character or the repute of the earlier mark. In that regard, the applicant also submits argument about the detriment caused by the injury done to the distinctive character of the earlier mark. Furthermore, the applicant submits that there are circumstances justifying the use of the sign applied for.

180 EUIPO observes that the applicant’s arguments about the detriment caused to the distinctiveness of the earlier mark are irrelevant since detriment to distinctiveness was not examined by the Board of Appeal. EUIPO also submits that there was no valid reason for the use of the mark applied for in the territory of the United Kingdom.

181 The intervener submits, in essence, that the Board of Appeal correctly held that unfair advantage was taken of the distinctive character or the repute of the earlier mark and, consequently, that the applicant’s arguments concerning the detriment caused by the injury to the distinctive character of the earlier mark are irrelevant. In addition, the intervener submits that the applicant failed to prove that there was due cause for the use of the mark applied for.

182 It should be borne in mind that, according to case-law, the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 25, and judgment of 29 October 2015, Éditions Quo Vadis v OHIM — Gómez Hernández (‘QUO VADIS’), T‑517/13, not published, EU:T:2015:816, paragraph 25).

183 In the absence of such a link in the mind of the public, the use of the mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraphs 27 and the case-law cited).

184 There must be a global assessment as to whether there is such a link, taking into account all factors relevant to the circumstances of the case, including the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see judgment of 29 October 2015, ‘QUO VADIS’, T‑517/13, not published, EU:T:2015:816, paragraph 26 and the case-law cited; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42).

185 While, in the absence of such a link in the minds of the public, the use of the trade mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, the existence of such a link is not, however, sufficient, in itself, for it to be concluded that one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, which constitute the specific condition for the protection of trade marks with a reputation laid down by that provision, has materialised (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 27).

186 Like the existence of a link between the conflicting marks, the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, or a serious likelihood that such an injury will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 68). Those factors include the strength of the reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services (judgment of 6 July 2012, ROYAL SHAKESPEARE, T‑60/10, not published, EU:T:2012:348, paragraph 54).

187 In the present case, it should be noted that, in the contested decision, the Board of Appeal at least implicitly concluded that there was a link in the mind of the relevant public between the signs at issue, in so far as it held that there was a risk that the use of the mark applied for would take unfair advantage of the reputation of the earlier mark. However, it did not specifically assess the existence of such a link and focused, in paragraphs 88 to 95 of the contested decision, on the question of the advantage which the applicant could take of the trade mark applied for.

188 In reply to a written question from the Court and at the hearing, EUIPO submitted that all the relevant factors for establishing a link between the signs at issue, in the mind of the relevant public, had been assessed in the contested decision.

189 The Board of Appeal took a position, as part of its analysis in the contested decision of the requirements governing the application of Article 8(5) of Regulation No 207/2009, on certain factors, such as the degree of similarity between the earlier mark and the mark applied for and the nature and degree of proximity of the goods concerned, which it is appropriate to take account of in assessing the existence of a link between the signs at issue, within the meaning of the case-law referred to in paragraph 184 above.

190 As regards the degree of similarity between the marks at issue, the Board of Appeal correctly held that the marks were visually and phonetically similar. As noted in paragraphs 54 to 83 and paragraph 151 above, that similarity may be considered to be average. However, it should be noted that the conflicting marks are not identical and differ in terms of the ‘pol’ element, which is not negligible in assessing the similarity of those two signs. In addition, in so far as the relevant public understands English or Swedish, those marks also have some conceptual similarity.

191 As regards the nature and proximity of the goods covered by the conflicting marks, it should be noted that the Board of Appeal held in paragraphs 90 and 91 of the contested decision essentially that there was a certain degree of proximity between the goods in question, given that several renowned brands had extended their range from clothing to furniture and to interior decoration accessories, that cooperation between the interior design industry and fashion designers was not unusual among the renowned brands and that many magazines initially dedicated to the fashion sector also covered that of interior design.

192 Those claims, even if they are assumed to be established, result in a very limited degree of proximity between ‘furniture’ goods in Class 20 and ‘clothing, footwear, headgear’ goods in Class 25. Those goods are not complementary and it is not common for them to be offered for sale in the same retail outlets or, in the case of sales in department stores, in the same departments.

193 Moreover, it should be recalled, as the Board of Appeal rightly pointed out in paragraphs 61 and 62 of the contested decision, in assessing the similarity between the goods concerned pursuant to Article 8(1)(b) of Regulation No 207/2009, that ‘furniture’ goods falling within Class 20 are different from ‘clothing, footwear, headgear’ goods falling within Class 25, since they have a different nature, purpose, and method of use, are neither complementary or in competition, and do not belong to the same product market or even to neighbouring product markets. However, the fact that the goods in question are different does not preclude a certain proximity between them (see, to that effect, judgment of 6 July 2012, ROYAL SHAKESPEARE, T‑60/10, not published, EU:T:2012:348, paragraph 59).

194 With respect to the relevant public, it should be recalled that the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the advantage taken of that mark by the proprietor of the mark applied for, must be assessed by reference to average consumers of the goods or services covered by the mark applied for, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).

195 As stated in paragraph 146 above, it is apparent from the assessments in paragraph 43 of the contested decision, and relating to the likelihood of confusion between the signs at issue under Article 8(1)(b) of Regulation No 207/2009, that the relevant public consists, for the goods covered by the trade mark applied for, of the general public in the European Union. In that context, it must be stated that, although the existence of injury consisting of unfair advantage taken of the distinctive character or reputation of the earlier mark must be assessed, in accordance with the case-law referred to in paragraph 194 above, by reference to average consumers of the goods covered by the trade mark applied for, who are reasonably well informed and reasonably observant and circumspect, in this case, inasmuch as ‘furniture’ goods are not purchased daily and may fall within a higher price category, average consumers of those goods are likely to be more attentive.

196 As regards the strength of the earlier mark’s reputation, it should be noted that the Board of Appeal did not specify, as acknowledged by EUIPO before the Court, that strength. It follows that it did not rule on a relevant factor, pursuant to the case-law cited in paragraph 184 above, in order to assess the existence of a link between the signs at issue, which it is also appropriate, moreover, to take account of as part of the assessment of the existence of an infringement constituted by the profit unduly derived from the distinctive character or reputation of the earlier mark referred to in Article 8(5) of Regulation No 207/2009.

197 In that regard, it must be borne in mind that the relevant public’s assessment of the link between the signs at issue is likely to vary according to the strength of the reputation (see, to that effect, judgment of 14 December 2012, Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), T‑357/11, not published, EU:T:2012:696, paragraph 48).

198 Moreover, contrary to what EUIPO maintains, it should be pointed out that the Court is not itself entitled to assess the strength of the reputation of the earlier mark where it has not been examined by the Board of Appeal, since it is settled case-law that, in accordance with Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001), the General Court carries out a review of the legality of the decisions of EUIPO (see judgment of 28 September 2016, Lacamanda Group v EUIPO — Woolley (HENLEY), T‑362/15, not published, EU:T:2016:576, paragraph 25 and the case-law cited).

199 Next, it should be pointed out that the Board of Appeal failed to identify, as part of its analysis in the contested decision on the requirements governing the application of Article 8(5) of Regulation No 207/2009, the degree of distinctiveness of the earlier mark. In that context, it should be recalled that, according to case-law, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 54).

200 It should also be pointed out that, like the strength of the reputation of the earlier mark, the degree of distinctiveness of that mark is one of the factors which must be taken into consideration as part of the assessment of the existence of the infringement constituted by an unfair advantage taken of the distinctive character or the repute of the earlier mark referred to in Article 8(5) of Regulation No 207/2009. It should also be recalled that it has already been held that the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69).

201 In the light of the foregoing, and in particular in view of the fact that the marks at issue are not identical and that the similarity between them is not high, that the goods covered by those marks are not similar and are proximate only to a slight degree, and the fact that the attention of the relevant public is likely to be higher when purchasing furniture, it should be noted that the Board of Appeal could have upheld the opposition on the basis of Article 8(5) of Regulation No 207/2009 only if it had found that the earlier mark had acquired a sufficiently strong reputation or a sufficiently high degree of distinctiveness.

202 Accordingly, the Board of Appeal infringed Article 8(5) of Regulation No 207/2009, and it is appropriate to annul the contested decision in so far as it granted the opposition in respect of ‘furniture’ goods, falling within Class 20, covered by the mark applied for, pursuant to Article 8(5) of Regulation No 207/2009.

203 As regards the applicant’s claim that the Court should reject the opposition in its entirety, it should be noted at the outset that the intervener disputes the admissibility of such a head of claim on the ground, in essence, that the applicant put forward a number of pleas alleging procedural defects of the Board of Appeal and that a review of the contested decision is conceivable only in situations where all the facts and evidence have been examined by the Board of Appeal.

204 In that regard, it should be noted that the applicant is asking the Court to alter the contested decision, pursuant to Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001). The purpose of that request is for the Court to rule, like the Board of Appeal, on the opposition of the intervener. Such a decision is among the measures which, in principle, may be taken by the Court in the exercise of its power to alter decisions (see, to that effect, judgment of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 40 and the case-law cited). It follows that the applicant’s second head of claim is admissible.

205 Moreover, as regards the question whether the contested decision should be partially amended in the present case, it must be observed that the power of review does not have the effect of conferring on the General Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).

206 In the present case, it must be held that the requirements governing the exercise of the Court’s power to alter decisions are not met, in so far as the Board of Appeal did not carry out a complete analysis as part of the assessment of the requirements governing the application of Article 8(5) of Regulation No 207/2009. Therefore, the second head of claim must be rejected.

207 Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party.

208 In the present case, since both the applicant, as well as EUIPO and the intervener, have been unsuccessful in their submissions, it is appropriate to order that each party bear its own costs incurred in the course of the proceedings before the Court.

209 In addition, in so far as the applicant has also applied for EUIPO to be ordered to pay the costs incurred in the course of the proceedings before the Opposition Division and the Board of Appeal, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case in respect of the costs incurred for the purposes of proceedings before the Opposition Division. Consequently, the applicant’s claim regarding the costs relating to the proceedings before the Opposition Division, which do not constitute recoverable costs, is inadmissible. With regard to the applicant’s claim relating to the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to those proceedings (see, to that effect, judgment of 5 December 2012, Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.), T‑143/11, not published, EU:T:2012:645, paragraph 74).

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 May 2015 (Case R 686/2013-1) in so far as the Board of Appeal rejected, pursuant to Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (now Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark), the application for registration in respect of goods falling within Class 20 and corresponding to the description ‘furniture’;

3. Orders each party to bear its own costs incurred in the course of the proceedings before the Court.

The first plea, alleging infringement of Articles 59 and 64(1) of Regulation No 207/2009

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

The fifth plea, alleging infringement of Article 8(5) and, in essence, Article 9(2)(c) of Regulation No 207/2009 and of Rule 19(2)(c) of Regulation No 2868/95

Unfair advantage taken of the distinctive character or the repute of the earlier trade marks

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Gappol Marzena Porczynska v EUIPO - Gap (ITM) ((EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-411/15 (04 October 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T41115.html Cite as: [2017] EUECJ T-411/15, EU:T:2017:689, ECLI:EU:T:2017:689

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