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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Allsize v EUIPO - Sjoklæðagerðin (North 56-4) (EU trade mark - Judgment) [2025] EUECJ T-209/24 (09 April 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T20924.html Cite as: ECLI:EU:T:2025:381, EU:T:2025:381, [2025] EUECJ T-209/24 |
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JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
9 April 2025 (*)
( EU trade mark - Invalidity proceedings - EU word mark North 56-4 - Earlier international registration designating the European Union - Word mark 66°NORTH - Relative ground for invalidity - Likelihood of confusion - Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001 )
In Case T‑209/24,
Allsize Company A/S, established in Aarhus (Denmark), represented by M. Hansen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sjóklæðagerðin hf., established in Garðabær (Iceland), represented by P. Olson, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, P. Zilgalvis (Rapporteur) and E. Tichy-Fisslberger, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
having regard to the Court's written question to the parties,
further to the hearing on 23 January 2025, in which the intervener did not participate,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Allsize Company A/S, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 February 2024 (Case R 1991/2023-5) ('the contested decision').
Background to the dispute
2 On 6 July 2022, the intervener, Sjóklæðagerðin hf., filed with EUIPO an application for a declaration of invalidity of the EU word mark North 56-4, registered on 5 August 2021 under No 18449355 following an application filed on 8 April 2021, under Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European trade mark (OJ 2017 L 154, p. 1).
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: 'Clothing, footwear, headgear'.
4 The application for a declaration of invalidity was filed for all the goods covered by the contested mark as referred to in paragraph 3 above and was based in particular on the international registration designating the European Union of the word mark 66°NORTH, registered on 28 May 2015 under No 1281054, designating goods in Class 25 corresponding to the following description: 'Clothing, T-shirts, shirts, tops, sweatshirts, sweatpants, pants, shorts, trousers, vests, parkas, pullovers, anoraks, coats, jackets, jacket hoods, sweaters, coveralls, jumpers, underwear, gloves, snowboarding gloves, ski gloves, neck gaiters, gaiter straps, mittens, leg gaiters and ankle gaiters, knitwear, jerseys, children's clothing, dresses; clothing for gymnastics, outerwear, one piece shell suits for adults and children, shells, ski wear, overalls, bib pants, bib overalls, snow pants, wind-resistant jackets, snow suits; rainwear, raincoats, waterproof clothing; leggings; ponchos; pajamas; skirts; uniforms; footwear; socks, stockings, tights, shoes, athletic shoes, sneakers, hiking shoes, boots, hiking boots, ski boots, boots for snowboarding, sandals; headgear; caps, hats, headbands, scarves, bandanas, balaclavas, visors, ear muffs, skull caps; belts.'
5 The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 60(1)(a) of Regulation 2017/1001, in conjunction with Article 8(1)(b) of that regulation.
6 On 31 July 2023, the Cancellation Division upheld the application for a declaration of invalidity and declared the contested mark invalid.
7 On 20 September 2023, the applicant filed an appeal with EUIPO against the decision of the Cancellation Division.
8 By the contested decision, the Board of Appeal dismissed the appeal, holding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It took the view that the goods in question were identical, that the marks at issue had an average degree of visual similarity, at least a low degree of phonetic similarity and that they were conceptually very similar for the part of the public that understood the word 'north'. As regards that word in particular, the Board of Appeal held that it was not directly descriptive of the origin or purpose of the goods in question, with the result that its distinctiveness was average both for the part of the public that did understand it and for the part that did not understand it.
Forms of order sought
9 The applicant claims that the Court should annul the contested decision and dismiss the application for a declaration of invalidity in its entirety.
10 EUIPO contends that the Court should:
– dismiss the action in the event that the Court considers that the element 'north' has normal distinctive character;
– order the applicant to pay the costs incurred in the event that a hearing is held;
– in the alternative, annul the contested decision in the event that the Court considers that the distinctiveness of the element 'north' is weak.
11 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including the costs incurred in the proceedings before the Cancellation Division and the Board of Appeal.
12 During the hearing, in response to a question put by the Court, the applicant supplemented its form of order sought by requesting that EUIPO and the intervener be ordered to pay the costs.
Law
13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it claims that in the present case there is no likelihood of confusion within the meaning of the abovementioned provision given that the element common to both marks, namely the element 'north', is descriptive and, as a result, has a very weak distinctive character for the goods in question.
14 EUIPO and the intervener dispute the applicant's arguments.
15 Under Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, on application by the proprietor of an earlier mark, the EU trade mark registered 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. Furthermore, under Article 8(2)(a)(iv) of that regulation, 'earlier trade marks' means, inter alia, 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.
16 The risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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 the similarity 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).
17 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
18 It is in the light of the abovementioned principles that the plea in law must be examined.
19 As a preliminary point, it should be noted that the parties do not expressly call into question the Board of Appeal's assessments of the relevant territory, the relevant public, the level of attention of that public and the comparison of the goods in question.
20 As regards, first, the relevant territory and the relevant public, the Board of Appeal found that the goods in question were aimed at the general public of the European Union displaying an average level of attention.
21 As regards, second, the comparison of the goods in question, the Board of Appeal found that they were identical.
The comparison of the signs
22 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
The understanding and distinctive character of the elements making up the marks at issue
23 The applicant claims that the element 'north' lacks distinctiveness or, at best, has a low degree of distinctiveness. In its view, when used in connection with articles of clothing, that element would be understood by the relevant public as a description of the geographical origin of the goods, namely the north of Europe. It adds that, since the term 'north' is associated with the northern European countries and the colder climates of those countries, the relevant public of the European Union will perceive that term affixed to articles of clothing as an indication that those articles originate from the region in question and are adapted to colder climates. That finding applies to both Denmark and Iceland.
24 Furthermore, the applicant notes that the Vestre Landsret (High Court of Western Denmark) established in a recent judgment that the terms 'northern' and 'nordic' served as descriptions of geographic origins. It adds, contesting the position of the Board of Appeal, that that judgment should be considered precedent in the current proceedings, and that parallel litigation and European Union rules on lis pendens mean that the Court should at least take the Danish judgment into account when making its decision.
25 EUIPO contends that the applicant's arguments cannot call into question the Board of Appeal's assessment, which explicitly and comprehensively stated that the word 'north', even if understood, was, in itself, too vague to be considered descriptive of the goods in question and lacked distinctiveness. The applicant is merely repeating arguments already rebutted in the contested decision. As regards, in particular, the relevance of the judgment of the Vestre Landsret (High Court of Western Denmark), EUIPO states that the applicant has not put forward any evidence that would call into question the Board of Appeal's assessment.
26 The intervener agrees with the Board of Appeal's assessments and argues that it cannot be concluded that the word 'north' will be directly and unequivocally perceived as descriptive or non-distinctive in respect of the goods in question. In particular, it argues that there is no reason to believe that the public will associate the element 'north' with northern Europe or the Scandinavian region. In that regard, it adds that the applicant has not proven that those regions are renowned – or even known – for their clothing, footwear and headgear manufacturing traditions or that the relevant public is accustomed to perceiving the names of the cardinal points as an indication of origin. Like the Board of Appeal, the intervener is of the view that the term 'north' refers to a direction or an area situated in the north and not to a climate. The climate is not the same in all the countries of northern Europe, therefore, neither that region nor Scandinavia can be unequivocally associated with colder temperatures than in other regions. Moreover, the climate is only one of the variables taken into consideration when purchasing the goods in question.
27 Furthermore, the intervener maintains that the combination of the elements in the earlier mark denotes only an incomplete geographical coordinate which, in accordance with the case-law, does not allow the identification of any specific territory. In addition, the intervener deduces from the EUIPO register that the names of the cardinal points are generally considered to be distinctive and non-descriptive. As regards the decision of the Vestre Landsret (High Court of Western Denmark), relied on by the applicant, the intervener states in particular that that decision concerns entirely different marks to the ones at issue in the present case, so its value is not significant.
28 In that regard, it must be borne in mind that the distinctive character of an element making up a mark depends on 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 (see judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).
29 In the present case, as regards, first of all, the meaning and understanding of the word 'north', the Board of Appeal noted that it was a basic English word that refers to one of the four cardinal points of the compass which will be understood not only in the Scandinavian countries, Cyprus, the Netherlands, Finland, but also by the German-speaking public and the public in Portugal. The Board of Appeal also added that a significant proportion of consumers from other Member States of the European Union, such as the Czech Republic, Spain and Slovakia, did not know the English language and, consequently, although it might know the meaning of the word 'north' in the abstract, would not immediately perceive the concept conveyed by it in the context of the goods in question.
30 Next, as regards the distinctive character of the element 'north', the Board of Appeal found that it did not denote a clear and precise area or location which could be easily determined and, consequently, did not refer to a specific territory that could be regarded as a geographical indication and a place of production of the goods at issue in order to be regarded as descriptive. As regards the applicant's argument that the term 'north' would be understood as information concerning the intended purpose of the goods in question in the sense that the clothing, footwear and headgear are specifically adapted to a cold climate such as, for example, in northern Europe, the Board of Appeal stated that the meaning of that term was vague, unclear and required some interpretation. That term refers to a direction or an area situated in the north and not to a climate. The Board of Appeal added that the goods in question also covered products that clearly were not related to cold or rough weather conditions. It concluded that, both for consumers who understand the term 'north' as designating a point of the compass and for those who regard it as fanciful, that term had an average degree of distinctiveness with regard to the goods in Class 25.
31 Lastly, as regards the numeric elements making up the two marks at issue, namely '66°' and '56-4', the Board of Appeal found that they had an average degree of distinctiveness.
32 It may be inferred from those considerations that the Board of Appeal put forward two situations, each of which led to an average degree of distinctiveness of the element 'north' for part of the relevant public in the present case. First, it found that part of the relevant public would not understand the exact meaning of the word 'north' in the context of the goods in question and, second, as regards the part of the relevant public which understood its meaning, it nevertheless found that that word would not be perceived as being descriptive of the goods in question.
33 As regards, first, the understanding of the element 'north', common to the marks at issue, it must be noted that the Board of Appeal acknowledged, in paragraph 48 of the contested decision, that the Court had already considered, in the judgment of 27 September 2018, TenneT Holding v EUIPO – Ngrid Intellectual Property (NorthSeaGrid) (T‑70/17, not published, EU:T:2018:611, paragraph 80), that that word was a basic English word. The Board of Appeal nevertheless took the view, in paragraph 50 of that decision, that in some Member States of the European Union, such as for example in the Czech Republic, Spain and Slovakia, a significant part of the population did not have at least a basic knowledge of English. As a result, some of the consumers in those States would not immediately perceive the concept conveyed by the term 'north' in the context of the goods in question.
34 In that regard, it must be pointed out that the Court not only considered that the word 'north' was a basic English word (see paragraph 33 above), but also stated that a word which forms part of the basic vocabulary of the English language could easily be understood by the non-English-speaking part of the relevant public even if it has only a rudimentary knowledge of English (see, to that effect, judgment of 19 June 2024, Naturgy Energy Group v EUIPO – Global Power Service (gps global power service), T‑312/23, not published, EU:T:2024:399, paragraph 38 and the case-law cited).
35 Accordingly, after accepting that the word 'north' was part of basic English vocabulary, the Board of Appeal was required, in accordance with the case-law cited in paragraph 34 above, to find that it would be understood by all consumers in the European Union, as EUIPO finally acknowledged at the hearing.
36 As a result, the Board of Appeal's findings that although at least a significant part of the consumers in certain Member States, such as the Czech Republic, Spain and Slovakia, may know the meaning of the word 'north' in the abstract, it will not immediately perceive the concept conveyed by it in the context of the goods in question, are vitiated by an error of law.
37 Therefore, the Board of Appeal was not entitled to find that there was a section of the relevant public that did not understand the meaning of the word 'north' and for whom the distinctive character of that word was average.
38 As regards, second, the distinctive character of the element 'north', the Board of Appeal's findings that that word is not descriptive of the goods in Class 25 are free from any error of assessment. Indeed, that word, which refers to one of the four cardinal points, directly describes neither the origin nor the intended purpose of the goods in question. In that regard, the Board of Appeal's findings that the word 'north' does not refer to a specific territory which could be regarded as a geographical indication and place of production of the goods in question allowing that word to be regarded as descriptive are free from any error of assessment. The same is true as regards the Board of Appeal's findings relating to the intended purpose of the goods in question. In that regard, the Board of Appeal was entitled to find that, given that the word 'north' refers to a direction or area in the north and not to a climate, the assumption that in the north there is a cold and unpleasant climate represents a further mental step in order to believe that goods bearing a label containing that term are especially intended for harsh and rough weather conditions.
39 Nevertheless, as EUIPO acknowledged at the hearing, the word 'north' is allusive or evocative of the origin and, in particular, of the intended purpose of the goods in question. That term, in the context of the goods in Class 25, may, admittedly, vaguely indicate, first, the area of origin of those goods and, second, the fact that they are adapted to colder or harsher weather conditions. As regards the Board of Appeal's argument that the north refers to a direction rather than to a specific place, it must be pointed out that in the 'Northern' hemisphere where Europe is located, it is generally colder in the north than in the south of a given territory.
40 In that regard, it must be borne in mind that the allusiveness of an element of a mark, like the descriptiveness or laudatory nature of such an element, is capable of affecting its inherent distinctive character. The ability to enable the consumer to distinguish immediately and with certainty the goods or services covered by a mark, in so far as it contains such an element, from the goods or services of other undertakings is reduced in the above scenarios (judgments of 23 May 2019, Dentsply De Trey v EUIPO – IDS (AQUAPRINT), T‑312/18, not published, EU:T:2019:358, paragraph 50 and of 23 October 2024, Sumol + Compal Marcas v EUIPO – Boiron frères (FRUITOLOGY), T‑523/23, not published, EU:T:2024:728, paragraph 28).
41 It follows from the above assessments that the distinctive character of the element 'north', which is common to the marks at issue, is below average for the whole of the relevant public and not average as the Board of Appeal found.
42 That position is not contradicted by the case-law of the Court concerning the elements 'north' and 'west'. Indeed, in the judgment of 4 May 2005, Reemark v OHIM – Bluenet (Westlife) (T‑22/04, EU:T:2005:160), the Court merely found that the word 'west' was not descriptive of the goods and services in question, including clothing and footwear in Class 25. As regards the judgment of 27 September 2018, TenneT Holding v EUIPO – Ngrid Intellectual Property (NorthSeaGrid) (T‑70/17, not published, EU:T:2018:611, paragraphs 93 and 94), the Court held that the element 'northsea' would be perceived by the English-speaking public as descriptive, given that that public would understand, without further reflection, that electrical energy in Class 4 and the services in Classes 35 and 37 to 39 were provided by means of a network that runs through the North Sea, whereas, for the non-English-speaking public, that term had a normal degree of distinctiveness.
43 As regards the Board of Appeal's observation, in paragraph 58 of the contested decision, that the definitions of the goods covered by the marks at issue are so broad that they also cover products which are clearly not related to cold or rough weather conditions, it must be noted that a large proportion of the goods covered by the earlier mark are specifically items of clothing or footwear for colder or more wintry weather conditions, such as, for example, anoraks, coats, gloves, ski boots and boots for snowboarding.
44 As regards the judgment of the Vestre Landsret (High Court of Western Denmark), to which the applicant makes reference, it is sufficient to point out that, in that judgment, the national court assessed signs which differed both in their composition and in their structure from those at issue in the present case and took account of the perception of the Danish public alone. As a result, its relevance to the present case is very limited, as found, in essence, by the Board of Appeal (see paragraph 91 of the contested decision). Indeed, the signs compared in that judgment were composed of the terms 'northern' and 'nordic', used as adjectives to qualify the noun 'greens'. In the present case, the marks at issue include the word element 'north' and a numerical element.
45 As regards, third, the numerical elements that each of the marks at issue contain, it should be noted that the element '66°' in the earlier mark is a reference to the latitude of the polar circle. However, as the Board of Appeal found, that meaning will be understood by only a minority of the relevant public. As regards the number '56' that is present in the contested mark, used without the symbol '°', which refers to degrees, it may be that it refers to the 56th parallel north which crosses, inter alia, Denmark. Nevertheless, it is unlikely that the relevant public in the present case would understand that reference. Accordingly, the Board of Appeal did not make an error of assessment in finding that the numerical elements had an average degree of distinctiveness in both marks.
The visual, phonetic and conceptual comparison of the signs
46 According to the applicant, the marks at issue are different from the point of view of their numeric elements. Similarly, their structure is not the same since their constituent elements are placed in reverse order. Furthermore, those marks, which coincide only in a word element that is devoid of distinctive character, are pronounced differently.
47 EUIPO and the intervener dispute the applicant's arguments.
48 As regards, first, the visual comparison of the signs, the Board of Appeal found that the presence of different numbers within the marks at issue could not counteract the similarities arising from the coincidence in the element 'north'. In that regard, the Board of Appeal stated that consumers will probably remember the common word element better than numeric elements, the vast majority of which have no meaning. It concluded that the signs were visually similar to an average degree.
49 In the present case, it must be pointed out that the signs at issue differ only in their numerical elements, namely, in the earlier mark, '66°' placed before the element 'north' and, in the contested mark, '56-4' placed after that element. In addition, the two numeric elements contain the number '6', which reinforces their similarity. Moreover, the position of the numeric element in each of the marks, before or after the element 'north', is insufficient to support the claim that the structure of each of the marks is different, as the applicant claims. Therefore, notwithstanding the below-average distinctive character of the element 'north', which is common to the marks at issue, the degree of visual similarity is average in the present case, as the Board of Appeal rightly found.
50 As regards, second, the phonetic comparison of the signs, the Board of Appeal found that there was a similarity as regards the pronunciation of the common element 'north' and the number '6'. After stating that the public will pay more attention to the word element 'north', the Board of Appeal found that the signs were phonetically similar to at least a low degree.
51 In that regard, it must be noted that the two marks share the element 'north', which, despite its below-average distinctive character, will nevertheless be pronounced, and each mark has a numerical element containing the number '6'. It is true that the structure of each of the marks will have an impact on their pronunciation on account of the position of the numeric element, since, in the contested mark, that element will be pronounced before the common word element, whereas, in the earlier mark, it will be pronounced after that word element. Similarly, the pronunciation of the elements '66°' and '56-4' will coincide only in the pronunciation of the number '6'. Nevertheless, those differences are not such as to render the marks at issue phonetically different, with the result that they are similar to a low degree. The Board of Appeal's finding that those marks were phonetically 'at least similar to a low degree' covers that situation, with the result that no error of assessment can be found here.
52 As regards, third, the conceptual comparison of the signs, the Board of Appeal found (i) that those signs were very similar for the part of the public which understands the meaning of the element 'north', and (ii) that the conceptual comparison was neutral for the part of the public for which that element has no meaning.
53 The Board of Appeal's assessment is, in part, based on the incorrect premiss that the word 'north' has no meaning for part of the relevant public. As is apparent from paragraph 35 above, that word, on account of it being part of basic English vocabulary, will be understood by all of the relevant public.
54 Moreover, it must be noted that the only element which has meaning for the relevant public is the word element 'north', which is common to the marks at issue, since the other elements of those trade marks will not be understood by all of the relevant public (see paragraph 45 above). However, in the present case, the distinctive character of this common element is below average (see paragraph 41 above).
55 In that regard, it must be borne in mind that the distinctive character of an element common to the signs at issue from which their conceptual similarity arises is a criterion to be taken into account in order to establish the degree of that similarity. It has thus been held that where the signs at issue share only a weakly distinctive word, the conceptual similarity of those signs must be regarded as low (see, to that effect, judgments of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 51, and of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 67). The same applies to elements with a distinctive character that is below average, which will attract consumers' attention in a more limited way than elements with an average distinctive character.
56 Accordingly, given that the conceptual similarity in the present case is due to an element of below-average distinctive character, it cannot be regarded as high, as the Board of Appeal found it to be, in essence, but must be classified as average.
The global assessment of the likelihood of confusion
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 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).
58 The applicant claims that there is no likelihood of confusion in the present case on account of the significant differences between the marks at issue. In particular, it refers to the EUIPO Guidelines, according to which a common element with a weak distinctive character will have the effect of reducing the degree of similarity of the marks. The element 'north' is descriptive and non-distinctive in the present case. Even if that element is considered to enjoy a low degree of distinctiveness, the numeric elements enable consumers to distinguish between the goods of the applicant and those of the intervener.
59 EUIPO and the intervener dispute the applicant's arguments.
60 The Board of Appeal found that there was a likelihood of confusion in the present case, taking into account the identity of the goods covered by the marks at issue, the average degree of visual similarity of the signs, their at least low degree of phonetic similarity and their high degree of conceptual similarity for part of the relevant public. It stated that, for the goods in question, the visual aspect of the signs was of greater importance in the global assessment of the likelihood of confusion.
61 In the present case, it follows from the above assessments that the goods covered by the marks at issue are identical (see paragraph 21 above) and that the signs are visually and conceptually similar to an average degree (see paragraphs 49 and 56 above) and phonetically similar to a low degree (see paragraph 51 above). The inherent distinctive character of the earlier mark must be held to be average, as the Board of Appeal found (see paragraph 74 of the contested decision). Indeed, the earlier mark as a whole is neither descriptive nor allusive for the relevant public as regards the goods in question, and the below-average distinctive character of the element 'north' is offset by the element '66°'.
62 In that regard, it must be recalled, as the Board of Appeal did, first, that the marketing circumstances are a relevant factor in the application of Article 8(1)(b) of Regulation 2017/1001 (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 70) and, second, that the purchase of goods in Class 25, such as those in question in the present case, is based, in principle, particularly on their visual aspect. Clothing and clothing accessories, the purpose of which is to embellish the appearance of the human body, are generally marketed in 'bricks and mortar' shops or online shops, as the case may be with the help of sales assistants or advisers and, in the light of those particular marketing conditions, the consumer's choice is mainly made by looking at them. Consequently, the marks covering those goods will normally be perceived visually prior to or at the time of purchase, with the result that the visual aspect is of greater importance in the global assessment of the likelihood of confusion (see judgment of 20 December 2023, Pierre Balmain v EUIPO – Story Time (Representation of a lion's head encircled by rings forming a chain), T‑564/22, not published, EU:T:2023:851, paragraph 84 and the case-law cited). In the present case, the degree of visual similarity is average.
63 In the light of the foregoing assessments, it must be held that the coincidence in the marks at issue of the element 'north', despite its lower than average distinctive character, and of the number '6' is not offset by the other elements of which those marks consist. Similarly, as regards the structure of the marks at issue, it must be pointed out that each of them is composed of the word element 'north' and a numerical element, which makes them similar (see paragraph 49 above). Accordingly, given the imperfect memory that the consumer will retain of those marks and despite the errors in law and assessment made by the Board of Appeal (see paragraphs 36, 41 and 56 above), the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 cannot be ruled out in the present case.
64 It is true, as is apparent from the case-law cited in the EUIPO Guidelines to which the applicant makes reference and which is referred to by EUIPO, that where the elements of similarity between two signs arise from the fact that they share a component with weak inherent distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited). Similarly, it is settled case-law that where the marks at issue coincide in an element that is weakly distinctive with regard to the goods in question, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53 and the case-law cited). However, in the present case, it is sufficient to point out not only that the distinctive character of the element 'north', which is common to the marks at issue, is below average and not low, but also that the signs also share the number '6' and have a similar structure.
65 It follows that the plea in law must be rejected and, consequently, that the action must be dismissed in its entirety.
Costs
66 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 a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
67 In addition, the intervener also contended that the applicant should be ordered to pay the costs incurred before the Cancellation Division and the Board of Appeal. In that regard, first, it should be noted that, under Article 190(2) of the Rules of Procedure, only the essential costs incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred for the purposes of the proceedings before the Cancellation Division cannot be regarded as recoverable costs. Therefore, the intervener's form of order must be rejected in so far as it seeks to have the applicant bear the costs incurred before the Cancellation Division. Second, as regards the costs incurred before the Board of Appeal, it is sufficient to note that, given that the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 April 2021, Comercializadora Eloro v EUIPO – Zumex Group (JUMEX), T‑310/20, not published, EU:T:2021:227, paragraph 45).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Allsize Company A/S to pay the costs.
Costeira | Zilgalvis | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 9 April 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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