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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Starwe Global v EUIPO - Mirus Beheer (VA VIVAIA) (EU trade mark - Judgment) [2025] EUECJ T-1090/23 (26 March 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T109023.html Cite as: ECLI:EU:T:2025:329, EU:T:2025:329, [2025] EUECJ T-1090/23 |
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JUDGMENT OF THE GENERAL COURT (First Chamber)
26 March 2025 (*)
( EU trade mark - Invalidity proceedings - EU figurative mark VA VIVAIA - Earlier EU word mark VIA VAI - Relative ground for invalidity - Likelihood of confusion - Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001 )
In Case T‑1090/23,
Shenzhen Starlink Network Technology Co., Ltd, established in Shenzhen (China), represented by M. Rieger-Jansen and N. Dorenbosch, lawyers, authorised to replace Starwe Global Holding Inc.,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Mirus Beheer BV, established in Kaatsheuvel (Netherlands),
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni (Rapporteur), acting as President, M. Brkan and S.L. Kalėda, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 8 October 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Shenzhen Starlink Network Technology Co., Ltd, seeks the annulment and the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 September 2023 (Case R 2306/2022-5) ('the contested decision').
Background to the dispute
2 On 22 June 2021, the other party to the proceedings before the Board of Appeal, Mirus Beheer BV, filed an application with EUIPO for a declaration of invalidity of the EU trade mark registered on 20 October 2020, following an application filed on 4 July 2020 by the applicant's predecessor in title, Starwe Global Holding Inc., in respect of the following figurative sign:
3 The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were in Class 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 corresponded to the following description: 'Footwear; boots; half-boots; slippers; sandals; shoes; ankle boots; insoles; ballet shoes; leisure shoes; sneakers; women's shoes; ladies' boots; winter boots; socks; work shoes; mules; dress shoes; thong sandals; beach shoes; athletics shoes; slip-on shoes; flat shoes'.
4 The application for a declaration of invalidity was based on, inter alia, the earlier EU word mark VIA VAI, filed on 9 July 2014 and registered on 7 January 2015, covering, inter alia, goods in Class 25 and corresponding to the following description: 'Clothing, footwear and headgear'.
5 The ground relied on in support of the application for a declaration of invalidity was, in particular, that set out in Article 60(1)(a) of 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), read in conjunction with Article 8(1)(b) thereof.
6 Following a request made by Starwe Global Holding before the Cancellation Division, EUIPO invited the other party to the proceedings before the Board of Appeal to furnish proof of genuine use of the earlier mark relied on in support of the application for a declaration of invalidity. The other party to the proceedings before the Board of Appeal complied with that request within the prescribed period.
7 On 27 September 2022, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof.
8 On 24 November 2022, Starwe Global Holding filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion on the part of the relevant public. The Board of Appeal held, in essence, first, that, for footwear, with the exception of insoles, which are principally aimed at the general public, but may also be aimed at a professional public, the relevant public is the general public of the European Union.
10 Second, the Board of Appeal pointed out, in essence, that the goods covered by the contested mark are identical to the 'women's shoes' of the earlier mark, with the exception of 'socks' and 'insoles', which display at the very least an average degree of similarity with the 'women's shoes' covered by the earlier mark.
11 Third, the Board of Appeal indicated, in essence, with regard to comparing the signs at issue, that they display a below-average degree of visual similarity and an average degree of phonetic similarity, that the conceptual comparison remains neutral and that the inherent distinctiveness of the earlier mark is considered to be normal.
12 Fourth, the Board of Appeal, which limited its assessment to the relevant Polish-speaking and Dutch-speaking public, considered, in essence, with regard to the global assessment of the likelihood of confusion, that such a likelihood existed on the part of that public in respect of all the goods covered by the contested mark.
Forms of order sought
13 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– dismiss the application for a declaration of invalidity;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
The application for replacement of a party
15 By letter of 26 November 2024, Shenzhen Starlink Network Technology stated that it was now the proprietor of the contested mark and that it wished to replace Starwe Global Holding pursuant to Articles 174 and 175 of the Rules of Procedure of the General Court.
16 Under Article 176(1) to (3) of the Rules of Procedure, once the parties have been notified of the application for replacement and have had the opportunity to submit their observations, the decision on that application is to take the form of a reasoned order of the President or is to be included in the decision closing the proceedings.
17 In accordance with Article 174 of the Rules of Procedure, where an intellectual property right affected by the proceedings has been transferred to a third party by a party to the proceedings before the Board of Appeal of EUIPO, the successor to that right may apply to replace the original party in the proceedings before the General Court. Article 176(5) of the Rules of Procedure specifies that, if the application for replacement is granted, the successor to the party who is replaced must accept the case as he finds it at the time of that replacement. He is to be bound by the procedural documents lodged by the party whom he replaces.
18 Furthermore, it is apparent from Articles 20 and 27 of Regulation 2017/1001 that, after the transfer of an EU trade mark has been entered in the EUIPO Register, the successor in title may invoke the rights arising from that mark.
19 In the present case, Shenzhen Starlink Network Technology, the new proprietor of the rights related to the contested mark, informed the Court of the transfer of the contested mark and requested that it replace Starwe Global Holding in the present proceedings. It produced evidence that Starwe Global Holding had transferred the contested mark to it on 18 October 2024; it also produced an extract from EUIPO's website attesting to the fact that the transfer of that mark had been entered in EUIPO's Register on 14 November 2024.
20 In those circumstances, given that the parties have been heard and have not opposed the application for replacement, Shenzhen Starlink Network Technology is to be authorised to replace Starwe Global Holding as applicant in the present case.
The claim for annulment
21 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, claiming that the Board of Appeal, according to the first part of that plea, incorrectly assessed the similarity of the signs at issue and, according to the second part of that plea, erred in finding that there was a likelihood of confusion.
22 EUIPO disputes the applicant's arguments.
23 Under Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, upon application by the proprietor of an earlier mark, an EU trade mark is to be declared invalid 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.
24 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
25 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
26 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 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 2017/1001 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).
The relevant public
27 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).
28 In the present case, the Board of Appeal found that the goods in Class 25 covered by the signs at issue, namely footwear, were not particularly expensive and were not of a technical or protective nature, but that they were, by their nature, everyday consumer goods intended for the general public, whose level of attention – even as regards the fashion-conscious part of that public – is average. The Board of Appeal also stated that the insoles referred to in the application for registration of the contested mark were principally aimed at the general public, but that, as they could also be fixed inner soles in footwear, they could also be aimed at a professional public.
29 In the second part of its single plea in law, the applicant disputes the level of attention applied by the Board of Appeal. It submits, in essence, that consumers in the footwear and fashion sector are less likely to be confused in so far as they are used to discerning between numerous different trade marks in a crowded marketplace, that the Board of Appeal did not take account of the fact that women are more attentive when purchasing shoes, and that brand loyalty plays an important role in relation to women's shoes in Class 25.
30 EUIPO disputes the applicant's arguments.
31 In that regard, it should be noted, as has been stated in paragraph 27 above, that the level of attention of the relevant public may vary according to the category of goods or services in question. However, it is not sufficient for an applicant to assert that, in a particular sector, the relevant public is particularly attentive without substantiating that claim with facts or evidence. Such a level of attention on the part of the relevant public cannot be presumed, without any evidence, with regard to all the goods in question (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 43).
32 In the present case, in the first place, it should be noted, as has been observed by EUIPO, that the applicant has not proven its claim that women are more attentive when purchasing footwear. Furthermore, it is apparent from the case-law that items of 'footwear' in Class 25 are considered to be everyday consumer goods intended for the general public, which will display an average level of attention when purchasing them (judgment of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep), T‑20/19, EU:T:2020:309, paragraph 40). In addition, as stated by the Board of Appeal, the goods at issue are not, by their nature, particularly expensive and are not of a technical or protective nature.
33 In the second place, as regards the alleged loyalty of consumers to footwear brands, it should be noted that the applicant's claims on that point have also not been proven by the applicant. Furthermore, contrary to what the applicant appears to suggest by referring to the judgments of 3 July 2013, GRE v OHIM – Villiger Söhne (LIBERTE american blend against a blue background) (T‑205/12, not published, EU:T:2013:341), and of 19 December 2019, Japan Tobacco v EUIPO – I.J. Tobacco Industry (I.J. TOBACCO INDUSTRY) (T‑743/18, not published, EU:T:2019:872), it is not appropriate to draw an analogy between 'women's footwear' in Class 25 and 'tobacco products, cigarettes and smokers' articles' in Class 34, as they are not identical or similar goods which could usefully be compared in the present case.
34 The Board of Appeal was therefore correct in finding that the level of attention of the relevant public was average.
35 Consequently, the applicant's arguments regarding the relevant public must be rejected.
The comparison of the goods
36 The Board of Appeal found that all the goods at issue were identical to the 'women's shoes' of the earlier mark, with the exception of 'socks' and 'insoles', which display an average degree of similarity to 'women's shoes'.
37 That assessment has not been contested by the applicant.
The comparison of the signs
38 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
39 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
40 In the present case, as the Board of Appeal pointed out in paragraphs 63 and 64 of the contested decision, the contested mark is a figurative mark consisting of the word element 'vivaia' written in capital letters and a device placed inside a circle to the left of that word element. The device can be perceived as the combination either of two capital letters 'v', which are superimposed and placed in opposite position, or of the capital letters 'v' and 'a' in the same superimposed opposition position. Alternatively, it can be perceived as an abstract device. The earlier mark is a word mark consisting of the word elements 'via' and 'vai'.
41 Before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal's assessment of the distinctive and dominant elements of the contested mark.
– The distinctive and dominant elements of the contested mark
42 According to the case-law, in determining 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 in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35).
43 Where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name of the trade mark than by describing its figurative element (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
44 With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
45 As a preliminary point, as regards the earlier mark, the Board of Appeal noted that (i) as a word mark, it had no dominant element, (ii) the words 'via vai' had no clear meaning for the relevant Polish-speaking and Dutch-speaking public, and (iii) that association was distinctive in relation to the goods covered by the earlier mark.
46 As regards the contested mark, the Board of Appeal found that the word element 'vivaia' had no clear meaning for the relevant Polish-speaking and Dutch-speaking public. It found that, even though the figurative element of the contested mark was visually relevant, the use of circular backgrounds was quite common and generally served to highlight other elements, that the device at issue could be perceived (i) as the intersection either of two capital letters 'v', superimposed and placed in opposite position, or of the capital letters 'v' and 'a' (or 'a' and 'v'), in the same superimposed opposition position, or (ii) as an abstract device and, lastly, that a large part of the relevant public would not attempt to decipher that device. The Board of Appeal added that, in order to identify the capital letters 'v' and 'a' in the device, the relevant public would have to use its imagination in order to be able to decipher that device and perceive it as representing those letters. In addition, it found that the fact that, in the notice of appeal, the word element of the contested mark was read as 'va vivaia' did not necessarily mean that the relevant public would perceive the contested sign in that way.
47 The applicant submits, in essence, first, that, in the contested decision, the Board of Appeal failed to take sufficient account of the figurative element at the beginning of the contested mark, second, that the Board of Appeal should not have applied the principle that, where a mark is composed of word and figurative elements, the consumer will pay greater attention to the word element, and, third, that the Board of Appeal dissected that figurative element without taking into account the overall impression created by the contested mark.
48 EUIPO disputes the applicant's arguments.
49 In the present case, it should be noted that, as the Board of Appeal correctly found in paragraph 72 of the contested decision, when a mark is composed of word and figurative elements, the consumer is likely to focus primarily on the word element to designate that mark. In addition, the Board of Appeal was also correct in finding, in paragraphs 73 and 74 of the contested decision, that, although the figurative element is visually relevant, the use of circular backgrounds is quite common and generally serves to highlight other elements, that that figurative element may be perceived in several ways and that the relevant public should use its imagination in order to decipher the device and perceive it as representing the capital letters 'v' and 'a'.
50 That finding is not called into question by the applicant's arguments. As regards the applicant's first argument that the Board of Appeal failed to take sufficient account of the figurative element at the beginning of the contested mark, it must be noted, as has been observed by EUIPO, that it is apparent from the reasoning set out in paragraphs 71 to 85 of the contested decision that the Board of Appeal took sufficient account of the presence and impact of that figurative element. Furthermore, as EUIPO correctly states, the fact that the Board of Appeal attached less importance to the figurative element than the applicant wished cannot mean that the Board of Appeal disregarded that element. In addition, as regards the applicant's second argument concerning the fact that the Board of Appeal should not have applied the principle that, where a mark is composed of word and figurative elements, the consumer will pay greater attention to the word element, because such a principle is relevant only in the context of a phonetic comparison, it must be noted, as has been recalled in paragraph 43 above, that that principle is also relevant in determining, as in the present case, the impact of a figurative element in the analysis of the distinctive and dominant elements of the contested mark.
51 Moreover, while it is clear from the case-law that the word element of a sign does not systematically have a predominant impact (judgment of 31 January 2013, K2 Sports Europe v OHIM – Karhu Sport Iberica (SPORT), T‑54/12, not published, EU:T:2013:50, paragraph 40), the findings set out in paragraph 49 above do not, in the present case, support a finding that the word element of the contested mark is devoid of such an impact.
52 As regards the third argument, relating to the fact that the Board of Appeal dissected the figurative element of the contested mark without taking into account the overall impression created by that mark, it should be noted that, as regards the 'dissection' of that figurative element, the contested decision is not inconsistent, given that the Board of Appeal merely stated, first, that a large part of the relevant public would not attempt to decipher the device and, second, that, if that public were to perceive it as an intersection of letters, it is not clear which particular intersection would be perceived. In addition, it is apparent in particular from paragraphs 79 and 81 of the contested decision that the Board of Appeal did not exclude the figurative element from its analysis.
53 Consequently, contrary to the applicant's assertions, the assessment of the similarity between the signs at issue was not based on an incorrect examination of the distinctive and dominant elements of the contested mark.
54 The applicant's arguments in that regard must therefore be rejected.
– Visual similarity
55 The applicant claims, in essence, in the first place, that the mere presence of the letters 'v', 'i' and 'a' in the signs at issue, which are the same length, is not sufficient to permit a finding of visual similarity. It claims that, although the signs at issue contain the same letters, their structure is completely different. In the second place, it claims that the general public will perceive the earlier mark as consisting of two separate word elements and will not proceed to split up the first word further. In the third place, the applicant claims that the figurative element of the contested mark enhances the dissimilarity between the signs, that the Board of Appeal did not sufficiently take that element into account, and that the mere presence of the group of letters 'va' in the earlier mark would not lead the average consumer to associate the figurative element of the contested mark with the earlier mark.
56 EUIPO disputes the applicant's arguments.
57 In that regard, it should be borne in mind that the average consumer only rarely has the chance to compare the various signs directly and must therefore rely on his or her imperfect recollection of them (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 60, and of 23 March 2022, Vetpharma Animal Health v EUIPO – Deltavit (DELTATIC), T‑146/21, not published, EU:T:2022:159, paragraph 121). Moreover, as has been recalled in paragraph 38 above, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.
58 In the present case, the two word elements of the earlier mark, on the one hand, and the word element of the contested mark, on the other, consist of the letters 'v', 'i' and 'a', which all appear twice in each of the signs at issue. Those signs begin with the group of letters 'vi', contain the letter 'v' in the middle followed by the letter 'a' and contain the sequences of letters 'i', 'a' and 'a', 'i'. Accordingly, the relevant public will recollect that repetition of the same letters. In that regard, the fact that the earlier mark includes a space after the first three letters is not sufficient to offset the visual similarity arising from the common presence of the letters 'v', 'i' and 'a'. In addition, as the Board of Appeal correctly found, the difference between the signs at issue resulting from the presence of the figurative element of the contested mark does not outweigh the similarity of those signs caused by their word elements.
59 Consequently, the Board of Appeal did not make an error of assessment in finding that the signs at issue displayed, in essence, a low degree of visual similarity.
60 The applicant's arguments cannot call that finding into question. In the first place, it is true, as the applicant submits, that the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, and that it is therefore inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. Furthermore, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraphs 81 and 82). However, in the present case, the signs at issue begin with the group of letters 'vi' and consist of the three letters 'v', 'i' and 'a', which are each present twice in each of those signs. As has been recalled in paragraphs 38 and 57 above, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Thus, the partially different structure of the signs at issue cannot eliminate the visual similarity.
61 In the second place, as regards the existence of two separate word elements in the earlier mark, it should be noted, as has been observed by EUIPO, that their plurality is not sufficient to counteract the similarities noted in paragraph 58 above, with the result that, on the basis of the overall impression produced by the signs at issue, it must nevertheless be concluded that there is a visual similarity between those signs.
62 In the third place, as regards the applicant's argument relating to the figurative element, the presence of the group of letters 'va' in the contested mark and the association of that group of letters with that figurative element, it should be noted, first, that that element was indeed taken into account in the analysis of the visual similarity in the contested decision and, second, as EUIPO points out, that it is not the mere presence of the group of letters 'va' which gives rise to a visual similarity between the marks at issue, but the overall visual impression which they produce in the eyes of the relevant public.
– Phonetic similarity
63 The applicant claims, in essence, in the first place, that (i) the Board of Appeal incorrectly held that the beginnings of the word elements of the signs at issue were identical and (ii) the mere fact that those signs contain the same letters cannot automatically lead to a finding of phonetic similarity. In the second place, it maintains that the Board of Appeal failed to consider the rhythm and pronunciation of the word elements. In the third place, it submits that the space in the middle of the sign of the earlier mark creates a pause in pronunciation.
64 EUIPO disputes the applicant's arguments.
65 In that regard, it should be noted that the Board of Appeal was correct in finding that a large part of the relevant public would not attempt to pronounce the device of the contested mark on account of the numerous ways in which it could be perceived and that even if part of the public perceived that device as the intersection of the capital letters 'v' and 'a', it would be unlikely that those letters would be pronounced in addition to the word element 'vivaia'. Furthermore, the word elements 'via' and 'vai', on the one hand, and the word element 'vivaia', on the other, are of the same length and include the repetition of the same letters, even though those letters are not placed in exactly the same order. Consequently, the Board of Appeal was correct in finding that the signs at issue displayed an average degree of phonetic similarity.
66 That finding is not called into question by the applicant's arguments. In the first place, the beginnings of the signs at issue are in fact composed of the letters 'v' and 'i'. Furthermore, those signs include the same letters which are repeated. In the second place, the rhythm and pronunciation of the word elements were taken into account by the Board of Appeal, which stated that those elements were of the same length and included the repetition of the same letters. In the third place, as EUIPO states, the space between the words of the earlier mark has no bearing on the phonetic similarity of those signs.
67 Consequently, the Board of Appeal was correct in finding that the signs at issue displayed an average degree of phonetic similarity.
– Conceptual similarity
68 The applicant submits, in essence, in the first place, that the Board of Appeal misapplied the principle of visual and phonetic similarities being offset by a conceptual difference and that it should have examined the conceptual similarity by comparing the concepts evoked by each of the signs at issue, irrespective of the fact that those signs are sufficiently clear to directly offset any visual and phonetic similarity. In the second place, it submits that, although the contested mark and the earlier mark have no dictionary-derived meaning for the relevant Polish-speaking and Dutch-speaking public, that public will perceive the first word element of the earlier mark, 'via', as designating a route, the second word element of that mark, 'vai', as evoking the concept of 'to go through' and the word element 'vivaia' of the contested mark as having the meaning of 'life' or 'to live', having regard to the meaning generally given to the term 'viva' by the European public.
69 EUIPO disputes the applicant's arguments.
70 In that regard, it must be borne in mind that, where neither of the signs at issue has a meaning taken as a whole, it must be held that a conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).
71 In the present case, it should be noted that the Board of Appeal correctly found that the word elements 'via' and 'vai' of the earlier mark had no clear meaning for the relevant Polish-speaking and Dutch-speaking public and that the same was true of the word element 'vivaia' of the contested sign.
72 That finding cannot be called into question by the applicant's arguments. In the first place, while the applicant submits that the Board of Appeal misapplied the counteraction theory, it is sufficient to note that, in finding that a conceptual comparison of the signs at issue was not possible, the Board of Appeal did not counteract the visual and phonetic similarities of those signs by taking into account conceptual differences and therefore did not apply that theory. That argument must therefore be rejected as having no factual basis. In the second place, it should be noted, as has been observed by EUIPO, that the Board of Appeal did not act in breach of the principle referred to in paragraph 70 above, because a conceptual comparison is possible only if at least one of the signs has a clear and specific meaning, and the Board of Appeal found that that was not the situation in the present case. In the third place, as regards the arguments relating to the meaning of the word elements of the earlier mark and of the contested mark, it should be noted that, assuming that the word elements 'via' and 'vai' and the term 'viva' are perceived by the relevant Polish-speaking and Dutch-speaking public in the sense put forward by the applicant, the signs at issue, namely 'via vai' and 'vivaia' respectively, have no clear meaning for the relevant public. As has been recalled in paragraph 38 above, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Accordingly, the applicant's arguments as to the meaning of the word elements 'via' and 'vai' and of the word 'viva', which represent only part of the signs 'via vai' and 'vivaia', cannot be accepted.
73 Consequently, the Board of Appeal did not make an error of assessment in finding that a conceptual comparison of the signs at issue was not possible.
74 In the light of all of those factors, the first part of the applicant's single plea in law must be rejected.
The likelihood of confusion
75 The Board of Appeal found, in essence, that, in view of the similarities between the goods at issue and between the signs at issue and the normal inherent distinctiveness of the earlier mark, there was a likelihood of confusion for a significant part of the relevant Polish-speaking and Dutch-speaking public.
76 The applicant submits, first, that the Board of Appeal applied the principle of interdependence of the relevant factors mechanically without taking into account all of those factors and, second, that it attached too much importance to the phonetic similarities of the signs at issue, whereas the visual aspect of those signs plays a more important role. It adds that the Board of Appeal incorrectly assumed that there would still be a likelihood of confusion, even though the relevant public has a very high level of attention as regards insoles.
77 EUIPO disputes the applicant's arguments.
78 In that regard, it must be borne in mind that 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).
79 Furthermore, it must be borne in mind that in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs in question do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. Accordingly, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (judgment of 10 February 2021, El Corte Inglés v EUIPO – MKR Design (PANTHÉ), T‑117/20, not published, EU:T:2021:81, paragraph 60).
80 In the present case, it should be borne in mind that the signs at issue display not only a low degree of visual similarity, but also an average degree of phonetic similarity and that, in the absence of a clear and precise meaning for the relevant public in the present case, their conceptual comparison has no bearing on the presence of a likelihood of confusion. In addition, the applicant does not dispute that the earlier mark displays a normal degree of distinctiveness.
81 Accordingly, in the light of the interdependence of the various factors, namely the identity or similarity of the goods in question, the visual and phonetic similarity of the signs at issue and the normal inherent distinctiveness of the earlier mark and in the light of the average level of attention of the relevant public, the Board of Appeal was correct in finding and, in particular, did not, contrary to the applicant's assertions, act in breach of the principle of interdependence of factors in so doing, that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for a significant part of the Polish-speaking and Dutch-speaking public for all the goods covered by the contested mark.
82 As regards the applicant's argument that the visual aspect should be more important in assessing the likelihood of confusion, it should be borne in mind that the visual, phonetic and conceptual aspects of the signs at issue do not always have the same weight, and it is appropriate to examine the objective conditions under which the marks may be present on the market. The importance of elements of similarity or dissimilarity between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by those signs are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, the visual similarity between the signs will, as a general rule, be more important (see judgment of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 68 and the case-law cited).
83 In the present case, the Board of Appeal, after recalling in paragraphs 92 and 93 of the contested decision the principles referred to in paragraph 82 above, correctly found that the signs at issue displayed not only a low degree of visual similarity, but also an average degree of phonetic similarity. In that regard, while, in the present case, the visual similarity between the signs at issue may be of greater importance, in accordance with the case-law cited in paragraph 82 above, the applicant misreads that case-law when it concludes from it that, as a corollary, the phonetic aspect is of little or no relevance in that context. Moreover, the applicant's argument is based on the incorrect premiss that the signs at issue are visually different, when, as has been pointed out in paragraph 59 above, there was at least a low degree of visual similarity between them. The applicant's argument must therefore, in any event, be rejected.
84 In addition, the applicant's arguments relating to the insoles cannot be accepted, as the applicant has not adduced any evidence capable of calling into question the Board of Appeal's finding that there was a likelihood of confusion even with regard to those goods, in respect of which the relevant public is likely to have a high level of attention.
85 Consequently, taking into account all the relevant factors, the Board of Appeal was fully entitled to find that there was a likelihood of confusion for a large part of the relevant public.
86 Accordingly, the second part of the applicant's single plea in law must be rejected.
87 In the light of all the foregoing considerations, as neither of the parts of the single plea in law relied on by the applicant is to be upheld, that plea must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
88 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings.
89 As a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Authorises Shenzhen Starlink Network Technology Co., Ltd to replace Starwe Global Holding Inc. as applicant;
2. Dismisses the action;
3. Orders Shenzhen Starlink Network Technology to pay the costs.
Mastroianni | Brkan | Kalėda |
Delivered in open court in Luxembourg on 26 March 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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