SDSR v EUIPO - Berghaus (BERG OUTDOOR) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-139/16 (06 October 2017)

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(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark BERG OUTDOOR — Earlier EU word marks BERGHAUS — Relative ground for refusal — Likelihood of confusion — Similarity of signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Sports Division SR, SA (SDSR), established in Matosinhos (Portugal), represented by A. Sebastião and J. Pimenta, lawyers,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Berghaus Ltd, established in London (United Kingdom), represented by S. Ashby, A. Carboni and J. Colbourn, Solicitors,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 21 January 2016 (Case R 153/2015-2) relating to opposition proceedings between Berghaus and SDSR,

composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 27 May 2016,

having regard to the response of the intervener lodged at the Court Registry on 8 July 2016,

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

1 On 18 June 2012, the applicant, Sports Division SR, SA (SDSR), filed an international application designating the European Union, sent to the European Union Intellectual Property Office (EUIPO) on 6 September 2012, seeking registration of an EU trade mark, under Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 18, 22 and 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 correspond, for each of those classes, to the following description:

– Class 18: ‘Leather and imitations of leather and goods made thereof included in this class, trunks, bags, rucksacks, wallets and suitcases, umbrellas and parasols’;

– Class 22: ‘Ropes, strings, nets, tents, tarpaulins and sails, bags not included in other classes’;

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2012/176 of 14 September 2012.

5 On 11 June 2013, the intervener, Berghaus Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the international application designating the European Union, in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on a large number of earlier rights, including, inter alia:

– the EU word mark BERGHAUS registered on 1 February 2010 under No 8475444, covering goods in Classes 20 and 22 and corresponding, for each of those classes, to the following description:

– Class 20: ‘Sleeping bags, camping mats and mattresses, sleeping mats, camping furniture, garden furniture, beds, camping beds, chairs; camping chairs, cushions, mattresses, pillows, tent pegs, map cases, tent pegs, tent poles, air beds, air cushions, air pillows, air mattresses; roll mats’;

– Class 22: ‘Tents, awnings, ropes, string, nets, ground sheets, tarpaulins’;

– the EU word mark BERGHAUS registered on 2 August 2010 under number 8864712, covering goods in Classes 9, 14, 18, 21 and 25 and corresponding, for each of those classes, to the following descriptions:

– Class 9: ‘Glasses and spectacles; sunglasses, corrective glasses and spectacles; protective glasses and spectacles; contact lenses; lenses for glasses and spectacles; frames for glasses and spectacles; corrective frames; cases for glasses; sunglasses and spectacles; cords, ribbons, chains and devices for retaining glasses; sunglasses and spectacles in position; clip-on sunglasses; goggles; satellite navigational apparatus; navigation compasses; surveying apparatus and instruments; photographic apparatus and instruments; calculating machines; apparatus for recording, transmission or reproduction of sound or images; weighing, measuring and signalling apparatus and instruments’;

– Class 14: ‘Precious metals and their alloys; jewellery, costume jewellery, precious stones; horological and chronometric instruments, clocks and watches’;

– Class 18: ‘Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks’;

– Class 21: ‘Mugs; cups; beakers; plates; bowls; drinking glasses; lunchboxes; flasks and hip flasks; bottles; decanters; glasses; tankards; glassware, earthenware, porcelain and china; domestic utensils and containers; water bottles; household or kitchen utensils and containers; combs and sponges; brushes; articles made of ceramics, glass, porcelain or earthenware which are not included in other classes; electric and non-electric toothbrushes’;

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

8 On 18 December 2014, the Opposition Division upheld the opposition for all the goods covered by the mark applied for on the basis of Article 8(1)(b) of Regulation No 207/2009, in so far as it was based on the EU trade marks Nos 8475444 and 8864712, referred to in paragraph 6 above. For reasons of procedural economy, the large number of earlier national marks and the reputation claimed in the United Kingdom were not taken into consideration.

9 On 16 January 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

10 By decision of 21 January 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the signs in question displayed a certain visual similarity on account of the coincidence in the element ‘berg’, an average degree of phonetic similarity and, for part of the relevant public, which understands the meaning of the common element ‘berg’, they share the concept of ‘mountain’. Accordingly there was a likelihood of confusion for all the goods in question, especially for the relevant public which does not understand the meaning of the element ‘berg’. In its global assessment of the signs at issue, the Board of Appeal concluded, first, that the differences in the signs at issue cannot fully outweigh the overall similarity between the marks, on account of the coincidence in the element ‘berg’, which, moreover, appears at the beginning of the earlier marks and of the word element of the mark applied for, of which it is also the dominant element, together with the figurative element representing a mountain. Second, the Board of Appeal found that part of the relevant public would be able to interpret that coincidence in the element ‘berg’ at the beginning of the marks at issue as a variant of the earlier marks and, accordingly, as a variant of marks having the same commercial origin.

11 By application lodged at the Court Registry on 31 March 2016, the applicant brought the present action.

15 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

16 The applicant claims, in essence, that there is no likelihood of confusion between the marks at issue. In that regard, it submits that it is necessary to analyse the marks at issue as a whole, that the absence of a likelihood of confusion is confirmed by the coexistence of the marks at issue on the market and by the reputation of the mark applied for, and that the mark applied for has its own distinctive character.

17 EUIPO and the intervener dispute the applicant’s arguments. In particular, EUIPO maintains that the part of the plea relating to the coexistence of the marks at issue and the reputation of the mark applied for should be declared inadmissible.

18 The Court considers it appropriate, in the present case, with regard to EUIPO’s claims concerning the inadmissibility of the applicant’s arguments concerning the coexistence of the marks at issue on the market and the reputation of the mark applied for, to examine, first, that question of inadmissibility and, next, to assess whether the Board of Appeal was right to consider that there was a likelihood of confusion between the marks at issue.

The applicant’s arguments concerning the coexistence of the marks at issue on the market and the reputation of the mark applied for

19 Without formally raising an objection of inadmissibility pursuant to Article 130 of the Rules of Procedure, EUIPO submits, primarily, that the part of the plea in law put forward by the applicant concerning, first, the coexistence of the marks at issue on the market and, second, the reputation of the mark applied for does not satisfy the requirements of Article 76 of the Rules of Procedure of the General Court.

20 In that regard, it should be noted that, by virtue of the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the proceedings before the General Court in accordance with the first paragraph of Article 53 of that statute, and of Article 76(d) of the Rules of Procedure of the General Court, applicable to intellectual property matters by virtue of Article 177(1)(d) of those rules, any application must indicate the subject matter of the proceedings, the pleas in law and arguments relied on and a summary of those pleas in law. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any other supporting information (see, to that effect, judgment of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 26 and the case-law cited). In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, even if only stated briefly, provided the statement is coherent and comprehensible (judgment of 14 May 1998, EnsoEspañola v Commission, T‑348/94, EU:T:1998:102, paragraph 143). While specific points in this text can be supported and supplemented by references to specific passages in the documents attached, a general reference to other documents, even those annexed to the application, cannot compensate for the lack of essential information in the application (see, to that effect, order of 29 November 1993, Koelman v Commission, T‑56/92, EU:T:1993:105, paragraph 21).

21 Next, according to the case-law, the applicant must specify the nature of the grounds on which the action is based. Accordingly a mere abstract statement of the grounds does not meet the requirements of the Rules of Procedure. The applicant and his lawyer must set out the factual and legal grounds on which the action is based and it is not for the Court to do their work by trying to locate and identify, from all of the evidence to which the application makes general reference, information which may support the forms of order sought as set out in the application (see, to that effect, judgment of 12 December 2014, Comptoir d’Épicure v OHIM — A-Rosa Akademie (da rosa), T‑405/13, not published, EU:T:2014:1072, paragraph 21 and the case-law cited).

22 Those requirements seek to ensure legal certainty and the sound administration of justice. According to Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001), actions may be brought before the General Court against decisions of the Boards of Appeal on grounds of infringement of the Treaty, of Regulation No 207/2009 (now Regulation 2017/1001) or of any rule of law relating to their application, or of misuse of power. The Court therefore has jurisdiction to conduct a full review of the legality of the assessments of the Boards of Appeal on condition that the application in support of the action, submitted in accordance with Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), enables the grounds for annulment put forward against the contested decision, as well as the objections and arguments raised in support of those grounds to be identified (see, to that effect, order of 13 January 2015, Vakoma v OHIM — VACOM (VAKOMA), T‑535/13, not published, EU:T:2015:24, paragraph 18).

23 It is in the light of the case-law referred to in paragraphs 20 to 22 above that it is necessary to examine the admissibility of the two arguments put forward by the applicant in its single plea in law, to the effect that there is no likelihood of confusion between the marks at issue.

24 It is necessary, at the outset, to point out that it is apparent from paragraphs 37 to 43, 56 and 57 of the application that the applicant has not submitted its two arguments in a coherent manner that makes it possible to know which assertion corresponds to which argument. Accordingly, in the absence of that coherence, the arguments must be examined jointly as to their admissibility.

25 In the present case, in order to demonstrate the coexistence of the marks at issue and the reputation of the mark applied for, the applicant claims that ‘no situation of error or confusion among consumers has ever been reported’, that the mark applied for ‘is already being used on the market and has a considerable well-known character’, that ‘it is possible to access the website at www.bergoutdoor.com, where the information provided in the allegations of the appeal lodged on 20 January 2015 is made available’ and that ‘pictures of the products with the mark [applied for] ... were also submitted’. The applicant concludes that ‘the trade marks [at issue] peacefully coexist on the market’, that in practice it uses its other marks with the word mark ‘berg’ on the market and that the applicant ‘has achieved over time a prominent position on the market within the scope of its activity, its products being widely known by consumers’ and that ‘it is also possible to see on the website at www.sonaesharingnews.com information ... in respect of the [mark applied for]’.

26 Furthermore, it is apparent from the responses of EUIPO and the intervener that they were each able to prepare their defence as regards the arguments relating to, first, the coexistence of the marks at issue on the market and, second, the reputation of the mark applied for. As regards the alleged coexistence of the marks on the market, they relied on the relevant case-law and maintained that the evidence put forward by the applicant in that regard was insufficient. As regards the argument relating to the reputation of the mark applied for, EUIPO and the intervener responded by referring to the case-law to the effect that the reputation of the mark applied for had no bearing on the likelihood of confusion, and, consequently, maintained that that argument was irrelevant for the purposes of the proceedings.

27 In those circumstances, it must be concluded that the Court is in a position to rule on the merits of those two arguments which must, consequently, be considered admissible.

28 As regards, in the first place, the argument concerning the alleged coexistence of the marks at issue on the market, the Court observes that the Board of Appeal replied to the applicant’s argument concerning the alleged coexistence of the marks by specifying the evidence adduced by the applicant in support of that argument and by recalling the rules applicable in order for that coexistence to have a bearing on the assessment of the likelihood of confusion between the signs at issue in opposition proceedings.

29 In paragraph 30 of the contested decision, the Board of Appeal, in essence, considered that the applicant had failed to demonstrate that the marks at issue had coexisted peacefully on the EU market on account of the invalid and insufficient evidence that it had adduced. First, the Board of Appeal found that partial reproductions from the applicant’s websites did not include the publication date and that it had not submitted any further supporting documents of independent origin. Second, the Board of Appeal considered that the applicant’s reference to the use of its marks formed using the element ‘berg’ in 14 EU Member States was insufficient, in the light of case-law stating the importance of proving that the marks coexisted in the entire territory of the European Union and in the light of the failure to indicate the duration of that use on the market. Third, according to the Board of Appeal, the evidence submitted related only to the use, in particular, of the mark applied for, but did not demonstrate in any case use of the earlier marks. Finally, the Board of Appeal added that the evidence adduced by the applicant did not concern the manner in which the relevant public had been exposed to the marks at issue on the relevant market.

30 The Court considers that, in the light of the evidence submitted, it is impossible to find that the marks at issue coexisted on the market. Furthermore, in the course of the proceedings before the Court, the applicant did not adduce any evidence in support of its assertions, as described in paragraph 25 above. An unsupported assertion is insufficient for the purposes of demonstrating that the likelihood of confusion between the marks at issue is reduced, let alone removed.

31 It follows that the Board of Appeal did not err in rejecting, in paragraph 31 of the contested decision, the applicant’s argument relating to the alleged coexistence of the marks.

32 In the second place, the argument relating to the alleged reputation of the mark applied for must be considered to be ineffective.

33 According to settled case-law, the repute of a trade mark is relevant, in the context of the assessment of the likelihood of confusion, only as regards the repute of the earlier mark (see judgment of 16 September 2013, Gitana v OHIM — Teddy (GITANA), T‑569/11, not published, EU:T:2013:462, paragraph 72 and the case-law cited).

34 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.

35 According to settled case-law, 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. 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).

36 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).

37 The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue must be examined in the light of those considerations.

38 First of all, the parties do not dispute the Board of Appeal’s findings in paragraphs 41 and 51 of the contested decision regarding the relevant territory for the purposes of analysing the likelihood of confusion and the relevant public, and those findings are not erroneous. Moreover, the Board of Appeal was right to find that the relevant territory for the purposes of analysing the likelihood of confusion was the European Union and that the relevant public to be taken into account consisted of the average consumer for the goods in Classes 18 and 25 and the average consumer and a professional public for the goods in Class 22.

39 Furthermore, as the Board of Appeal correctly found in paragraph 49 of the contested decision, for the goods and services addressed both to the general public and to professionals, it is necessary to take into account the lowest level of attention of those two groups, namely that of a consumer belonging to the general public. The Board of Appeal, accordingly, did not err in reiterating, in paragraph 51 of the contested decision, the views of the Opposition Division to the effect that the general public displayed an average level of attention. That assessment is not, moreover, contested by the parties.

40 Likewise, the parties agree on the comparison of the goods in question made before the adjudicating bodies of EUIPO. The Board of Appeal confirmed, in paragraph 56 of the contested decision, the Opposition Division’s assessment that the goods covered in the present case were identical or similar to different degrees. The Court sees no reason to depart from that finding.

41 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).

42 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, 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).

43 In the present case, the marks at issue are, on the one hand, the figurative mark applied for containing the word elements ‘berg outdoor’ and, on the other hand, the earlier word marks BERGHAUS.

44 The Board of Appeal examined, first, the dominant and distinctive elements of the marks at issue. As regards the earlier marks, it considered that, being composed of a single element, those marks did not contain elements which could be considered to be clearly more dominant and that they displayed limited or normal distinctive character, depending on the language spoken by the relevant public.

45 According to the Board of Appeal, the word ‘berghaus’ is perceived as a juxtaposition of the words ‘berg’ meaning ‘hill, mountain’ and ‘haus’ meaning ‘house’ by a significant part of the public, namely that with knowledge of German, and, perhaps, that with knowledge of Dutch and Swedish, in so far as the word ‘berg’ meaning ‘hill, mountain’ also exists in Dutch and Swedish and the word ‘haus’ meaning ‘house’ is ‘huis’ in Dutch and ‘hus’ in Swedish. Considering that the earlier marks covered, inter alia, goods which could be used in the mountains, the Board of Appeal found that the earlier marks were endowed with a limited distinctive character for these goods for the part of the public capable of understanding those words, since they will be perceived as a reference to the intended purpose or inherent characteristics of those goods.

46 As regards the mark applied for, the Board of Appeal concluded, in paragraph 69 of the contested decision, that the letter combination ‘berg’ and the figurative element representing a mountain should be regarded as the two dominant elements of the sign, given their central position and larger size in comparison with the element ‘outdoor’. In the light of the fact that registration of the mark applied for had been requested, inter alia, for goods which could be used in the mountains, the Board of Appeal considered, in paragraphs 70 and 74 of the contested decision, that the word element ‘berg’ and the figurative element representing a mountain had limited distinctive character for part of the public, in particular that part with knowledge of German, Dutch and Swedish. For the other part of the public, which did not understand the word ‘berg’, the Board of Appeal considered, in paragraph 71 of the contested decision, that word to have a normal level of distinctiveness. According to the Board of Appeal, that other part of the public will focus primarily on the most distinctive dominant element, namely, in the present case, the word element ‘berg’, given that, according to the case-law, word elements are, in principle, more distinctive than figurative elements. Furthermore, the Board of Appeal considered, in paragraph 73 of the contested decision, that the word element ‘outdoor’ had weak distinctive character with regard to the public which understands English when that element was used for goods which could be used in the mountains.

47 Next, the Board of Appeal made a visual, phonetic and conceptual comparison of the signs at issue. It found, in paragraph 78 of the contested decision, that there was a certain visual similarity as a result of the coincidence in the element ‘berg’. The Board of Appeal considered, in paragraph 81 of the contested decision, that the signs had an average degree of phonetic similarity, since the pronunciation of the signs coincided in the identical letter combination ‘berg’ but differed in terms of the letters ‘haus’ of the earlier marks and the word ‘outdoor’ of the mark applied for. The Board of Appeal noted that the signs had a certain conceptual similarity for the part of the public capable of understanding the shared element ‘berg’. By contrast, for the other part of the public, the conceptual comparison was neutral.

48 Finally, the Board of Appeal carried out a global assessment of the signs at issue. It concluded, in paragraphs 99 and 101 of the contested decision, that, on the one hand, the differences exhibited in the signs at issue were not capable of outweighing fully the overall similarity between the marks owing to the coincidence in the element ‘berg’, which, moreover, appeared at the beginning of the earlier marks and of the word element of the mark applied for, of which it was also the dominant element, alongside the figurative element representing a mountain, and that, on the other hand, the relevant public might interpret the mark applied for as a variant of the earlier marks and think that the marks at issue shared the same commercial origin, particularly in the case of the part of the relevant public which is not capable of understanding the meaning of the word ‘berg’.

49 The applicant disputes the contested decision in that regard. It submits that the marks at issue are not very likely to lead to a likelihood of confusion if they are analysed as a whole. The differences in the composition of each mark are considerably greater than their similarities. It maintains that the mark applied for is a composite mark which possesses its own distinctive character which may be distinguished completely from the intervener’s marks, which are merely word marks, and that the overall graphic and figurative composition of the mark applied for is completely sufficient to create the necessary distinction between that mark and the earlier marks. The applicant claims that the signs at issue are not so similar as to lead to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

51 It must be held that the analysis and findings of the Board of Appeal concerning the comparison of the signs are not vitiated by any error. In the first place, the Board of Appeal identified the potential dominant and distinctive elements of the two signs at issue. In the second place, it compared the two signs from a visual, phonetic and conceptual perspective, in order to, in the last place, make a global assessment of any likelihood of confusion and to conclude that there was such a likelihood in the present case.

52 In the first place, as regards the assessment of the dominant and distinctive elements of the earlier marks and of the mark applied for, the Board of Appeal did not err in considering, in paragraphs 65 and 69 of the contested decision respectively, that the earlier marks BERGHAUS did not contain elements which could be regarded as clearly more dominant and that, in the mark applied for, the letter combination ‘berg’ and the figurative element representing a mountain should be seen as two dominant elements. The Court finds, as did the Board of Appeal, that the earlier marks are made up of a single component which has no visually eye-catching elements. So far as concerns the mark applied for, it must also be acknowledged that the word element ‘berg’ and the figurative element representing a mountain occupy a central position and that they are larger than the third element ‘outdoor’.

53 Furthermore, the Court considers that there is no reason to depart from the Board of Appeal’s assessment of the level of distinctiveness of all the elements of the two marks at issue. In concluding, in paragraphs 67, 68 and 70 to 74 of the contested decision, that the earlier marks and the word element ‘berg’ and the figurative element representing a mountain of the mark applied for have limited or normal distinctive character, and that the word element ‘outdoor’ of the mark applied for has weak distinctive character, the Board of Appeal examined the question whether or not those elements were at all descriptive of the goods at issue, both in terms of the perception of the relevant public and in respect of the goods covered.

54 That approach is consistent with the case-law to the effect that a sign’s descriptive nature can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 7 November 2014, Kaatsu Japan v OHIM (KAATSU), T‑567/12, not published, EU:T:2014:937, paragraph 30).

55 Moreover, the Board of Appeal’s assessment of the level of distinctiveness of all the elements of the two marks at issue cannot be called into question by the applicant’s mere assertion that the mark applied for is a composite mark with its own distinctive character. An unsubstantiated assertion is not sufficient to demonstrate that the mark applied for has distinctive character capable of reducing the likelihood of confusion between the marks at issue.

56 In the second place, as regards the visual, phonetic and conceptual comparison of the signs at issue, the contested decision must be upheld in so far as the Board of Appeal concluded that there was a certain visual similarity between the signs at issue, that they displayed an average degree of phonetic similarity, and that there was a certain conceptual similarity for the part of the public capable of understanding the meaning of the common element ‘berg’.

57 As regards, first, the visual comparison of the signs at issue, the Court finds, as did the Board of Appeal, that the common element ‘berg’ is placed at the beginning of the earlier marks and it is the first word element of the mark applied for. Accordingly, the Board of Appeal was right to consider, in paragraph 77 of the contested decision, that its position in the signs at issue played an important role, considering that the identical initial parts were capable of reducing the impact of the different letters at the end of the signs and that consumers tended generally to focus on the first element of a sign when confronted with a trade mark.

58 That assessment cannot be called into question by the applicant’s mere assertion that the graphic and figurative composition of the mark applied for is sufficient to create the necessary distinction with regard to the earlier marks, since the latter are merely word marks.

59 In that regard, it is necessary to point out, as EUIPO does, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43).

60 Next, as regards the phonetic comparison of the signs at issue, it must be noted that, just as the Board of Appeal correctly found in paragraph 80 of the contested decision, the pronunciation of the signs coincides in respect of the identical letter combination ‘berg’ but differs in respect of the letters ‘haus’ of the earlier marks and the word ‘outdoor’ of the mark applied for. It has previously been held that signs are phonetically similar where the word element of a mark is reproduced in its entirety in another mark, which is also the situation in the present case, concerning the dominant first word element, together with the figurative element, of the mark applied for (see, to that effect, judgment of 2 February 2012, Almunia Textil v OHIM — FIBA-Europe (EuroBasket), T‑596/10, not published, EU:T:2012:52, paragraph 38 and the case-law cited).

61 Furthermore, it appears, as the Board of Appeal considered, that it is highly probable that part of the relevant public might omit the word element ‘outdoor’ when pronouncing the mark applied for, either simply to economise on words because that element takes a relatively long time to pronounce and is easily separable from the rest when being spoken, or potentially by disregarding it because of its secondary position, much smaller size and very low level of inherent distinctiveness.

62 The findings in paragraphs 60 and 61 above cannot be called into question by the applicant’s assertion that consumers do not habitually separate or abbreviate expressions characterising a mark, in support of which it cites passages from two earlier decisions of the Opposition Division of EUIPO rejecting oppositions based on Article 8(1)(b) of Regulation No 207/2009, despite the fact that one mark featured in full at the beginning of the other mark.

63 In that regard, it should be noted that, according to settled case-law, the legality of the decisions of Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009 (now Regulation 2017/1001), as interpreted by the Courts of the European Union, and not on the basis of EUIPO’s previous decision-making practice, which, in any event, cannot bind the Courts of the European Union (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 33; and of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 35). Although, having regard to the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality, such that there cannot be equality in an unlawful act, and a person who files an application for registration of a sign as a trade mark cannot rely on a possibly unlawful act committed, to his advantage or to the benefit of someone else, in order to secure an identical decision. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered, and that examination must be undertaken in each individual case since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77; of 10 September 2015, Laverana v OHIM (BIO organic), T‑610/14, not published, EU:T:2015:613, paragraph 22; and of 17 May 2017, adp Gauselmann v EUIPO (MULTI FRUITS), T‑355/16, not published, EU:T:2017:345, paragraph 40).

64 Lastly, as regards the conceptual comparison of the signs at issue, it should be noted that although the average consumer normally perceives the mark as a whole, and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, have a concrete meaning or which resemble words known to him. It follows, on a conceptual level, that the average consumer, when perceiving a word sign, will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (judgment of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraphs 30 and 35).

65 In the present case, as regards the concept of the word ‘berghaus’ of the earlier word marks, it must be noted that it is very likely that the part of the relevant public with knowledge of German, Dutch and Swedish will perceive the word ‘berghaus’ as a juxtaposition of the words ‘berg’ meaning ‘hill, mountain’ and ‘haus’ meaning ‘house’. That word may be broken down into word elements which, for that public, resemble words which they know and which have a specific meaning.

66 As regards the figurative mark applied for, the word element ‘berg’ will also be perceived by part of the public as a reference to the concept of ‘mountain’. It should be noted that that word element precedes a representation of a mountain, which, moreover, reinforces the same concept of ‘mountain’ which is used in the signs at issue and may be perceived by part of the relevant public.

67 It is true, as the Board of Appeal noted in paragraph 82 of the contested decision, that a significant part of the relevant public could perceive the term ‘haus’ contained in the earlier marks and the word ‘outdoor’ in the mark applied for as conveying two different concepts, the first referring to the idea of a house and the second to that of the open air.

68 However, that conceptual difference is limited, given the presence of the word ‘berg’ in the marks at issue. First, that word which is common to those marks is positioned at the beginning of the sign of the earlier marks and, second, it is the dominant word element in the sign of the mark applied for. It plays an important role in the perception of those signs. Its presence in both signs may consequently suggest that there is a certain conceptual similarity for the part of the public capable of understanding the meaning of the common element ‘berg’, as the Board of Appeal was correct to observe.

69 As regards the global assessment of the signs at issue, the Board of Appeal was right to conclude that there was a likelihood of confusion, including a likelihood of association, that is to say, a likelihood that part of the relevant public which does not understand the meaning of the word ‘berg’ might interpret the mark applied for as a variant of the earlier marks and, accordingly, think that the marks at issue have the same commercial origin.

70 In its global assessment of the signs at issue, the Board of Appeal referred, in paragraphs 93 to 95 and 97 and 98 of the contested decision, to its conclusions concerning, first, the average level of distinctiveness of the earlier marks for the part of the relevant public which does not understand the meaning of the word element ‘berg’, next, the nature of the goods aimed for the most part at the average consumer and their identity and similarity and, finally, the visual, phonetic and conceptual similarities found between the marks at issue. Furthermore, in paragraph 102 of the contested decision, it noted the specific nature of the clothing and footwear sectors, in particular regarding the variants within product lines and the creation of sub-brands belonging to the same undertaking. Accordingly, the Board of Appeal took into account all the elements relevant in the present case.

71 In these circumstances, the Court sees no reason to depart from the findings of the Board of Appeal in paragraphs 99 and 101 of the contested decision. On the one hand, the Board of Appeal was right to conclude that the differences in the signs at issue cannot fully outweigh the overall similarity between the marks, on account of the coincidence in the element ‘berg’, which, moreover, appears at the beginning of the earlier marks and of the word element of the mark applied for, of which it is also the dominant element, together with the figurative element representing a mountain. On the other hand, it is not ruled out that that coincidence of the element ‘berg’ at the beginning of the marks at issue could have the effect of being perceived by the relevant public which does not understand the meaning of the element ‘berg’ as a variant of the earlier marks and as marks having the same commercial origin.

72 The applicant’s mere assertions that, first, the marks at issue would be unlikely to lead to a likelihood of confusion if they were analysed as a whole, second, that the differences in the composition of each mark are significantly greater than their similarities and, third, that it is necessary, in order for a likelihood of confusion or association between the marks to exist, to meet all the requirements of the concept of imitation cannot call into question the Court’s findings in paragraph 71 above. An unsubstantiated assertion is not sufficient to demonstrate that there is no likelihood of confusion.

73 In the light of all the foregoing, the Board of Appeal was right to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

74 Consequently, since the single plea in law relied on by the applicant is not well founded, the action must be dismissed, without it being necessary to respond to the applicant’s second head of claim seeking an order that EUIPO register the mark applied for.

75 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

2. Orders Sports Division SR, SA (SDSR) to bear its own costs and to pay those incurred by EUIPO and the intervener.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> SDSR v EUIPO - Berghaus (BERG OUTDOOR) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-139/16 (06 October 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T13916.html Cite as: [2017] EUECJ T-139/16, ECLI:EU:T:2017:705, EU:T:2017:705

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