N & C Franchise v EUIPO - Eschenbach Optik (ojo sunglasses) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-792/16 (14 December 2017)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark OJO sunglasses — Earlier international word mark oio — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

N & C Franchise Ltd, established in Nicosia (Cyprus), represented by C. Chrysanthis, P.-V. Chardalia, and A. Vasilogamvrou, lawyers,

European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 9 September 2016 (Case R 32/2016-5), relating to opposition proceedings between Eschenbach Optik and N & C Franchise,

composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,

having regard to the application lodged at the Court Registry on 14 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 9 February 2017,

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

1 On 2 September 2014, the applicant, N & C Franchise Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 54, p. 1)).

3 The goods and services in respect of which registration was sought are in Classes 9, 21 and 37 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 9: ‘Sunglasses; sunglasses frames; clip-on sunglasses; frames for sunglasses; lenses for sunglasses; straps for sunglasses; cases for sunglasses; chains for sunglasses; frames for spectacles and sunglasses; optical lenses for use with sunglasses; eye glasses; spectacles [glasses]; children’s eye glasses’;

– Class 21: ‘Cloths for eye-glasses; wiping cloth for wiping eye glasses’;

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2014/184 of 1 October 2014.

5 On 12 December 2014, Eschenbach Optik GmbH filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based, inter alia, on the international registration designating the European Union of the word mark oio, obtained on 22 October 2008 and bearing No 985 643, in respect of goods in Class 9 corresponding to the following description: ‘spectacles, spectacle frames, optical apparatus and instruments’.

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

9 On 7 January 2016, 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 Opposition Division’s decision.

10 By decision of 9 September 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, the Board of Appeal indicated that it had confined its examination of the opposition to the international registration No 985 643 and that it had focused the assessment of the likelihood of confusion on the Slovenian-speaking part of the relevant public (paragraph 18 of the contested decision). In that regard, it noted, in paragraph 19 of the contested decision, that the goods and services in question were aimed at both average consumers and professionals, whose level of attention would vary from average to higher than average. In the second place, concerning the comparison of the goods and services in question, the Board of Appeal, in paragraph 22 of the contested decision, confirmed the examination carried out by the Opposition Division, at the end of which that division had concluded that the goods and services covered by the signs at issue were identical in part and similar in part. In the third place, regarding the comparison of the signs at issue, the Board of Appeal indicated, in paragraph 31 of the contested decision, that, visually, the earlier trade mark oio was almost entirely reproduced in the sign applied for. It inferred from this, in paragraph 33 of that decision, that there was a higher than average degree of visual similarity between the signs at issue. Phonetically, the Board of Appeal rejected the applicant’s argument that the letters ‘j’ and ‘i’ were pronounced differently in Slovenian, endorsing, in paragraph 34 of the contested decision, the Opposition Division’s finding that the pronunciation of the words ‘ojo’ and ‘oio’ would remain the same, at least in Slovenian. Lastly, in paragraph 38 of the contested decision, the Board of Appeal found that the signs at issue were not conceptually similar, in view of (i) the ‘weak’ nature of the word element ‘sunglasses’ for the part of the relevant public having some knowledge of English and (ii) the lack of meaning of the word element ‘ojo’. In the fourth and last place, the Board of Appeal considered, in paragraph 45 of the contested decision, that there was a likelihood of confusion between the signs at issue.

13 In support of its action, the applicant raises, in essence, a single plea in law, alleging that the Board of Appeal made errors of assessment in applying Article 8(1)(b) of Regulation No 207/2009.

15 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, an 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.

16 Furthermore, under Article 8(2)(a)(iv) of Regulation No 207/2009 (now Article 8(2)(a)(iv) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

17 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgments of 15 December 2016, Redpur v EUIPO — Redwell Manufaktur (Redpur), T‑227/15, not published, EU:T:2016:745, paragraph 15 and the case-law cited, and of 28 March 2017, Regent University v EUIPO — Regent’s College (REGENT UNIVERSITY), T‑538/15, not published, EU:T:2017:226, paragraph 28 and the case-law cited).

18 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).

19 Lastly, it should 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).

20 It is in the light of those considerations that the legality of the contested decision must be examined.

21 As a preliminary point, it is necessary to endorse the findings of the Board of Appeal — which, moreover, are not contested by the applicant — that, first, the relevant territory is the European Union and, in particular, the part of that territory in which Slovenian is spoken, and, second, the goods covered by the signs at issue in respect of which registration has been refused are identical or similar.

22 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).

23 In the contested decision, the Board of Appeal considered, endorsing the findings of the Opposition Division, that the level of attention would vary from average to higher than average, depending on the price and the frequency of purchase of the goods and services.

24 The applicant argues that glasses, sunglasses and other related goods and services do not constitute everyday purchases, that their cost is relatively high and that, when purchasing glasses, consumers pay great attention to their personal style. Under those conditions, the level of attention of consumers will be very high.

25 However, first, as EUIPO points out, the Board of Appeal already took into account the peculiarities of the goods and services in question, considering, as is apparent from paragraph 23 above, that the level of attention of the relevant public could, in certain cases, be higher than average.

26 Second, it is apparent from case-law that the goods referred to in paragraphs 3 and 6 above must — in view of their broad description and in the absence of further details concerning their possible status as luxury goods — be regarded as goods for everyday consumption and as directed at members of the general public, who are not expected to pay a particularly high degree of attention to them (see, to that effect, judgments of 16 September 2009, Zero Industry v OHIM — zero Germany (zerorh+), T‑400/06, not published, EU:T:2009:331, paragraph 28, and of 26 March 2015, Royal County of Berkshire Polo Club v OHIM — Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 34 and the case-law cited).

27 Consequently, the Board of Appeal did not err in its assessment of the relevant public’s level of attention.

28 It should be borne in mind that it has been held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited, and of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46 and the case-law cited).

29 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (see judgment of 14 October 2003, Philips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 47 and the case-law cited).

30 In order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question (see judgments of 13 June 2006, Inex v OHIM — Wiseman(Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited, and of 1 March 2016, BrandGroup v OHIM — Brauerei S. Riegele, Inh.Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 33 and the case-law cited). In that regard, the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (see, to that effect, judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited).

31 In the contested decision, the Board of Appeal noted, in essence, that, visually, (i) the ‘figurative element’ of the mark applied for representing the shape of a yellow nose and two eyes would be less distinctive than the word element ‘ojo’ of that sign, (ii) the earlier trade mark was almost entirely reproduced in the sign applied for, in which it formed the most dominant and distinctive element, and (iii) the graphical coloured representation of a nose and two eyes in the mark applied for is not sufficiently eye-catching to divert the consumer’s attention away from the word element ‘ojo’, which almost entirely reproduces the opponent’s trade mark. The Board of Appeal concluded from this that there was a higher than average degree of visual similarity between the signs at issue, in so far as they included almost identical word elements, namely ‘ojo’ and ‘oio’.

32 In the first place, the applicant submits that the Board of Appeal misapplied the relevant principles for comparing short signs, in particular by relying, in paragraph 32 of the contested decision, on the principle that the fact that the marks under comparison coincide as to their initial part is more likely to give rise to a likelihood of confusion, because that initial part is the most likely to attract the public’s attention. It argues that that principle is neither suitable for nor applicable to short signs, in particular because, as indicated by EUIPO’s examination guidelines, the shorter a sign is, the more easily the public will be able to perceive all its various elements. The opposite approach would also, according to the applicant, have a restrictive effect on competition, in so far as it would preclude the registration of any three-letter sign beginning and ending with the letter ‘o’.

33 However, first, it must be pointed out that, according to settled case-law, consumers generally take more note of the beginning of a sign than of its ending (see, to that effect, judgment of 15 July 2015, Westermann Lernspielverlag v OHIM — Diset (bambinoLÜK), T‑333/13, not published, EU:T:2015:490, paragraph 26 and the case-law cited).

34 In that regard, contrary to the applicant’s assertions (see paragraph 32 above), it is apparent from EUIPO’s examination guidelines (version of 1 October 2017, Part C, Section 2, Chapter 4, page 82; version of 1 February 2016, Part C, Section 2, Chapter 4, page 76), which, moreover, are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 5 July 2016, Future Enterprises v EUIPO — McDonald’s International Property (MACCOFFEE), T‑518/13, EU:T:2016:389, paragraph 81), that, when the signs at issue are three-letter signs, a difference of one letter does not exclude similarity, especially if that letter is phonetically similar.

35 Thus, as EUPO contends, in the judgment of 17 December 2009, Notartel v OHIM — SAT.1 (R.U.N.) (T‑490/07, not published, EU:T:2009:522, paragraph 55), the signs ran and R.U.N. were regarded as similar, as were the signs ILS and ELS in the judgment of 23 October 2002, Institut für Lernsysteme v OHIM — Educational Services (ELS) (T‑388/00, EU:T:2002:260, paragraphs 66 to 73).

36 Under those conditions, the applicant is incorrect in its assertion that the Board of Appeal misapplied the relevant principles for comparing short signs.

37 Second, concerning the applicant’s argument that the Board of Appeal’s assessment restricts competition as regards short signs by preventing the registration of any three-letter mark beginning and ending in ‘o’, irrespective of the letter in the middle, it must be pointed out that, as is apparent from paragraph 40 of the contested decision, the Board of Appeal, by restricting its analysis to the terms ‘ojo’ and ‘oio’, at no time asserted that there was a likelihood of confusion in respect of three-letter signs whatever letter might be between the letter ‘o’ at the beginning and the letter ‘o’ at the end as is suggested by the applicant.

38 In the second place, the applicant submits that the contested decision should have concluded that the marks at issue were sufficiently dissimilar because of the artistic stylisation of the mark applied for. In that regard, the applicant emphasises that the element ‘ojo’ represents, with a strong degree of artistic stylisation, a nose and two eyes wearing glasses and that it constitutes the distinctive and dominant element of the mark applied for.

39 However, the fact, even assuming it can be established, that a part of the public will perceive the element ‘ojo’ not only as a word element but also as a figurative element representing a nose with two eyes wearing glasses, which is an allusion to the goods and services covered by the mark applied for, is not capable of establishing that the figurative element is more distinctive or dominant in comparison with how the element is perceived verbally.

40 First, as is apparent from the findings of the Board of Appeal, the letters of the word element ‘ojo’ are clearly visible, owing to their size and their position within the sign. Second, it must be pointed out that the applicant does not adduce any evidence of a creative aspect of the figurative element relied on that is capable of distinguishing its goods from those of other undertakings (see, to that effect, judgment of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 20 and the case-law cited). On the contrary, the yellow figurative element relied on representing a nose and two eyes wearing glasses must be regarded as purely descriptive of the goods and services concerned and, therefore, as being less distinctive than the word element ‘ojo’.

41 In that regard, concerning the supposedly distinctive and dominant nature of that element, the Board of Appeal did not err in law in recalling that, according to case-law, where signs are composed of both verbal and figurative elements, the word element of the sign, in principle, has a greater impact on the consumer than the figurative element (see, to that effect, judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited, and of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraph 23 and the case-law cited).

42 Under those conditions, there is nothing to indicate that the figurative aspect of the element ‘ojo’ will be regarded as more distinctive and dominant when compared with the word aspect of that element. Therefore, the Board of Appeal was fully entitled to consider that the element ‘ojo’ could be a basis for concluding that the signs at issue were similar.

43 It follows that the Board of Appeal did not err when taking account of the figurative elements of the mark applied for.

44 That finding is not undermined by the applicant’s argument based on a list, by way of ‘example’, of EUIPO decisions and judgments of the Courts of the European Union, intended to demonstrate that the signs at issue should be regarded as sufficiently dissimilar in view of their short nature and the supposed ‘highly and artistically stylized’ nature of the mark applied for.

45 First, the applicant, by confining itself to giving a list, does not explain, to the requisite factual standard, how the circumstances in the judgments and decisions cited are similar to the circumstances of the present case.

46 Second, in the judgments relied on by the applicant, the signs at issue contained differences which are not of the same nature as the differences present in the signs concerned by the present case. The same is true of, inter alia, the differences present in the signs at issue in the judgments of 18 September 2014, Società Italiana Calzature v OHIM (C‑308/13 P and C‑309/13 P, not published, EU:C:2014:2234, paragraphs 45 and 46), of 23 May 2007, Henkel v OHIM — SERCA (COR) (T‑342/05, not published, EU:T:2007:152, paragraph 42), of 24 January 2012, El Corte Inglés v OHIM — Ruan (B) (T‑593/10, not published, EU:T:2012:25, paragraph 30), and of 29 January 2014, Goldsteig Käsereien Bayerwald v OHIM — Vieweg (goldstück) (T‑47/13, not published, EU:T:2014:37, paragraph 30).

47 In addition, in so far as the applicant relies on decisions of the Board of Appeal of EUIPO, it should be borne in mind that although, in the light of the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must nonetheless be consistent with respect for the principle of legality (see judgment of 21 January 2015, Sabores de Navarra v OHIM — Frutas Solano (KIT, EL SABOR DE NAVARRA), T‑46/13, not published, EU:T:2015:39, paragraph 47 and the case-law cited). However, as has been noted in paragraph 42 above, without being called into question by the applicant’s arguments as examined in paragraphs 44 to 46 above, the Board of Appeal in no way erred when taking account of the figurative elements of the mark applied for, so that the applicant cannot validly rely, for the purposes of invalidating that conclusion, on previous decisions of OHIM. That is all the more the case where, as in this instance, almost all the decisions relied on by the applicant concern signs which, unlike the signs at issue in the present case, differ in terms of their beginnings or contain only a single letter.

48 In the third place, the applicant submits that the Board of Appeal misapplied Article 8(1)(b) of Regulation No 207/2009 in order to conclude that the marks were visually similar by considering that the likelihood of confusion was established when the earlier trade mark was contained as such in the mark applied for, inasmuch as the earlier trade mark is in no way contained in that mark.

49 However, the Board of Appeal did not consider that, in the present case, the earlier trade mark was contained identically in the mark applied for. On the contrary, the Board of Appeal observed, in paragraph 31 of the contested decision, that the earlier trade mark oio was ‘almost entirely reproduced’ in the sign applied for, a conclusion which it repeated in paragraph 33 of that decision, inferring from this that there was a higher than average degree of visual similarity between the signs at issue owing to the fact that they each contained ‘almost’ identical word elements.

50 In that regard, the applicant’s reliance on the judgment of 20 March 2003, LTJ Diffusion (C‑291/00, EU:C:2003:169) in order to demonstrate that an earlier trade mark could not be deemed to have been incorporated as such into a mark applied for, unless that mark displayed such insignificant differences from the earlier trade mark that those differences might go unnoticed, is irrelevant. Indeed, in that judgment, the Court intended to give a ruling on the concept of ‘identity’ between signs, within the meaning of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), and not on the concept of ‘similarity’ between such signs, which is the only concept at issue in the present case.

51 It follows from the foregoing that the line of argument alleging that the Board of Appeal erred in law in the assessment of the visual similarity of the signs at issue must, in any event, be rejected.

52 As regards the phonetic similarity, the Board of Appeal found that the Opposition Division had correctly decided that the pronunciation of the words ‘ojo’ and ‘oio’ would remain the same, at least in Slovenian.

53 The applicant asserts that the use of the ‘Google Translate’ tool confirms that the terms ‘oio’ and ‘ojo’ are pronounced in clearly different ways, whether in Slovenian or in the majority of the other European languages. The applicant argues, in that regard, that, in the word ‘oio’, the middle letter is a vowel which is pronounced ‘i’ and the pronunciation of the word when read as a whole is ‘oyo’, whereas, in the word ‘ojo’, the middle letter is a consonant which is pronounced ‘tz’ or ‘z’ and the word when read as a whole is pronounced ‘otzo’ or ‘ozo’.

55 Under those conditions, the applicant’s arguments regarding the lack of phonetic similarity between the signs at issue must be set aside.

56 In conclusion, the Board of Appeal was correct to conclude that the signs at issue were both visually and phonetically similar.

57 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 (judgment 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; see also, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).

58 In the contested decision, the Board of Appeal first of all, in paragraph 43, rejected the applicant’s argument based on the difference between the distribution channels of the marks at issue, considering that the actual distribution method of the EU trade mark applicant should not be taken into consideration.

59 Next, the Board of Appeal recalled, in paragraph 44 of the contested decision, that the relevant criterion for the purposes of assessing the likelihood of confusion was that there was at least a risk that the relevant consumers might confuse the marks. The Board of Appeal observed that the marks at issue were likely to be linked in the minds of consumers, who might interpret the mark applied for as a variation on the earlier trade mark and, consequently, as coming from the same undertaking or from an economically-linked undertaking.

60 Lastly, in paragraph 45 of the contested decision, the Board of Appeal concluded that the similarity of the signs resulting from the fact that the earlier trade mark was almost identically contained in the mark applied for as an independent element, combined with the identity and similarity of the goods and services in question, was such that the sign applied for could give rise to an association leading the Slovenian-speaking part of the relevant public to perceive the undertakings behind the marks as being economically connected or linked.

61 In the first place, the applicant argues that there is a contradiction between paragraphs 43 and 44 of the contested decision, the former indicating that ‘the actual distribution method used by the applicant is not to be taken into consideration’ and the latter that the ‘channels of distribution are only one factor among others involved in the assessment of a likelihood of confusion’. The applicant asserts, in that regard, that the Board of Appeal erred in not taking into consideration the evidence submitted by it before EUIPO. It indicates that that evidence shows that its goods are sold exclusively in its own shops, which do not sell competing products. Under those conditions, consumers visiting the applicant’s shops would not expect to find goods originating from other manufacturers.

62 However, contrary to the assertions made by the applicant when invoking the existence of a contradiction in EUIPO’s reasoning, although distribution channels are indeed ‘one factor among others involved in the assessment of a likelihood of confusion’ (see, to that effect, judgment of 26 April 2016, Franmax v EUIPO — Ehrmann (Dino), T‑21/15, not published, EU:T:2016:241, paragraph 21 and the case-law cited), it does not follow that the ‘actual distribution method used by the applicant’ must be taken into consideration in the analysis of the likelihood of confusion.

63 Indeed, although EUIPO may take into account the objective conditions under which the marks may be present on the market (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 49), the same cannot be said of the particular and subjective ways in which the goods in question are marketed, which may vary in time and depending on the wishes of the proprietors of the marks at issue and which, accordingly, are not appropriate circumstances to take into account in the prospective analysis of the likelihood of confusion between those marks (see, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59).

64 In the second place, the applicant argues, in essence, that the Board of Appeal erred in law in applying, contrary to case-law, the concept of the likelihood of association as an alternative to the concept of the likelihood of confusion. In that regard, it asserts that consumers are unlikely to perceive economic links (giving rise to a likelihood of association) unless the earlier trade mark enjoys a certain reputation or, at least, has a strong distinctive character, which is not the situation in the present case.

65 As a preliminary point, it must be pointed out that the Board of Appeal recalled, in paragraph 41 of the contested decision, that, according to case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion. It explained, in that paragraph, that, according to the same case-law, it followed from the very wording of Article 8(1)(b) of Regulation No 207/2009 that the concept of the likelihood of association was not an alternative to the concept of the likelihood of confusion, but served to define its scope. Indeed, pursuant to Article 8(1)(b) of Regulation No 207/2009, the likelihood of confusion includes the likelihood of association with the earlier trade mark, so that the one is not exclusive of the other.

66 In that regard, in paragraph 45 of the contested decision, the Board of Appeal found that the earlier trade mark was almost identically contained in the mark applied for as an independent element and that the goods and services in question were identical in part and similar in part. It concluded from this that the similarity between the signs at issue was such that the sign applied for could give rise to an association leading the relevant public to perceive the undertakings behind the marks as being economically linked.

67 It follows that, far from applying the concept of the likelihood of association as an alternative to the concept of the likelihood of confusion, the Board of Appeal, in accordance with case-law, explained the scope of the likelihood of confusion in the present case by making reference to a likelihood of association between the marks at issue.

68 Contrary to the applicant’s assertions, the fact that the earlier trade mark is not particularly well known or strongly distinctive does not prevent consumers from perceiving economic links between the marks at issue (see, to that effect, judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

69 Indeed, the average consumer only retains an imperfect picture of a trade mark, because he only rarely has the chance to make a direct comparison between different marks (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

70 In that regard, the applicant is wrong to draw an analogy between the present case and the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528, paragraph 26), in order to assert that the mere fact that two marks share a common element is not sufficient, in itself, to conclude that there is a likelihood of association. It should be borne in mind that, in the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528, paragraph 25), the Court confined itself to ruling that the mere fact that the marks at issue were conceptually similar was not sufficient to give rise to a likelihood of confusion. However, in the present case, the similarity between the signs at issue is visual and phonetic, so that it exceeds the mere conceptual similarity at issue in the judgment cited above.

71 In the light of all of the foregoing and, more specifically, in light of (i) the fact that the goods covered by the signs at issue in respect of which registration was refused are identical or similar, (ii) the higher than average level of attention of the relevant public, (iii) the fact that the signs at issue are both visually and phonetically similar and (iv) the fact that the Board of Appeal was correct in its findings as recalled in paragraphs 59 and 60 above, the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion between the signs at issue.

72 The single plea in law raised by the applicant must therefore be rejected and, accordingly, the action must be dismissed in its entirety.

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

74 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> N & C Franchise v EUIPO - Eschenbach Optik (ojo sunglasses) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-792/16 (14 December 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T79216.html Cite as: [2017] EUECJ T-792/16

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