JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
20 July 2017 (*)
(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a curved and angled line — Earlier EU figurative mark representing a capital letter ‘D’ — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑521/15,
Diesel SpA, established in Breganze (Italy), represented by A. Gaul, M. Frank, A. Parassina and K. Dani, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sprinter megacentros del deporte, SL, established in Elche (Spain), represented by S. Malynicz QC,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 18 June 2015 (Case R 3291/2014-2), relating to opposition proceedings between Diesel and Sprinter megacentros del deporte,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 7 September 2015,
Having regard to the response of EUIPO lodged at the Court Registry on 9 December 2015,
having regard to the response of the intervener lodged at the Court Registry on 21 December 2015,
having regard to the reassignment of the case to the Sixth Chamber and to a new Judge-Rapporteur,
further to the hearing on 26 April 2017,
gives the following
Judgment
Background to the dispute
1 On 6 December 2012, the intervener, Sprinter megacentros del deporte, 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).
2 Registration as a mark was sought for the following figurative sign:
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:
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, tote bags, bottle bags, record bags, book bags; handbags; sports bags; sports holdalls; shopping bags; luggage and suitcases; weekend bags; jewellery rolls; attaché cases and briefcases; parts and fittings for all the aforesaid goods’;
– Class 25: ‘Clothing; football boots; rugby boots; training shoes; running shoes; tennis shoes; indoor sports shoes; headgear; belts’;
– Class 28: ‘Gymnastic and sporting articles and equipment; games and playthings; parts and fittings for all the aforesaid goods’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 5/2013 of 8 January 2013.
5 On 5 April 2013, the applicant, Diesel SpA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on, inter alia, the earlier EU figurative mark reproduced below, which was registered on 19 February 1999 under the number 000583708 :
7 The goods covered by the earlier mark were in, inter alia, Classes 18 and 25 and corresponded, for each of those classes, to the following description:
– Class 18: ‘Leather and imitation of leather and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks, whips, harness and saddlery’;
– Class 25: ‘Clothing, footwear, headgear’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
9 On 31 October 2014, the Opposition Division rejected the opposition.
10 On 29 December 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 18 June 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, after finding that the relevant public consisted of the general public in the European Union, the level of attention of which was average, it upheld the Opposition Division’s decision, pointing out that:
– whereas the earlier mark clearly resembled a capital letter ‘D’, the mark applied for represented, rather, a basic geometrical shape; although it could not be completely excluded that a small part of the public might perceive the mark applied for as a capital letter ‘D’, that possibility seemed, however, unlikely;
– from a visual standpoint, the marks at issue have clear visual differences that outweigh the similarities, which, in the overall visual impression, are not particularly strong; they are phonetically and conceptually identical, but only in the unlikely event that part of the relevant public perceives the contested sign as the graphic representation of a capital letter ‘D’, whereas, for the remaining public, the phonetic and conceptual comparison is not relevant or impossible, respectively;
– the distinctive character of the earlier mark is weak in relation to the goods concerned in Classes 18 and 25;
– the fact that, for part of the relevant public, the marks at issue may be perceived as a capital letter ‘D’ and that they may have the concept of that letter in common is not sufficient to create a likelihood of confusion; even in that situation, the Board of Appeal must take care not to apportion excessive weight to a coincidence of features which are merely generic to the capital letter ‘D’ and must pay particular attention to the specific features which are not generic to the letter ‘D’; in the present case, the contested sign does not share any of the earlier sign’s specific features.
12 The Board of Appeal concluded that notwithstanding the principles of interdependence and of imperfect recollection on the part of the public, there was no reason to assume that the relevant public in the European Union would be misled into thinking that goods bearing the signs at issue, even if they were identical, came from the same undertaking or, as the case might be, from undertakings that were economically linked, even taking into account the normal level of attention of the relevant public. Consequently, it did not consider it necessary to examine and compare the goods or to determine whether the applicant had proved genuine use of the earlier mark, within the meaning of Article 42(2) of Regulation No 207/2009, following the request to that effect which the intervener had made before the Opposition Division.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– uphold the contested decision;
– order the applicant to pay the costs of the intervener and to bear its own costs.
Law
The admissibility of certain annexes to the application
16 EUIPO submits that certain annexes to the application, namely Annexes I 3 et I 4, which were submitted for the first time before the Court and not in the course of the proceedings before EUIPO, must be declared inadmissible. Those annexes relate to samples, found on the internet, of the stylised capital letter ‘D’ used by the Walt Disney Company and of other capital letters ‘D’, which the applicant has produced to support the argument that the contested mark will be perceived by the relevant public as a representation of the capital letter ‘D’.
17 In that regard, it must be pointed out that those documents, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
The single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
18 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
19 It submits, in essence, that the Board of Appeal erred in finding that there was no likelihood of confusion between the marks at issue. In the first place, it maintains that, contrary to what the Board of Appeal stated, a significant part of the relevant public will perceive the sign applied for as a capital letter ‘D’. It takes the view that that sign consists of all the elements that are necessary to form a typical capital letter ‘D’. In the second place, the applicant submits that the signs are phonetically and conceptually identical and visually similar for a significant part of the relevant public. In particular, as regards the visual similarity, the applicant puts forward the argument that, even though there are differences between the marks at issue, those differences do not outweigh the elements which are similar. In the third place, the applicant disputes the Board of Appeal’s finding regarding the distinctive character of the earlier mark, submitting that that mark has a normal level of distinctiveness which it derives not only from the fact that it represents the capital letter ‘D’, but also from its unique stylisation, which will be kept in mind by a significant part of the public.
20 EUIPO and the intervener dispute the applicant’s arguments.
Preliminary observations
21 It must be borne in mind that the legislature expressly included signs consisting of a letter in the list, set out in Article 4 of Regulation No 207/2009, of examples of signs which may constitute an EU trade mark and that Articles 7 and 8 of that regulation, relating to refusal of registration, do not lay down specific rules for signs consisting of a letter or a combination of letters which does not form a word. It follows that the global assessment of the likelihood of confusion between such signs pursuant to Article 8(1)(b) of Regulation No 207/2009 in principle follows the same rules as those relating to word signs comprising a word, a name or a fanciful term (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, paragraphs 47 and 48).
22 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
23 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 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).
24 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
25 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. Account should, however, be taken of the fact that the average consumer only rarely has a chance to compare the various marks directly, but must rely on his imperfect recollection of them. 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).
26 The Court will examine, in the light of those considerations, whether the Board of Appeal was right in finding, in the contested decision, that there was no likelihood of confusion between the signs at issue.
27 As a preliminary point, it is appropriate to confirm the definition of the relevant public set out by the Board of Appeal in paragraph 38 of the contested decision, a definition which is not, moreover, disputed by the applicant and is that that public corresponds, owing to the earlier mark’s registration as an EU trade mark and the nature of the goods covered by the signs at issue, to the general public in the European Union, the level of attention of which is average.
Comparison of the signs
28 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).
29 In the present case, first of all, the Board of Appeal found, as is apparent from paragraph 43 of the contested decision, that the marks at issue were purely figurative marks. Subsequently, in paragraphs 44 to 61 of the contested decision, the Board of Appeal compared the signs at issue visually, phonetically and conceptually and found that, whereas the earlier sign clearly resembled a capital letter ‘D’, the possibility that the sign applied for would be perceived as a capital letter ‘D’ seemed unlikely. It also pointed out, first, that, even assuming that part of the public would see a capital letter ‘D’ in the contested sign, there were obvious visual differences between the signs at issue which outweighed the similarities and, secondly, that the signs at issue were admittedly phonetically and conceptually identical, but only in the unlikely event that part of the relevant public perceived the sign applied for as the graphic representation of a capital letter ‘D’, whereas, for the remaining public, the phonetic and conceptual comparison was not relevant or impossible, respectively.
30 The applicant disputes the Board of Appeal’s assessments in the contested decision which relate to the perception that the relevant public is likely to have of the signs at issue. Although it acknowledges that the earlier mark resembles a capital letter ‘D’, it submits, by contrast, that a significant part of the public will also perceive the mark applied for as a capital letter ‘D’.
– The relevant public’s perception of the signs at issue
31 The signs to be compared are the following:
Earlier mark
Mark applied for
32 In the first place, as regards the earlier EU trade mark, the Court endorses the Board of Appeal’s finding, in paragraph 47 of the contested decision, that the earlier mark could be perceived as a capital letter ‘D’, a finding which has not, moreover, been disputed by the applicant or by the intervener.
33 In the second place, as regards the mark applied for, first, it must be pointed out that, as the applicant submits, that mark has all the elements that make up a capital letter ‘D’, namely the curved bowl on the right-hand side, the oblique stem, with a slant that gives an impression of verticality, on the left-hand side between the ends of the bowl, and a framed counter between the bowl and the stem.
34 Secondly, the applicant’s argument that the presence of serifs is not an element that is essential for the mark applied for to be recognised as a capital letter ‘D’ must be endorsed. Consequently, the lack of a serif in the lower part of the mark applied for, which is, in any event, insufficient to refute the fact that the mark applied for will be perceived as a capital letter ‘D’, is inconsequential.
35 Thirdly, the argument on the part of the Board of Appeal and of EUIPO that the lower part of the line in the mark applied for, which has a slanted turn upwards at the end, will not be seen as a stem, which is one of the essential elements of the letter ‘D’, is not convincing. As the applicant correctly observes, the presence of a stem which is vertical and attached to the upper and lower parts of the bowl is not a standard characteristic which is an obligatory part of the stylisation of a capital letter ‘D’, as the stem may be slanted and not attached to the bowl. That finding seems, moreover, to be confirmed by EUIPO in its written pleadings because it observes that, in the standard typewritten form of a capital letter ‘D’, the stem is ‘normally’ straight and is connected with the upper and the lower parts of the bowl.
36 Fourthly, it must be pointed out that, as the applicant submits, since the gap between the stem and the upper line of the mark creating the bowl is very small, it cannot be held that there is no counter framed by the bowl and the stem of the mark applied for. In addition, that gap cannot appreciably detract from the contested sign’s being perceived as a capital letter ‘D’. It is very likely that the gap between the stem and the upper horizontal line in the mark applied for will be perceived by the relevant public as a stylistic variation which has been made to the mark applied for in order to differentiate it from the classic and standard version of a capital letter ‘D’. Furthermore, in that regard, it must be pointed out that, in the clothing and fashion sector in general, the relevant public is used to seeing goods bearing figurative signs the design of which is original as compared with the standard version of those signs. It is also common in that sector for the same mark to be configured in various different ways according to the goods which it designates or to particular periods in time (see, to that effect, judgment of 10 May 2011, Emram v OHIM — Guccio Gucci (G), T‑187/10, not published, EU:T:2011:202, paragraph 71 and the case-law cited).
37 In view of the foregoing, it must be pointed out that, even though it is true that, compared with the classic form of the capital letter ‘D’, there are variations in the mark applied for, the possibility of that mark being perceived as representing that letter cannot, contrary to what the Board of Appeal states in paragraph 50 of the contested decision, be regarded as remote. On the contrary, it is highly likely that, in the light of the specific characteristics of that mark, a non-negligible part of the relevant public will perceive the mark applied for as a stylised capital letter ‘D’.
38 Consequently, the Board of Appeal erred in finding, in paragraph 47 of the contested decision, that only a small part of the relevant public will perceive the mark applied for as a capital letter ‘D’.
39 That finding cannot be called into question by EUIPO’s argument that the applicant compared the mark applied for with the handwritten version of the capital letter ‘D’ and not with the typewritten form of that letter. The elements that are characteristic of the capital letter ‘D’ can be identified in the mark applied for irrespective of the handwritten or typewritten form taken into account.
40 That conclusion is, moreover, borne out, first, by the fact that, as the applicant pointed out before the Board of Appeal, the intervener itself regards the marks at issue as a capital letter ‘D’. In comparing those marks before the Opposition Division, the intervener stated, without any hesitation and without allowing for any exceptions, that they clearly consisted of two capital letters ‘D’. Secondly, contrary to what EUIPO and the intervener submit, that finding is also borne out by the fact that, in the opposition proceedings filed under the number 002164104, which were brought by Calzaturificio dal bello Srl against the registration of the mark applied for which is the subject of the present case, the intervener, as well as the opponent in those proceedings, referred to the mark applied for as a ‘D’ device.
41 In addition, it must be pointed out that the Board of Appeal did not, in the present case, state which basic geometrical shape it regarded the mark applied for as referring to. It did not, moreover, put forward any argument to show that the relevant public would perceive the mark applied for as a basic geometrical shape. Likewise, when that question was put to it at the hearing, EUIPO was not able to specify which basic geometrical shape it regarded the mark applied for as referring to.
42 It is in the light of the foregoing observations and the case-law referred to in paragraph 28 above that it is necessary to examine whether the Board of Appeal erred as regards the assessment as to whether the signs at issue are similar from the visual, phonetic and conceptual standpoints.
– The visual similarity
43 In paragraph 48 of the contested decision, the Board of Appeal acknowledged, first of all, that the signs at issue had in common their nature and composition to the extent that they were purely figurative signs which were composed of one or more lines the width of which was similar in some places and which formed two rounded angles at the right. It stated that they also have in common the fact that both have two horizontal lines which are parallel and two vertically-oriented lines which are not completely parallel.
44 It subsequently found that, even assuming that part of the public might see a capital letter ‘D’ in the mark applied for, that mark did not share any of the specific features of the earlier mark given that the stem is not completely vertical and its upper line is not attached to the horizontal part, thus resulting in an opening, from which it is, in its view, apparent that the mark applied for does not have a closed counter. It took the view that the lower part does not have a serif and the curved stroke creates a vertical line to the right, with two identical angles, contrary to the angles in the earlier mark. The Board of Appeal concluded from that that each of the individual differences between the signs combined together is sufficient to outweigh the elements in common, which are also, in the overall visual impression, not particularly pronounced.
45 The applicant disputes as incorrect the Board of Appeal’s finding regarding the visual similarity, submitting, in essence, that all the characteristic elements of the earlier mark, which depicts a capital letter ‘D’, are contained in the mark applied for. It maintains that both marks therefore consist of the essential elements which are necessary to form the capital letter ‘D’. In its view, the differences between the signs at issue do not outweigh their similarities.
46 In that regard, in the first place, it must be pointed out that, although it is indeed true that there are some graphic differences between the marks at issue, differences which were pointed out by the Board of Appeal and which relate to the fact that, in the contested sign, the stem, instead of being completely vertical, slants to the left and is not connected to the upper horizontal line in that sign, or to the lack of a serif in the lower part of the mark applied for, the fact remains that, quite irrespective of whether there is a link between the capital letter ‘D’ and the mark applied for, those differences are very slight stylistic differences, which are of minor importance compared with the similarities between the marks at issue.
47 Those stylistic differences cannot dispel the impression of similarity which is apparent from the overall visual comparison of the marks at issue. That impression is due, first of all, to the overall shape of those two marks and to the presence of two horizontal lines which are parallel and two vertically-oriented lines, which are not completely parallel, but contribute towards giving both marks the same dynamism. Secondly, that impression is also due to the overall proportions which are similar, to the width of the lines and to the presence of two rounded angles on the right. Lastly, the impression of similarity is due to the linear layout of the two marks at issue and to the same black on white colour of their layout. Those findings are, moreover, valid irrespective of whether the relevant public perceives the mark applied for as a capital letter ‘D’.
48 In the second place, it must be stated that, in order to grasp the differences between the two marks at issue, the consumer would have to carry out a very detailed examination of those marks, which is unlikely given that, as was pointed out in paragraph 25 above, the average consumer only rarely has a chance to compare the various marks directly next to one another, but must rely on his imperfect recollection of them. Furthermore, in the clothing sector, marks which are small in relation to the goods as a whole are often affixed to those goods, with the result that it cannot be ruled out that consumers might experience difficulties in grasping the minor stylistic differences which may differentiate those marks.
49 In the third place, the graphic stylisation requires a detailed examination on the part of consumers, who do not adopt a particularly attentive approach when confronted with single-letter signs (judgment of 7 October 2014, Tifosi Optics v OHIM — Tom Tailor (T), T‑531/12, not published, EU:T:2014:855, paragraph 62). In that regard, it must be borne in mind that the Court has already held that it is true that consumers are capable of perceiving differences between the stylisation of signs. However, the key point is how the signs at issue are normally perceived overall and not how the stylistic differences between the signs may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphic stylisations and draw comparisons between them (judgment of 7 October 2014, T, T‑531/12, not published, EU:T:2014:855, paragraph 65).
50 In view of all of the foregoing, it must be held that the Board of Appeal erred in finding that the differences between the signs were sufficient to outweigh the elements in common. The differences highlighted by the Board of Appeal in paragraph 53 of the contested decision and by EUIPO in its written pleadings do not counteract the fact that there is, for a non-negligible part of the relevant public, a high degree of visual similarity between the marks at issue viewed as a whole.
– The phonetic and conceptual similarity
51 From a phonetic and conceptual standpoint, the Board of Appeal found that the marks at issue were phonetically and conceptually identical, but only in the unlikely event that part of the relevant public perceived the contested sign as the graphic representation of a capital letter ‘D’, whereas, for the remaining public, the phonetic and conceptual comparison was not relevant or impossible.
52 The applicant submits that, since the mark applied for will be perceived by a significant part of the relevant public as a capital letter ‘D’, the signs at issue must be regarded as both phonetically and conceptually identical.
53 EUIPO maintains that, even if the marks under comparison were perceived as the same letter, that would not have a substantial impact on their phonetic and conceptual comparison. According to EUIPO, consumers are unlikely to refer orally to trade marks that are composed of a single letter, especially when, as in the present case, they are represented by a specific graphic form, at least so far as concerns the mark applied for. It also maintains that those marks, moreover, generally have no clear concept. It takes the view that, having regard to the relevant goods, the marks at issue would have no other meaning than that of simply referring to the capital letter ‘D’ in the alphabet.
54 As regards the phonetic comparison, it must be pointed out that, as both of the figurative signs at issue are capable of being perceived by a significant part of the relevant public as a capital letter ‘D’, they will be pronounced in the same way. Consequently, they may be regarded as phonetically identical, as the applicant has correctly stated.
55 As regards the conceptual comparison, since a significant part of the relevant public will perceive the mark applied for as a capital letter ‘D’, it must be pointed out that the signs at issue are conceptually identical, given that they refer to the same letter of the alphabet. The Court has already held that it cannot, in principle, be ruled out, that single letters of the alphabet might have their own conceptual content (judgment of 8 May 2012, Mizuno v OHIM — Golfino (G), T‑101/11, not published, EU:T:2012:223, paragraphs 56 and 58).
– Conclusion on the comparison of the signs
56 It follows from the foregoing that, contrary to what the Board of Appeal found in paragraphs 54 and 74 of the contested decision, for a non-negligible part of the relevant public, there are visual similarities between the marks at issue which outweigh the minor, purely stylistic differences. Furthermore, as has been pointed out in paragraphs 54 and 55 above, those marks are also phonetically and conceptually identical.
57 In any event, it must be stated, as was pointed out by the Board of Appeal and the intervener, that, in a sector such as the clothing sector, in which the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important than the phonetic and conceptual similarity (see, to that effect, judgment of 6 October 2004, NLSPORT, NLJEANS, NLACTIVE and NLCollection, T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).
The likelihood of confusion
58 It should be noted at the outset, in the first place, 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, 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).
59 In the second place, the distinctive character of the earlier mark is one of the factors to be taken into account when assessing the likelihood of confusion (see judgment of 27 June 2013, Repsol YPF v OHIM — Ajuntament de Roses (R), T‑89/12, not published, EU:T:2013:335, paragraph 45 and the case-law cited).
60 In the third place, a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
61 In the fourth place, a letter is, in itself, capable of giving a trade mark distinctive character (see judgment of 8 May 2012, G, T‑101/11, not published, EU:T:2012:223, paragraph 50 and the case-law cited).
62 In the fifth place, the fact that signs composed of the same letter are, by way of assumption, phonetically and conceptually identical is in no way irrelevant in the examination of similarity for the purposes of assessing the likelihood of confusion. On the contrary, it is precisely because of that phonetic and conceptual identity that special consideration is to be given, in the context of registering a trade mark composed of a single letter for goods identical to, or presenting a high degree of similarity to, those covered by an earlier trade mark composed of the same letter, to ensuring that the mark applied for is sufficiently visually distinct from the earlier mark, in order to exclude any likelihood of confusion on the part of the relevant public (see judgment of 11 October 2016, Perry Ellis International Group v EUIPO — CG (p), T‑350/15, not published, EU:T:2016:602, paragraph 57 and the case-law cited).
63 In the present case, as regards the distinctive character of the earlier mark, the Board of Appeal, after finding that the applicant had not claimed enhanced distinctiveness in respect of that mark, found that its inherent distinctiveness was rather low in relation to the goods concerned.
64 The applicant disputes such an assessment, submitting that the level of distinctiveness of the earlier mark must be considered to be normal as a result, in particular, of its stylisation.
65 As regards the global assessment of the likelihood of confusion, the Board of Appeal found that the signs had clear visual differences which outweighed the similarities. It also found that the fact that, for part of the relevant public, the signs might be perceived as a capital letter ‘D’ and that they might have the concept of that letter in common was not sufficient to create a likelihood of confusion. The Board of Appeal therefore concluded that, in spite of the principles of interdependence and imperfect recollection, there was no reason to assume that the relevant public in the European Union would be misled into thinking that the goods concerned, even if they were identical, could come from the same undertaking or, as the case might be, from undertakings that were economically linked. It took the view that that was the case, even taking into account the normal level of attention of the relevant public.
66 The applicant disputes the Board of Appeal’s arguments. It submits, in essence, that there are good arguments for concluding that there is a likelihood of confusion between the marks at issue for a significant part of the relevant public. In particular, the applicant takes the view that that likelihood of confusion is based on the identity of the goods, the average distinctiveness of the earlier mark and the fact that the main characteristics of the marks at issue are identical or at least similar.
67 In that regard, it must, first of all, be borne in mind that the Board of Appeal based its analysis of the likelihood of confusion on the assumption that the goods covered by the marks at issue are identical. Secondly, as has been stated in paragraph 56 above, in spite of certain minor differences between them, the signs at issue must as a whole be regarded as being characterised by a significant degree of visual similarity and as being phonetically and conceptually identical. Lastly, contrary to what the Board of Appeal stated, the visual differences which admittedly exist between the marks at issue are not sufficient to outweigh the similarities. The perception of such differences requires a degree of meticulousness and effort which seems unlikely to be employed by the average consumer in the light of the fact that that consumer only rarely has a chance to compare the various marks directly, but must rely on his imperfect recollection of them (see, to that effect, judgment of 10 May 2011, G, T‑187/10, not published, EU:T:2011:202, paragraph 71).
68 In those circumstances, it must be stated that, even if it is accepted that the earlier mark is weakly distinctive, as the Board of Appeal pointed out in paragraph 63 of the contested decision, it must be held that there is a likelihood of confusion between the signs at issue in respect of the goods concerned.
69 Furthermore, even if the likelihood of confusion were to exist only for part of the relevant public, namely that non-negligible part consisting of consumers likely to perceive the signs at issue as a capital letter ‘D’, and not for the part of the public which perceives the contested mark as a basic geometrical figure, such a finding would be sufficient, inasmuch as it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (see, to that effect, judgment of 10 November 2011, Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraph 120 and the case-law cited).
70 Consequently, contrary to what the Board of Appeal stated in paragraph 76 of the contested decision, it is conceivable that the relevant public will regard the goods covered by the marks at issue as coming from the same undertaking either because it confuses those marks or because it associates them. That is particularly possible if account is taken of the fact that it is common in the clothing and fashion sector, which is relevant in the present case, for the same mark to be configured in various different ways according to the goods which it designates or to particular periods in time (see, to that effect, judgment of 10 May 2011, G, T‑187/10, not published, EU:T:2011:202, paragraph 71 and the case-law cited).
71 The intervener’s argument, put forward at the hearing, that, by its opposition, the applicant seeks unfairly to monopolise the capital letter ‘D’, cannot cast doubt on that finding.
72 In that regard, it must be pointed out that the purpose of the opposition brought by the applicant, as the applicant itself stated at the hearing, is to prevent the mark applied from being registered as a trade mark which is likely to give rise to a likelihood of confusion with the earlier mark, in particular on account of its stylistic similarity. The purpose of the opposition is not, contrary to what the intervener claims, to prevent the mark applied for from being registered by reason of the fact that it represents a capital letter ‘D’ or to prevent all the other marks consisting of such a letter from being registered.
73 Furthermore, it must be pointed out that the reference to other trade marks including a capital letter ‘D’, such as the stylised capital letters ‘D’ registered by Walt Disney Company and by Gucci, D & G and Dior, is not relevant in the present case.
Conclusions as to the outcome of the action
74 In view of all of the foregoing considerations, the applicant’s single plea in law must be upheld and the contested decision must be annulled, in accordance with the applicant’s first head of claim.
75 Furthermore, it must be pointed out that, as has been stated by EUIPO, the Board of Appeal did not compare the goods, taking as its basis the assumption that the goods concerned should be regarded as identical. In addition it did not, thereby following the Opposition Division’s approach, assess the proof of genuine use, which had been provided by the applicant at the intervener’s request (see paragraph 12 above).
76 The Board of Appeal must therefore assess those matters.
Costs
77 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.
78 In the present case, EUIPO and the intervener have been unsuccessful. Consequently, first, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. Secondly, since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1) Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 June 2015 (Case R 3291/2014-2);
2) Orders EUIPO to bear its own costs and to pay those incurred by Diesel SpA;
3) Orders Sprinter megacentros del deporte, SL to bear its own costs.
BerardisSpielmannCsehi
Delivered in open court in Luxembourg on 20 July 2017.
E. Coulon D. Gratsias
RegistrarPresident
* Language of the case: English.
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