NHS v EUIPO - HLC SB Distribution (CRUZADE) (EU trade mark - Judgment) [2019] EUECJ T-378/18 (19 September 2019)

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(EU trade mark — Opposition proceedings — Application for EU word mark CRUZADE — Earlier EU figurative mark SANTA CRUZ — Relative ground for refusal — Article 8(1)(b) of Regulation (EU) 2017/1001 — Enhanced distinctiveness of the earlier mark)

NHS, Inc., established in Santa Cruz, California, (United States), represented by P. Olson, lawyer,

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

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 April 2018 (Case R 1217/2017‑5), relating to opposition proceedings between NHS and HLC SB Distribution,

composed of A. M. Collins, President, M. Kancheva (Rapporteur) and G. De Baere, Judges,

1 On 4 December 2014, HLC SB Distribution, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 18, 25 and 28 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 The trade mark application was published in the European Union Trade Marks Bulletin No 2014/241 of 22 December 2014.

5 On 19 March 2015, the applicant, NHS, Inc., 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 all of the goods referred to in paragraph 3 above.

6 The opposition was based on, inter alia, the EU trade mark reproduced below, filed on 29 March 2010 and registered on 20 September 2010 under the number 8 990 889:

7 The goods covered by the earlier figurative mark fall within, inter alia, Class 28 and correspond to the following description: ‘Skateboards, truck sets for skateboards, skateboard parts and accessories; winter skates; surfboards, snow boards; knee pads, elbow pads, cover cuffs; gloves for sporting purposes and games’.

8 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and in Article 8(4) and (5) of Regulation No 207/2009 (now Article 8(4) and (5) of Regulation 2017/1001).

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

11 By decision of 13 April 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, the Board of Appeal held that the evidence submitted by the applicant was not capable of establishing that the earlier mark enjoyed a reputation, within the meaning of Article 8(5) of Regulation 2017/1001, or enhanced distinctiveness within the meaning of Article 8(1)(b) of Regulation 2017/1001. In the second place, it held that the signs at issue featured too many differences for a finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even though some of the goods covered by those signs were identical. In the view of the Board of Appeal, this finding would stand even if it were established that the earlier mark had enhanced distinctiveness. In the third place, the Board of Appeal rejected the opposition based on Article 8(4) and (5) of Regulation 2017/1001.

– reject the registration of the trade mark applied for ‘in respect of “skateboards and their parts”’;

14 In response to a question from the Court at the hearing, the applicant indicated that it was withdrawing the first plea relied on in the application in support of its first head of claim in so far as that plea was based on the reputation of the earlier mark within the meaning of Article 8(5) of Regulation 2017/1001. Formal note of this was made in the minutes of the hearing.

15 By the second head of claim the applicant essentially requests the Court to order rejection of the registration of the mark applied for in respect of ‘skateboards and their parts’. Such a claim, therefore, requests the Court to issue a direction to that effect to EUIPO.

16 According to settled case-law, in an action before the EU Courts against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the measures necessary to comply with judgments of the EU Courts. Accordingly, it is not for the General Court to issue directions to EUIPO. It is for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU Courts (see judgments of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited, and of 5 May 2017, Globo Media v EUIPO — Globo Comunicação e Participações (GLOBO MEDIA), T‑262/16, not published, EU:T:2017:315, paragraph 13).

17 Therefore, as submitted by EUIPO, the applicant’s head of claim requesting the Court to order rejection of the registration of the mark applied for is inadmissible.

18 In support of its action, the applicant puts forward two pleas in law, claiming (i) that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by erring in the assessment of the evidence submitted in support of the earlier mark’s enhanced distinctiveness and, (ii) that the Board of Appeal infringed Article 8(1)(b) of that regulation by erring in the assessment of whether there was a likelihood of confusion.

19 As a preliminary point, it should be noted that, as stated in the form of order sought by the applicant, as well as at various points in its written submissions, the applicant seeks annulment of the contested decision only in so far as it rejected the opposition in respect of ‘skateboards and their parts’. Consequently, the applicant’s arguments must be examined on the basis that its request for annulment is limited to those goods covered by the mark applied for.

The first plea in law, claiming that the Board of Appeal erred in the assessment of the evidence submitted in support of the earlier mark’s enhanced distinctiveness

20 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by holding that the evidence produced before EUIPO, taken as a whole, did not demonstrate the enhanced distinctiveness of the earlier mark in respect of ‘skateboards and their parts’, in particular in the United Kingdom, Spain and Italy.

22 According to settled case-law, and as is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

23 It also follows from case-law that the existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it. It has also been held that the relevant factors in assessing the acquisition of enhanced distinctiveness by use are, in particular, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see to this effect, judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 23, and of 7 June 2018, MIP Metro v EUIPO — AFNOR (N & NF TRADING), T‑807/16, not published, EU:T:2018:337, paragraph 61 and the case-law cited).

24 In the present case, the evidence submitted by the applicant in order to demonstrate the enhanced distinctiveness of its earlier mark with regard to skateboards and their parts is listed in paragraphs 23 to 25 of the contested decision. This evidence consists of sworn written statements from the applicant’s distributors, sales invoices and screenshots of promotional materials. The Board of Appeal considered this evidence to be insufficient to support the applicant’s claims. In particular, it is clear from paragraphs 31 and 32 of the contested decision that, in the opinion of the Board of Appeal, none of that evidence provided a reliable indication of the applicant’s market share in the countries in which it operates. More specifically, the Board of Appeal considered that no market data had been presented for Spain and Italy, and that the data provided for the United Kingdom regarding the number of persons engaging in skateboarding between 2006 and 2015 did not provide any relevant information in that regard. Finally, the Board of Appeal held that the evidence submitted by the applicant was not derived from independent sources, as the only statements provided in that regard came from European distributors contractually tied to the opponent and were, furthermore, ambiguous.

25 It is necessary to examine, in the light of the arguments submitted by the applicant, whether the Board of Appeal correctly found that the evidence submitted was not sufficient to support the applicant’s claims regarding the enhanced distinctiveness of its earlier mark.

26 As regards, first, the sworn written statements, it is apparent from paragraph 23, third, fifth and sixth indents, and from paragraph 25, third indent, of the contested decision that the declarations referred to are those of Mr C.A., Mr M.B. and Mr L.G.S., exclusive distributors for the applicant in the United Kingdom, Spain and Italy respectively.

27 According to the case-law, in order to assess the evidential value of a document, regard must be had to the credibility and veracity of the account which it contains. In this assessment, consideration must be given to, inter alia, the origin of the document, the circumstances in which it came into being, the person to whom it is addressed, and whether, on its face, the document appears sound and reliable (see, to that effect, judgment of 16 July 2014, Nanu-Nana Joachim Hoepp v OHIM — Stal-Florez Botero (la nana), T‑196/13, not published, EU:T:2014:674, paragraph 31 and the case-law cited).

28 Likewise, it is clear from the case-law that sworn statements by a person with close ties to the party concerned are of lower probative value than those of third parties and therefore cannot on their own constitute sufficient evidence (see judgment of 16 June 2015, H.P. Gauff Ingenieure v OHIM — Gauff (Gauff JBG Ingenieure), T‑585/13, not published, EU:T:2015:386, paragraph 28 and the case-law cited).

29 In the present case, the Court confirms the Board of Appeal’s assessment, as set out in paragraph 32 of the contested decision, that the evidential value of the statements provided, inasmuch as they came from distributors contractually tied to the applicant, was lower than if those declarations had been provided by third parties. It is apparent from the content of those declarations that the distributors were responsible for tasks including, inter alia, marketing and promotion of the applicant’s mark on their respective territories. In those circumstances it is clear that the applicant and its distributors shared common and converging interests, thereby vitiating the independence of the declarations made for the purpose of demonstrating the enhanced distinctiveness of the earlier mark. In this regard it should be noted, moreover, that, as EUIPO stated at the hearing without being challenged by the applicant, the annex provided, which related in particular to the declaration of the Spanish distributor, suggests that the content of that statement was drafted by the applicant itself and provided to the distributor for signature, as the applicant requested the distributor in the introduction to that annex to ‘please put this on your letterhead, sign, date and return to me via PDF’. For those reasons, and in the absence of any argument to the contrary put forward by the applicant, only low evidential value can be attributed to the written statements which it submitted.

30 However, the foregoing considerations do not necessarily mean that those statements, made for the purposes of establishing the enhanced distinctiveness of the earlier mark, must be disregarded. Documents whose authors have been found to have an interest in them, as in the present case, can be considered to have full evidential value where they are corroborated by other material (see, to that effect, judgments of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 57, and of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 68). However, it is clear that such additional material, intended to corroborate the content of the statements made by the applicant’s exclusive distributors, was not submitted during the administrative proceedings before EUIPO.

31 Finally, during the hearing, the applicant invoked the judgment of 15 February 2017, M. I. Industries v EUIPO — Natural Instinct (Natural Instinct Dog and Cat food as nature intended) (T‑30/16, not published, EU:T:2017:77, paragraphs 44 to 47), in which, it submitted, the Court found that a statement by the applicant’s sole distributor and importer in the European Union in that case had to be regarded as having full evidential value. It is, however, sufficient to state in this regard that, in that judgment, the Court based its conclusion on the fact that that distributor had no ties with the applicant that were capable of calling its independence into question, as the distributor was merely a client of the applicant. In the present case, by contrast, a similar conclusion cannot be drawn because, as follows from paragraph 29 above, the distributors providing the statements at issue were tied to the applicant as clients, but also performed tasks including, in particular, the marketing and promotion of the earlier mark, which, for the reasons already set out, precludes them from being regarded as independent sources.

32 It follows from the foregoing that the Board of Appeal did not err in taking the view, essentially, that those statements had low evidential value.

33 For the sake of completeness, it should be noted that the arguments put forward by the applicant in relation to the content of the sworn statements are also incapable of demonstrating that the earlier mark has enhanced distinctiveness.

34 First, the applicant emphasises that the Spanish distributor’s statement highlights that he ‘spent approximately EUR 90 000 marketing the SANTA CRUZ brand in Spain in the last five years’. Even though this amount cannot be considered to be negligible, as EUIPO itself acknowledges, an investment of EUR 18 000 per year is not in itself sufficient to demonstrate that the earlier mark was known to the Spanish public, in the absence of information on the size of the market and the market shares of that distributor in the territory concerned.

35 Further, as to the applicant’s claim that sales to wholesalers amounted to approximately EUR 2.5 million over the previous 10 years, it should be noted that that amount is an extrapolation from the data in the Spanish distributor’s statement which were provided only for the previous 5 years. In any event, it must be held that the amount of approximately EUR 250 000 per year is not such as to prove, either of itself or in relation to the remainder of the market concerned, that the earlier trade mark is known to the public, in the absence of other studies or evidence confirming, for example, the size of that market.

36 Secondly, similar conclusions to those in the foregoing paragraphs must also be drawn as regards the sworn statement made by the applicant’s Italian distributor.

37 The figures in this statement correspond to sales of EUR 94 707 in Italy between 2012 and 2015. This is not capable of demonstrating enhanced distinctiveness of the earlier mark in the absence of other evidence as to the size of the market. Furthermore, while the applicant criticises the Board of Appeal for not having considered the many screenshots from Italian social media annexed to that statement, it is clear that screenshots published as newsletters on Facebook or Instagram do not constitute conclusive evidence that the earlier mark has acquired enhanced distinctiveness through use. What matters in this regard is the effect of such activities on the recognition of the mark by the public, something which is not quantifiable in the absence of data on the degree of exposure of the public to the advertising in question.

38 Thirdly, the applicant’s assertion that, in essence, the SANTA CRUZ mark is the number one skateboard brand of its distributors in the United Kingdom and Spain, apart from the fact that it cannot be interpreted, as the applicant claims, as meaning that that mark had the highest sales in the Spanish and United Kingdom markets, is also not corroborated by any evidence from independent sources, such as information on market share, market studies or statements from professional associations or chambers of commerce and industry as required by the case-law cited in paragraph 23 above. In this regard, it must be held that the applicant has not produced any evidence in respect of the factors that are ordinarily considered to be the most relevant for the purposes of substantiating a trade mark’s recognition by the public within the meaning of that case-law.

39 It follows that, in addition to their low evidential value, the content of the written statements provided by the applicant’s distributors is not in itself capable of proving the applicant’s claims regarding enhanced distinctiveness of the earlier mark.

40 As regards, second, the sales invoices, the applicant claims that the Board of Appeal erred in failing to take proper account of the invoices submitted during the administrative proceedings before EUIPO, which, it argues, constitute ‘solid’ evidence of the earlier mark’s enhanced distinctiveness in respect of skateboards and their parts.

41 First, it should be noted that all of the invoices submitted by the applicant as evidence relate to goods which are not limited to skateboards and their parts, and, in particular, relate to goods not limited to those bearing the earlier mark. The figures put forward by the applicant in its observations therefore do not accurately reflect the amounts corresponding to each type of product, and in particular those covered by the earlier mark.

42 Secondly, and in any event, as EUIPO found, the invoices are not the most relevant evidence for the purposes of establishing awareness of the earlier mark, except for comparing the value of sales with the size of the market concerned, data which have not been provided by the applicant. Although invoices do allow the conclusion that an earlier mark has been put to genuine use, they do not in themselves allow the conclusion that such a mark enjoyed enhanced distinctiveness within the meaning of Article 8(1)(b) of Regulation 2017/1001. In the present case, the total amount reflected in those invoices, in addition to the fact that they are made out in US dollars, as the Board of Appeal correctly found in paragraph 24 of the contested decision, does not in itself justify a finding of enhanced distinctiveness in terms of the public targeted by the earlier mark.

43 As regards, third, the screenshots from the United Kingdom website pixelstv.com, which according to the applicant is very popular among ‘skaters’ in the United Kingdom, and a video concerning the 40th anniversary of the SANTA CRUZ brand, it must be observed that the popularity of that site is based on a mere assertion made by the applicant which is not corroborated by any evidence. Moreover, as EUIPO argues, it cannot be inferred from the mere fact that the brand celebrated its 40th anniversary that it has existed in the European Union for all that time, given that the applicant’s mark was founded in the United States.

44 It is apparent from the evidence submitted by the applicant in the opposition proceedings, when considered as a whole, that the Board of Appeal did not err in finding that the applicant had not provided evidence which was sufficient and appropriate for a finding that the earlier mark enjoyed enhanced distinctiveness for skateboards in the United Kingdom, Spain and Italy.

The second plea, claiming that there was an erroneous assessment as to whether there was alikelihood of confusion

46 The applicant considers that the Board of Appeal erred in its assessment of the similarity of the signs and in the overall assessment regarding the likelihood of confusion.

48 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.

49 Where 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 or services at issue in that territory. However, it must be borne in mind that, for registration of an EU trade mark to be refused, 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 judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (SKYPE), T‑183/13, not published, EU:T:2015:259, paragraph 18 and the case-law cited).

50 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 17 and the case-law cited).

51 Furthermore, this global assessment implies some interdependence between the relevant factors, and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Therefore, it is necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19).

52 According to the 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).

53 In the present case, it should be noted from the outset that, with regard to the relevant public, the Board of Appeal held, in paragraphs 43 to 45 of the contested decision, that the relevant public was made up of ‘serious skateboarders’ and the general public, with the serious skateboarders having a higher than average level of attention when purchasing the goods in question. There is therefore no reason to call into question that assessment, which, moreover, the applicant does not dispute.

54 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).

55 In the present case, as regards the comparison of the goods, it is common ground between the parties that, as is apparent from paragraph 42 of the contested decision, some of the goods covered by the earlier mark are identical to those covered by the mark applied for. The Board of Appeal’s assessment concerning the comparison of the goods in question must therefore be confirmed.

56 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 those signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

57 In a case involving a composite mark made up of both verbal and figurative elements, assessment of the similarity between two marks means more than taking just one component of a composite mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not in certain circumstances be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

58 In the present case, the Board of Appeal found in paragraph 41 of the contested decision that there was a certain similarity between the signs at issue, based on the fact that the word ‘cruz’ appeared in the word sign applied for, CRUZADE, but that this similarity was of a low level.

59 The applicant disputes that assessment and in essence asserts that, in the visual comparison, more weight should have been given to the fact that the signs share the term ‘cruz’. Furthermore, the applicant maintains that it may reasonably be assumed that consumers will overlook the first element of the earlier mark, namely the element ‘santa’, when assessing the phonetic similarity of the signs, and for that reason the difference between the pronunciation of the term ‘cruz’ and that of the word ‘cruzade’ in the contested sign is negligible. Finally, the applicant considers that, since the word ‘cruzade’ has no meaning for Portuguese- and Spanish-speaking consumers, it is likely that they will immediately discern the ‘cruz’ element of the mark applied for and will establish a conceptual link with the term ‘cross’ in the earlier mark.

60 In the first place, regarding the visual analysis, it must be stated, as the Board of Appeal noted in paragraph 36 of the contested decision, that the earlier mark is a figurative mark consisting of two distinct words, ‘santa cruz’, in a specific typeface and surrounded by a circle. The contested sign is a word sign consisting of a single term, ‘cruzade’, the first four letters of which coincide with the second word of the earlier mark. However, in the contested sign, the term ‘cruz’, which is common to both signs, runs into the term ‘cruzade’, with the result that there is no visual clue that allows the verbal component ‘cruz’ to be isolated, as the Board of Appeal correctly held.

61 In those circumstances, first, whilst it is true that a visual comparison of the signs at issue reveals that they share the common word element ‘cruz’, the visual similarity of the signs is minimal, as EUIPO correctly stated. The visual similarity due to that common word element ‘cruz’ is offset in particular by the difference in length and configuration of the signs as a whole as well as by the figurative elements of the earlier mark. First, while the contested sign consists of only one single term, the earlier mark is made up of two words, the first of which, ‘santa’, bears no similarity to the contested sign. It is clear from case-law that consumers generally pay more attention to the initial part of a mark (see judgment of 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, EU:T:2015:279, paragraph 42 and the case-law cited). Secondly, as the Board of Appeal correctly highlighted in paragraph 36 of the contested decision, although the figurative elements of a composite mark are less distinctive than its verbal elements (judgment of 6 June 2018, Uponor Innovation v EUIPO — Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 56), the effect of the figurative elements of the earlier mark, namely a specific typeface and the circle surrounding the word elements, is not completely negligible and emphasises the impression of overall visual difference between the two signs.

62 Next, although the applicant claims that the assessment of the similarity should have been carried out by the Board of Appeal solely on the basis of the dominant element ‘cruz’, it should be noted that, according to settled case-law, 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42 and the case-law cited). In the present case, even if the ‘santa’ element of the earlier mark could be considered to be less distinctive than the ‘cruz’ element, the Court cannot conclude that the ‘santa’ element is negligible in the eyes of consumers, as the applicant submits.

63 Finally, as regards the applicant’s reference to the EUIPO Guidelines, according to which, when a figurative trade mark and a word sign are compared, ‘what matters is whether the signs share a significant number of letters in the same position and whether the word element in the figurative sign is highly stylised’, it is sufficient to state that those guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). In addition, it must be noted that the word element ‘cruz’ which is shared by the two marks is not in the same position, since it is the second word in the earlier mark and the first part of the mark applied for. Moreover, it must be held that, contrary to the applicant’s submission and as has been set out in paragraph 61 above, the figurative elements of the earlier mark are stylised and accentuate the difference between the marks at issue.

64 Second, regarding the phonetic analysis, the signs share the pronunciation of the word element ‘cruz’. However, while the figurative elements of the earlier mark naturally play no part from this perspective (judgment of 22 June 2005, Plus v OHIM — Bälz and Hiller (Turkish Power), T‑34/04, EU:T:2005:248, paragraph 57), there are considerable differences between the signs overall. First, whilst the ‘cruz’ element is pronounced in both marks, so far as the mark applied for is concerned, it tends, in its English or Spanish pronunciation, to run into the ‘ade’ element. In addition, the ‘cruz’ element is not in the same position in the two signs. Whilst it makes up the initial part of the contested sign, it is in second position in the earlier mark. Finally, the two signs do not have the same number of syllables, as the earlier trade mark is made up of three syllables, whereas the contested sign contains only two. It must therefore be held that the Board of Appeal correctly found that there was also a low degree of phonetic similarity between the signs as the phonetic differences offset and neutralise the identity due to the presence of the word element ‘cruz’ which the signs share.

65 Moreover, the applicant’s argument that the relevant public will take no account of the term ‘santa’ when pronouncing the earlier mark must be rejected. As mentioned in paragraph 62 above, the ‘santa’ element cannot be disregarded in the comparison of the signs. Furthermore, this relates to the initial part of the earlier mark, to which consumers generally pay greater attention, as mentioned in paragraph 61 above.

66 Third, regarding the conceptual analysis, the applicant submits that, since the ‘cruzade’ sign has no meaning for Portuguese- and Spanish-speaking consumers, it is likely that those consumers will immediately discern the ‘cruz’ element of the mark applied for and will make a conceptual link with the term ‘cross’ in the earlier mark.

67 However, the assessment of the Board of Appeal that the marks at issue have no conceptual link must be upheld. As pointed out by EUIPO, it is unlikely that the relevant consumer would make such a conceptual link since the CRUZADE sign is meaningless overall. Even if some Spanish or Portuguese consumers were able to pick out the term ‘cruz’ in the marks at issue in the sense argued by the applicant, they could also understand the ‘SANTA CRUZ’ sign as a reference to a geographical location, in particular the capital of the Spanish island of Tenerife.

68 It follows that the applicant has not succeeded in demonstrating that the Board of Appeal erred in finding, in paragraph 41 of the contested decision, that the signs at issue have only a low level of similarity.

69 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 lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

70 In paragraph 54 of the contested decision, the Board of Appeal found that the presence of the word element ‘cruz’ in both marks did not, in this case, permit a finding of a likelihood of confusion even for the identical goods. It took the view that the signs SANTA CRUZ and CRUZADE would be remembered by consumers as a whole and without separating the word element ‘cruz’ from the rest of the signs.

71 The applicant criticises the Board of Appeal for having failed to carry out a global assessment of the likelihood of confusion and claims that it erred in ruling out any likelihood of confusion between the marks at issue.

72 In this regard, given the low level of visual and phonetic similarity, and the absence of any conceptual similarity, between the marks at issue, it must be held that, in a global assessment of those factors and in the light of the principle of interdependence of the factors to be taken into account referred to in paragraph 69 above and of the consumer’s imperfect recollection of the marks at issue, the Board of Appeal was correct to find in paragraph 46 of the contested decision that there was no likelihood of confusion in the mind of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.

73 That finding cannot be called into question by the applicant’s arguments. First, contrary to what the applicant claims, it is clear from paragraphs 46 to 54 of the contested decision that the Board of Appeal carried out a global assessment of the likelihood of confusion between the marks at issue and duly considered all of the relevant factors.

74 Secondly, even though some of the goods covered by the marks at issue are identical, the assessment of the Board of Appeal that, essentially, that partial identity of the goods in question is offset and neutralised by the low level of similarity between the signs must be confirmed. As regards the sign applied for, the ‘cruz’ element is amalgamated into the rest of the sign, given that there is no reason to consider that that element will be separated from the term ‘cruzade’. As regards the earlier mark, the terms ‘santa cruz’ will be read as a whole.

75 Thirdly, in so far as the earlier mark cannot be regarded as enjoying enhanced distinctiveness, in accordance with the finding in paragraph 44 above, the assessment of the likelihood of confusion cannot be modified as claimed by the applicant.

76 In the light of the foregoing, it must be held that the Board of Appeal did not err in finding that any likelihood of confusion between the marks at issue under Article 8(1)(b) of Regulation 2017/1001 could be excluded.

77 The second plea must therefore be rejected, and consequently the action must be dismissed in its entirety.

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

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> NHS v EUIPO - HLC SB Distribution (CRUZADE) (EU trade mark - Judgment) [2019] EUECJ T-378/18 (19 September 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T37818.html Cite as: [2019] EUECJ T-378/18, EU:T:2019:620, ECLI:EU:T:2019:620

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