VF International v EUIPO - Virmani (ANOKHI) (EU trade mark - Judgment) [2018] EUECJ T-548/17 (16 October 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative trade mark ANOKHI — Earlier EU figurative mark kipling — Earlier EU figurative mark representing the silhouette of a monkey — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001 EU) — Damage to reputation — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation 2017/1001))

VF International Sagl, established in Stabio (Switzerland), represented by T. van Innis, lawyer,

European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 May 2017 (Case R 2307/2015-4) relating to opposition proceedings between VF International and Mr Virmani,

composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,

having regard to the application lodged at the Court Registry on 16 August 2017,

1 On 24 June 2014, Mr Ken Virmani filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 9, 14, 18 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: ‘Baggage; Hand bags; Casual bags; Luggage boxes; Toiletry bags; Beach bags’;

– Class 25: ‘Waist belts; Shoes; Head scarves; Kerchiefs [clothing]; Collar protectors; Clothes, in particular of leather and textiles and in particular for women and men’.

4 On 10 October 2014, the applicant, VF International Sagl, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– EU mark registered on 11 December 1998 under No 165845 (‘the earlier mark No 165845’), reproduced below, covering goods in Classes 14, 16, 18, 24, 25 and 28 and corresponding, for each of those classes, to the following description:

– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks’;

– 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’;

– Class 24: ‘Textile and textile goods, not included in other classes; bed and table covers’;

– Class 28: ‘Games, toys; gymnastic and sporting articles not found in other classes; decorations for Christmas trees’:

– EU mark registered on 9 August 2002 under No 1459098 (‘the earlier mark No 1459098’), reproduced below, covering goods in Classes 9, 14, 16, 18, 24 and 25 and corresponding, for each of those classes, to the following description:

– Class 16: ‘Paper, prints, stationery, office requisites, except furniture’;

– Class 18: ‘Leather and leather imitations, travelling cases, suitcases, schoolbags, bags, handbags, travelling bags, backpacks, umbrella’s’;

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

7 On 20 July 2014, the Opposition Division rejected the opposition in its entirety.

8 On 17 November 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 decision of the Opposition Division.

9 By decision of 26 May 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the mark applied for and each of the earlier signs were not visually, phonetically and conceptually similar. Having noted that similarity between signs is a precondition for the application of the grounds for opposition laid down in Article 8(1)(b) and 8(5) of Regulation No 207/2009, it concluded that the Opposition Division had acted correctly in law by rejecting the opposition in its entirety. It added that the applicant had not, in any event, adduced evidence of the reputation of the earlier marks.

12 In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009, second, infringement of Article 8(5) of that regulation and, third, infringement of Article 85(1) of Regulation No 207/2009 (now Article 109 of Regulation 2017/1001) and Rule 94 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).

A. The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

13 The applicant complains that the Board of Appeal held, in infringement of Article 8(1)(b) of Regulation No 207/2009, that there could be no finding of a likelihood of confusion in the present caseif there wasno similarity between the mark applied for and each of the earlier marks.

14 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 is not to be registered if because of its identity with, or similarity to, an 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.

15 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. 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 identified (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).

16 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). It follows that similarity or identity of the marks at issue is a necessary condition for it to be found that there is a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009. Accordingly, the lack of similarity or identity between the marks at issue renders that provision inapplicable (see, to that effect, judgment of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 44).

17 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

18 The definition of the relevant public for the goods in question is not explicitly stated in the contested decision. Nevertheless, in paragraph 8 of the contested decision, the Board of Appeal noted that, for the purposes of Article 8(1) of Regulation No 207/2009, there must be a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Moreover, in paragraphs 12 and 14 of the contested decision, it is stated that the average consumer referred more easily to the goods in question by quoting their name than by describing the figurative elements of the trade mark. Despite the imprecision of those findings, it must be held that, in the light of the decision of the Opposition Division, the Board of Appeal referred to the relevant public as defined by the Opposition Division, namely, in essence, the general public of the European Union. The parties have not challenged that definition either before the Board of Appeal or the Court.

19 In order to assess the degree of similarity between the signs, it should be pointed out that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and 28 June 2012, I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, EU:T:2012:327, paragraph 41).

20 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs, 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).

21 In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must rely on the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

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

23 In assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 13 May 2015, easyGroup IP Licensing v OHIM — Tui (easyAir-tours), T‑608/13, not published, EU:T:2015:282, paragraph 36).

24 The applicant claims that the Board of Appeal made incorrect findings on the visual and conceptual levels during the comparison of the mark applied for with the earlier mark No 165845, which led it to conclude, incorrectly, that there was no similarity between those marks.

25 As regards the determination of possible distinctive and dominant elements in the mark applied for and in the earlier mark No 165845, the applicant complains that the Board of Appeal did not consider the representations of monkeys in those marks to be distinctive and dominant elements of those marks. In its opinion, having regard to the respective dimensions of the word and figurative elements in the mark applied for and in the earlier mark No 165845, the monkeys represented in those marks are as dominant and distinctive as the respective word elements ‘anokhi’ and ‘kipling’ of those marks.

26 In paragraph 14 of the contested decision, the Board of Appeal considered whether the mark applied for had distinctive or dominant elementsin the following terms:

‘The depiction of the monkey is not the dominant element of [the mark applied for]. Due to its smaller size in comparison to the letters of the word element and its location towards the end of the mark, the figurative element is not more prominent than the word element. Furthermore, in the case of a complex sign usually the verbal elements will be considered more distinctive than the figurative elements, because the average consumer will more easily refer to the goods or services in question by quoting their name than by describing the figurative elements of the trade mark.’

27 It follows that the Board of Appeal considered that the figurative element of the mark applied for was distinctive and that it was not negligible in the overall impression created by that mark, and that it held, furthermore, that the word element ‘anokhi’ did not dominate that overall impression.

28 In that regard, it must be noted that the representations of a monkey in the mark applied for and the earlier mark No 165845 must be taken into account for the purposes of the comparison of those marks. Their role in the impression given by those marks is not negligible because of their distinctiveness which the Board of Appeal has not denied and EUIPO does not dispute.

29 In any event, the Board of Appeal rightly noted that, where a sign consists of word and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of that sign (see, by analogy, judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 50 and the case-law cited).

30 Consequently, the applicant’s claims, which partly stem from an erroneous reading of the contested decision, must berejected.

31 The applicant disputes the findings of the Board of Appeal in the context of the assessment of the visual similarities between the mark applied for and the earlier mark No 165845. It maintains that, owing to the representations of monkeys in those marks, there is, at the very least, a certain degree of visual similarity between those marks. It adds that the minor differences in the graphic stylisation of the word elements of those marks are lost in the imperfect recollection that the consumer has of the marks.

32 In that regard, the Board of Appeal described the earlier mark No 165845 as a composite mark consisting of a word element ‘kipling’, in standard bold lower case letters, and a figurative element depicting a monkey walking towards the right with an extended tail. It did not give a detailed description of the mark applied for.

33 The Board of Appeal considered that the earlier mark No 165845 and the mark applied for conveyed a completely different overall impression and were visually dissimilar. Accordingly, it found that the word element ‘kipling’ of the earlier mark No 165845 had nothing in common with the word element ‘anokhi’ in the mark applied for and that the figurative elements of those marks were also different. In that regard, it noted that the monkeys represented in those marks walk in opposite directions, their backs are bent differently and their tails are of different length and shape.

34 It must be noted that, as was pointed out in paragraph 28 above, and contrary to EUIPO’s contentions, the representations of a monkey in the mark applied for and the earlier mark No 165845 must be taken into account for the purposes of the visual comparison of those marks.

35 Furthermore, it is common ground that the mark applied for contains the word element ‘anokhi’ written in black capital letters and a figurative element representing the silhouette of a monkey, whereas the earlier mark No 165845 contains the word element ‘kipling’ written in lower case black letters and a figurative element representing the silhouette of a monkey.

36 In addition to the differences between the word elements of those marks, there are differences between the figurative elements of the mark applied for and the earlier mark No 165845. As the Board of Appeal rightly noted, the monkeys represented appear to walk in opposite directions, their backs are bent differently and their tails are of different length and shape. As EUIPO contends, the tail of the monkey represented in the mark applied for bends towards the body of the monkey whereas, in the earlier mark No 165845, it bends away from its body.

37 Nevertheless, despite those differences, it must be stated that the mark applied for and the earlier mark No 165845 also display significant similarities. As the applicant correctly claims, the mark applied for and the earlier mark No 165845 both contain a word element of comparable length and have a similar structure, namely a word element and a figurative element representing the silhouette of a monkey. Moreover, the proportions of the marks, in particular the ratio between the size of the verbal and figurative elements of those marks, will be perceived as similar by the relevant public. In addition, as regards the figurative elements of those marks, EUIPO itself acknowledges that they represent monkeys with slender silhouettes that have a long tail and are walking. Furthermore, as the applicant rightly claims, the monkeys at issue are both represented in profile, on all four legs and as a black silhouette, so that only their outline is apparent. Finally, they are represented with a particularly long tail relative to their size and appear to be of a similar build.

38 It follows that, with regard to the relevant public which, according to the case-law referred to in paragraph 21 above, must rely on the imperfect picture of the signs that it has kept in its mind, the figurative element of the mark applied for and the figurative element of the earlier mark No 165845 display only minor differences which are not likely to outweigh the similarities between them. Thus, in both cases, the general public will recognise clearly and keep in its mind the representation of a black silhouette of a monkey in profile, on all four legs, with a long curved tail.

39 Consequently, irrespective of the differences between the word element of the mark applied for and that of the earlier mark No 165845, the significant similarities between the figurative elements of those marks as well as the similar proportions of those marks precluded them from being regarded as having no visual similarity.

40 It follows that the Board of Appeal wrongly held, in paragraph 22 of the contested decision, that the mark applied for and the earlier mark No 165845 were visually dissimilar.

41 The Board of Appeal found, and the parties do not dispute, that the mark applied for and the earlier mark No 165845 were not phonetically similar.

42 The applicant complains that the Board of Appeal found that the mark applied for and the earlier mark No 165845 were not conceptually similar, even though the presence of representations of monkeys of the same species in those marks created a similarity between them. It adds that, since they lack meaning for the relevant public, the respective word elements of the mark applied for and the earlier mark No 165845, ‘anokhi’ and ‘kipling’, do not introduce any differences between those marks.

43 The Board of Appeal found that the word element ‘anokhi’ of the mark applied for had no meaning and, accordingly, it did not convey any concept and that the figurative element of that mark was not dominant and could not, consequently, by itself impose a concept on that mark. It added that the conceptual comparison of the mark applied for and the earlier mark No 165845 could have produced a different result if the word elements of those marks had some relation to the concept of a monkey. It concluded that ‘no common concept [was] apparent in the conflicting signs’, from which it inferred that those signs were not conceptually similar.

44 It should be noted that, according to the case-law, a conceptual similarity arises from the fact that two marks use images with analogous semantic content (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 21 April 2010, Peek & Cloppenburg and van Graaf v OHIM — Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, EU:T:2010:152, paragraph 63).

45 The parties agree that, first, the figurative elements of the mark applied for and of the earlier mark No 165845 are not negligible in the overall impressions produced by those marks and, second, the public will recognise in those figurative elements the representations of monkeys as a silhouette.

46 Furthermore, it is not disputed that the word ‘anokhi’ in the mark applied for and the word ‘kipling’ in the earlier mark No 165845 have no meaning for the relevant public, so that they have no effect on that public’s conceptual perception of the mark applied for.

47 Accordingly, the relevant public will perceive the mark applied for and the earlier mark No 165845 as referring, conceptually, to a monkey.

48 It follows that those marks use images with analogous semantic content, within the meaning of the case-law referred to in paragraph 44 above.

49 Furthermore, having regard to the fact that the figurative elements of the mark applied for and of the earlier mark No 165845 are not negligible in the overall impression produced by those marks, the Board of Appeal erred in finding that the relevant public will not perceive the concept conveyedby those elements, on the ground that they were not dominant.

50 The Board of Appeal erred also by making the existence of a conceptual similarity between the mark applied for and the earlier mark No 165845 dependent on the presence in those marks of word elementsrecalling a monkey.

51 Therefore, the Board of Appeal could not legitimately find that those marks were conceptually dissimilar.

52 It follows that the Board of Appeal erred in finding that there was no similarity between the mark applied for and the earlier mark No 165845.

53 The applicant maintains that the Board of Appeal made incorrect visual, phonetic and conceptual assessments during the comparison of the mark applied for with the earlier mark No 1459098, which led it to conclude, erroneously, that there was no similarity between those marks.

54 As regards the determination of possible distinctive and dominant elements in the mark applied for and in the earlier mark No 1459098, the applicant complains that the Board of Appeal failed to consider that the representations of monkeys were distinctive and dominant elements of those marks and to determine the distinctive elements of the mark applied for. In its view, the monkey represented in the mark applied for is as dominant and distinctive as the word element ‘anokhi’ of that mark.

55 As is apparent from paragraph 26 above, the Board of Appeal did not consider that the figurative element of the mark applied for had no distinctiveness, or that it contributed only in a negligible way to the overall impression produced by that mark, or that the word element ‘anokhi’ dominated that overall impression. Moreover, since the earlier mark No 1459098 consists only of a figurative element, the Board of Appeal, rightly, did not look for distinctive or dominant elements in that sign.

56 In that regard, it must be noted that the representations of a monkey in the mark applied for and the earlier mark No 1459098 must be taken into account for the purposes of the comparison of those marks. Such a representation constitutes the sole element composing the earlier mark No 1459098 and, as regards the mark applied for, it contributes in a non-negligible way to the impression produced by that mark, because of its distinctive character, which the Board of Appeal did not denyand EUIPO does not dispute.

57 In any event, as recalled in paragraph 29 above, the Board of Appeal did not err in noting that, where a sign consists of word and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of that sign.

58 Consequently, the applicant’s claims, which partly stem from an erroneous reading of the contested decision, must berejected.

59 The applicant disputes the findings of the Board of Appeal in the context of the assessment of the visual similarities between the mark applied for and the earlier mark No 1459098. It maintains that, owing to the representations of monkeys in those marks, there is, at the very least, a certain degree of visual similarity between those marks.

60 In that regard, the Board of Appeal described the earlier mark No 1459098 as a purely figurative sign representing a monkey walking towards the right and with a long tail. It did not give a detailed description of the mark applied for.

61 The Board of Appeal considered that the earlier mark No 1459098 and the mark applied for were dissimilar and had no visual similarities, despite the fact that each of those marks contained a representation of a monkey. In that regard, it noted that those monkeys walk in opposite directions, their backs are bent differently and their tails are not the same length and shape. Furthermore, the monkeys were represented only as a silhouette with no other detail, so that the representations of those monkeys were simple, rather common and without any artistic value. Finally, the word element of the mark applied for had no counterpart in the earlier mark No 1459098.

62 It must be noted that, as was pointed out in paragraph 56 above, and contrary to EUIPO’s contentions, the representations of a monkey in the mark applied for and the earlier mark No 1459098 must be taken into account for the purposes of the visual comparison of those marks.

63 Furthermore, it is common ground that the mark applied for contains the word element ‘anokhi’ written in black capital letters and a figurative element representing the silhouette of a monkey, whereas the earlier mark No 1459098 merely represents the silhouette of a monkey.

64 In addition to the absence of a word element in the earlier mark No 1459098, there are differences between the figurative elements of the earlier mark No 1459098 and the mark applied for. As the Board of Appeal rightly noted, the monkeys represented appear to walk in opposite directions, their backs are bent differently and their tails are of different length and shape. As EUIPO contends, the tail of the monkey represented in the mark applied for bends towards the body of the monkey whereas, in the earlier mark No 1459098, it bends away from its body.

65 Nevertheless, despite those differences, it must be stated that the figurative elements of the mark applied for and the earlier mark No 1459098 also display significant similarities. As EUIPO itself accepts, those figurative elements represent monkeys with a slender silhouette, with a long tail and in a walking position. Furthermore, as the applicant rightly claims, the monkeys at issue are both represented in profile, on all four legs and as a black silhouette, so that only their outline is apparent. Finally, they are represented with a particularly long tail relative to their size and appear to be of a similar build.

66 It follows that, having regard to the relevant public which, according to the case-law referred to in paragraph 21 above, must, generally, rely on the imperfect picture of the signs that it has kept in its mind, the figurative element of the mark applied for and the earlier mark No 1459098 display only minor differences which are not such as to outweigh the similarities between them. Thus, in both cases, the general public will recognise clearly and keep in its mind the representation of a black silhouette of a monkey in profile, on all four legs, with a long curved tail.

67 It follows that, irrespective of the difference resulting from the presence of a word element in the sign at issue which is absent in the earlier mark No 1459098, the significant similarities between the figurative element of the mark applied for and the earlier mark No 1459098 precluded a finding that those marks were visually dissimilar.

68 The findings of the Board of Appeal that the representations of monkeys at issue were simple, common and without artistic value are not, assuming that they are proved to be correct and relevant for the purposes of assessing the similarities between the mark applied for and the earlier mark No 1459098, capable of calling that conclusion into question.

69 It follows that the Board of Appeal erred in finding, in paragraph 22 of the contested decision, that the mark applied for and the earlier mark No 1459098 were visually dissimilar.

70 The applicant complains that the Board of Appeal erred in finding that the mark applied for and the earlier mark No 1459098 were phonetically dissimilar, when the comparison of those marks was irrelevant in this respect. It claims that a phonetic comparison was not possible because the earlier mark No 1459098 is a figurative mark lacking word elements.

71 The Board of Appeal noted that the mark applied for is pronounced ‘anoki’ but that the earlier mark No 1459098 cannot be pronounced since it did not contain any word element. It found that the mark applied for and the earlier mark No 1459098 were phonetically dissimilar.

72 EUIPO contends that the finding of the Board of Appeal that the signs at issue were phonetically dissimilar is a ‘manifest’ error and, for that reason, the applicant’s claim is ineffective.

74 It should be recalled that a phonetic comparison is not relevant in the examination of the similarity of a figurative mark lacking word elements with another mark (see, to that effect, judgments of 25 March 2010, Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 67, and of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 45). A figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question. Accordingly, there is no need to examine separately the phonetic perception of a figurative mark lacking word elements and to compare it with the phonetic perception of other marks (judgment of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 46 and of 30 September 2015, Mocek and WentaKAJMAN Firma Handlowo-Usługowo-Produkcyjna v OHIM — Lacoste (KAJMAN), T‑364/13, not published, EU:T:2015:738, paragraph 45).

75 Accordingly, in the present case, it was not possible to find that the mark applied for and the earlier mark No 1459098 were either phonetically similar or dissimilar since the latter mark is a figurative mark with no verbal element.

76 It follows that the Board of Appeal was not justified, in the light of the case-law cited at paragraph 74 above, to consider that the mark applied for and the earlier mark No 1459098 were phonetically dissimilar.

77 The applicant complains that the Board of Appeal found that the mark applied for and the earlier mark No 1459098 were conceptually dissimilar, when the presence of representations of monkeys of the same species in those marks created a similarity between those marks. It adds that, since it does not have a meaning for the relevant public, the word element ‘anokhi’ of the mark applied for does not introduce any difference between those marks.

78 The Board of Appeal found that the word element ‘anokhi’ of the mark applied for had no meaning and, accordingly, it did not convey any concept and that the figurative element of that mark was not dominant and could not, consequently, by itself impose a concept on that mark. It added that the conceptual comparison of the mark applied for and the earlier mark No 1459098 could have produced a different result if those marks had contained word elements having some relation to the concept of monkey. It concluded that ‘no common concept [was] apparent in the conflicting signs’, from which it inferred that those signs were not conceptually similar.

79 As recalled in paragraph 44 above, conceptual similarity arises from the fact that two marks use images with analogous semantic content.

80 It is agreed between the parties that, first, the figurative element of the mark applied for contributes in a way which is not negligible to the overall impression produced by that mark and, second, the public will recognise in the figurative element of that mark and the earlier mark No 1459098 representations of monkeys as a silhouette.

81 In that regard, since the earlier mark No 1459098 consists only of such a representation, it will be identified and recalled by the relevant public, only by means of the image of a monkey (see, to that effect, judgment of 3 May 2017, Environmental Manufacturing v EUIPO — Société Elmar Wolf (Representation of the head of a wolf), T‑681/15, not published, EU:T:2017:296, paragraph 63).

82 Moreover, it is common ground that the word ‘anokhi’ in the mark applied for has no meaning for the relevant public, so that it does not affect that public’s conceptual perception of the mark applied for.

83 Accordingly, the relevant public will perceive the mark applied for and the earlier mark No 1459098 as referring, conceptually, to a monkey.

84 It follows that those marks use images with analogous semantic content, within the meaning of the case-law referred to in paragraph 44 above.

85 Furthermore, having regard to the fact that the figurative element of the mark applied for and the earlier mark No 165845 contribute in a way that is not negligible to the overall impression produced by those marks, the Board of Appeal erred in finding that the relevant public would not perceive the concept conveyed by that element, on the ground that it was not dominant.

86 The Board of Appeal also erred by making the existence of a conceptual similarity between the mark applied for and the earlier mark No 1459098 dependent on the presence in those marks of word elements recalling a monkey.

87 Therefore, the Board of Appeal could not legitimately find that those marks were not conceptually similar.

88 It follows from all the foregoing that the findings of the Board of Appeal in the context of the visual, phonetic and conceptual comparison of the mark applied for with the earlier mark No 165845, first, and the mark applied for with the earlier mark No 1459098, second, are vitiated by errors. The Board of Appeal erred in finding no similarity between the marks at issue and, on that basis, in considering that Article 8(1)(b) of Regulation No 207/2009 was not applicable in the present case and, accordingly, in dismissing the action brought before it, in so far as it concerned the application of that provision.

B. The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009

90 The applicant complains that the Board of Appeal erred in finding that the earlier marks No 165845 and No 1459098 do not have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. In that regard, it maintains that it demonstrated to the requisite legal standard the reputation of those marks and complains that the Board of Appeal failed to carry out an overall assessment of the evidence that it had submitted, but examined separately the various elements submitted for its consideration.

91 Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for must also not be registered where it is identical with, or similar to, the earlier trade mark — irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered — where that earlier trade mark is an earlier EU trade mark which has a reputation in the Union and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

92 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark and the mark applied for must be identical or similar. Secondly, in the case of an earlier EU trade mark, the earlier trade mark must have a reputation in the European Union. Thirdly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO — Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29).

93 In the present case, the Board of Appeal considered, in paragraph 25 of the contested decision, that, even on the assumption that the signs at issue were similar, the opposition based on Article 8(5) of Regulation No 207/2009 had to be rejected, on the basis that the applicant had not proved that the earlier markshad acquired a reputation in the European Union within the meaning of that provision.

94 In that regard, it must be borne in mind that, in order to satisfy the requirement of reputation, a mark must be known by a significant part of the public which is relevant with regard to the goods or services covered by that trade mark. In examining that condition, all the relevant facts of the case must be taken into consideration, in particular the market share held by the earlier mark, how intensive, geographically widespread and long-standing use of the mark has been, and the amount invested by the undertaking in promoting the mark, but there is no requirement for that mark to be known by a specific percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (judgments of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM — Cheng (B), T‑505/12, EU:T:2015:95, paragraph 100, and of 31 May 2017, SOTTO IL SOLE ITALIANO SOTTO il SOLE, T‑637/15, EU:T:2017:371, paragraph 44).

95 However, the above list being merely illustrative, it cannot be required that proof of the reputation of a mark pertains to all those elements (judgment of 8 November 2017, Oakley v EUIPO — Xuebo Ye (Representation of a discontinuous ellipse), T‑754/16, not published, EU:T:2017:786, paragraph 101).

96 In that regard, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, may be insufficient to constitute proof of the accuracy of those facts (see judgment of 8 November 2017, Representation of a broken ellipse, T‑754/16, not published, EU:T:2017:786, paragraph 103 and the case-law cited).

97 Territorially, the condition as to reputation must be considered to be fulfilled when the EU trade mark has a reputation in a substantial part of the territory of the European Union (judgment of 6 October 2009, PAGO International, C‑301/07, EU:C:2009:611, paragraph 27). In certain cases, the territory of a single Member State may be considered to constitute a substantial part of that territory (see, to that effect and by analogy, judgment of 6 October 2009, PAGO International, C‑301/07, EU:C:2009:611, paragraph 28).

98 In the present case, it is apparent from paragraphs 27 to 31 of the contested decision that, for the purposes of assessing the reputation of the earlier marks in the European Union, the Board of Appeal relied on the content of an affidavit of the President of the applicant’s Kipling division dated 12 May 2015 and on certain documents annexed to that affidavit, including catalogues of the applicant’s goods, a report from a firm of accountants, as well as press clippings and extracts of webpages. Following the examination of that evidence, it considered that, taken as a whole, it did not allow a finding that the earlier marks had a reputation in the European Union and that that evidence did not provide, in particular, any information about the consumer’s recognition of the earlier marks in Belgium and the European Union.

99 It must be noted that, by affidavit, the President of the applicant’s Kipling Division briefly recalled the history of the Kipling brand, submitted photographs of bags bearing the earlier mark No 165845 and gave the turnover and sales figures relating to bags, clothes and jewellery which allegedly bore one of the earlier marks in the European Union between 2004 and 2015 as well as figures relating to advertising expenditure in the European Union between 2009 and 2013.

100 It must be noted that an affidavit, drawn up in the interests of its author, such as that at issue in the present case, must, in order to have evidential value, be corroborated by other evidence (see, to that effect, judgments of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 57, and of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 68). Since that affidavit was sworn by an employee of the applicant, the Board of Appeal rightly considered that that affidavit had to be corroborated by other evidence.

101 In the present case, catalogues and extracts of catalogues of products from 1991 to 2005, 2007 and 2015, press clippings as well as a document entitled ‘Company profile’ were annexed to the affidavit.

102 As regards the catalogues and extracts of catalogues of products submitted by the applicant, the Board of Appeal criticised their evidential value, considering that they related to periods predating or postdating the application for registration of the mark applied for, namely 24 June 2014, and that, furthermore, the number of catalogues printed and distributed to potential clients was not specified.

103 In that regard, it must be noted that the reputation of an earlier mark must be established as at the filing date of the application for the contested mark (judgment of 16 December 2010, Rubinstein v OHIM — Allergan (BOTOLIST), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 52; see also, to that effect, judgment of 18 November 2014, Conrad Electronic v OHIM — British Sky Broadcasting Group and Sky IP International (EuroSky), T‑510/12, not published, EU:T:2014:966, paragraph 67).

104 Documents bearing a date after that date cannot, however, be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. It cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (see judgment of 16 December 2010, BOTOLIST, T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 52 and the case-law cited).

105 In that regard, EUIPO rightly argues, without being challenged by the applicant, that the catalogues from 2005 and 2007 and the extracts of catalogues from 1991 to 2004 show only very rare examples of the earlier marks appearing on goods corresponding to those for which the earlier trade marks were registered. Furthermore, the majority of photographs of goods included in those documents show a sign appearing on the goods that is different to the earlier marks. As for the 2015 catalogues, as they postdate the date of the application for registration of the mark applied for, they cannot demonstrate by themselves, according to the case-law referred to in paragraph 104 above, that the earlier marks had a reputation on the date of that application.

106 Moreover, again without being challenged by the applicant, the Board of Appeal found that it was not possible to determine the number of catalogues that had been printed and distributed.

107 As regards the very numerous extracts of websites and press clippings submitted by the applicant, the Board of Appeal contested the evidential value of some of those documents, on the ground that some of them included statements from persons connected to the applicant, others stemmed from publications that could not be identified or that were irrelevant to the assessment of the relevant public’s recollection of the earlier marks.

108 The applicant complains that the Board of Appeal dismissed the overall evidential value of all those documents, even though only some of those documents’ evidential value could be legitimately criticised. In particular, it claims that the evidence it submitted demonstrates the solid reputation of the earlier marks during the past 30 years and that, irrespective of the extent of the distribution of the publications which included articles relating to the earlier marks, the mere existence of such articles was relevant to establish the reputation of those marks. Furthermore, it maintains that the opinion of fashion professionals was also very relevant for that purpose.

109 In the present case, it must be stated that the very numerous extracts of websites and press clippings submitted by the applicant demonstrate some reputation of the goods identified as belonging to the Kipling brand. Nevertheless, it is apparent from that evidence that signs different to the earlier marks are also widely used to identify goods marketed by the applicant. Thus, a great number of photographs, appearing on numerous goods marketed by the applicant, display a round sign which includes, in particular, the word element ‘kipling’ but no figurative element representing a monkey. Similarly, as EUIPO rightly contends, a furry figure representing a monkey whose appearance and build are very different to the monkey represented as a silhouette in the earlier marks is often attached to goods marketed by the applicant. That figure is mentioned in a significant number of documents as allowing goods of the Kipling brand to be identified, as the Board of Appeal and EUIPO have rightly noted.

110 It must be recalled that it is for the applicant to adduce proof of the reputation of the earlier marks and not of the goods that it markets, independently of the signs or marks under which those goods are marketed. In these circumstances, documents showing a concurrent and significant quantitative use of several signs which are different to the earlier marks in order to designate the goods marketed by the applicant are equivocal and have little value for the purpose of showing that those earlier marks have acquired a reputation within the meaning of Article 8(5) of Regulation No 207/2009.

111 In that regard, in particular, it has not been shown that the advertising expenditure alleged in the affidavit referred to in paragraph 99 above was only destined for the promotion of the earlier marks and not for that of other signs under which the applicant marketed goods.

112 The same applies to the document entitled ‘Company profile’, which consists of a presentation of the applicant, made in the context of its activity of marketing goods. The different signs of the earlier marks described in paragraph 109 above appear in that document. In these circumstances, it has not been demonstrated that the information on the goods marketed, their distribution, as well as the turnover and sales figures of those goods concern only the goods sold under the earlier marks and not under other signs different to the former.

113 Moreover, the figures relating to turnover and annual sales are not accompanied by information on the market share which those sales figures represent, even though it is a relevant factor in the assessment of reputation, in accordance with the case-law referred to in paragraph 94 above. In that regard, it should be noted that turnover does not, in itself, give any indication of market share (see judgment of 8 November 2017, Representation of a broken ellipse, T‑754/16, not published, EU:T:2017:786, paragraph 108 and the case-law cited).

114 It follows from the foregoing that the evidence annexed to the affidavit referred to in paragraph 99 above is not capable of corroborating its content to the requisite legal standard.

115 As regards the report drawn up by a firm of accountants and concerning the applicant’s sales during the years 2009 and 2010, it consists of, first, a schedule referring to the annual turnover from the sale of bags bearing the corporate mark Kipling in the European Union between 2009 and 2015 and, second, an explanation by the author of that report of the method applied to draw upthat schedule. In that regard, the author stated that that schedule had not been created following an audit complying with applicable international accountancy rules, so that no guarantee could be given regarding the accuracy of the information it contains.

116 The Board of Appeal considered that that document was not capable of corroborating the applicant’s claims relating to the reputation of the earlier marks, because of its author’s disclaimer, the fact that the information on turnover concerned the ‘Kipling corporate mark’ without specifying whether that mark was one of the earlier marks, and finally, the fact that the territories on which the alleged sales took place were not mentioned.

117 The applicant downplays the consequences of the disclaimer of the author of the report on its evidential value, claiming that such a disclaimer is provided for under international standards. It adds that the reference made in the report to the ‘Kipling corporate brand’ must be understood as a reference to the earlier mark No 165845, as is apparent from the affidavit referred to in paragraph 99 above. Finally, the territory in which the turnover mentioned in that report was achieved is, as it appears from the very title of the schedule at issue, the territory of the European Union. It concludes that the Board of Appeal erroneously denied that report any evidential value.

118 In that regard, it must be noted that, even if it were assumed that the disclaimer in that report was essentially a formality and its inclusion results from the application of international standards, the fact remains that that factor does have a bearing on the evidential value of that document.

119 Furthermore, even after the combined reading of the report in question and the affidavit referred to in paragraph 99 above, the applicant’s claim that the turnover figures mentioned in the schedule annexed to the report in question concern sales of bags bearing the earlier mark No 165845 is not corroborated for the years 2009 to 2014, in respect of which no product catalogue has been submitted, or for 2015, in respect of which the applicant submitted catalogues in which appear a very large number of goods bearing signs different to that mark.

120 As for the territorial scope of the turnover achieved, the mere statement that the sales in question were achieved in the European Union does not give any indication as to whether a significant part of the public of the European Union knows the earlier marks and whether the reputation of those marks exists in a substantial part of the territory of the European Union, within the meaning of the case-law cited in paragraph 94 above.

121 Consequently, the Board of Appeal was right to find that the report drawn up by the accountancy firm was of little relevance for the purpose of substantiating the applicant’s claims, without, however, denying all evidential value to that document, contrary to what is claimed by the applicant.

122 Furthermore, the applicant complains that the Board of Appeal did not take into account certain evidence which it submitted, namely, in particular, screenshots and advertisements from social networks and on which appeared goods that it markets, a print-out of the Kipling Wikipedia page, an extract of a book dedicated to that mark and to photographs of celebrities sporting bags marketed by it.

123 In that regard, it must be noted that, since the assessment of reputation is based on an overall assessment of the evidence submitted, the applicant cannot require of the Board of Appeal that it adjudicate, in the contested decision, on the evidential value of each of the documents submitted.

124 Moreover, in stating the reasons for the decisions which they are led to take, the Boards of Appeal are not obliged to adopt a position on all the arguments relied on before them by the parties concerned. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 4 October 2017, Gappol Marzena Porczyńska v EUIPO — Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 120 and the case-law cited).

125 In that regard, it must be stated that the applicant was able to understand the reasons why its arguments and evidence relating to the reputation of the earlier marks had not been upheld by the Board of Appeal.

126 Moreover, the evidence that the Board of Appeal did not, according to the applicant, examine does not make it possible to demonstrate, even when combined with the other evidence submitted, the reputation of the earlier marks.

127 As regards the extracts of the book entitled ‘Monkey Business’, the applicant itself concedes that its author is one of the founders of the company ‘Kipling’. Moreover, it is apparent from the extracts submitted that, in addition to the earlier marks, furry figures such as that described in point 109 above are represented. Consequently, having regard to the considerations in paragraphs 109 and 110 above, those extracts are such as to demonstrate, as the applicant itself states, the reputation of the goods identified as being Kipling goods more than the reputation of the earlier marks themselves, which they do not establish unequivocally.

128 As regards the photographs of celebrities on which goods bearing the earlier marks are visible, they show a certain reputation of the glasses of the earlier mark among people with media exposure. However, the reputation of the mark must be assessed having regard to the relevant public for the goods that mark covers (see, to that effect, judgment of 8 November 2017, Representation of a broken ellipse, T‑754/16, not published, EU:T:2017:786, paragraph 105 and the case-law cited),namely, in the present case, the general public.

129 Therefore, no direct conclusion can be drawn from those photographs, in the absence of evidence making it possible to establish objectively the impact on the actual reputation of the mark among the general public, such as a survey or a market study (see judgment of 8 November 2017, Representation of a broken ellipse, T‑754/16, not published, EU:T:2017:786, paragraph 105 and the case-law cited). In that regard, as the Board of Appeal noted without challenge from the applicant, the fact that the earlier marks are known by 98% of consumers in Belgium was provided by the President of the Kipling division of the applicant and is not substantiated.

130 As regards the advertisements published in the media and social media, they showgoods on which signs other than the earlier marks appear, so that, in the light of the considerations in paragraphs 109 and 110 above, they are not such as to unambiguously establish the reputation of the earlier marks.

131 As regards, finally, the extract of the Wikipedia page dedicated to the Kipling brand,according to settled case-law,an extract of that site amounts to information lacking certainty since it is based on a collective encyclopaedia established on the internet, whose content may be amended at any time and, in certain cases, by any visitor, even anonymously (judgment of 10 February 2010, O2 (Germany) v OHIM (Homezone), T‑344/07, EU:T:2010:35, paragraph 46; see also judgment of 6 July 2016, Mozzetti v EUIPO — di Lelio (ALFREDO’S GALLERY alla Scrofa Roma), T‑97/15, not published, EU:T:2016:393, paragraph 38 and the case-law cited).

132 It follows from the foregoing that, inasmuch as they can be considered as actually relating to the earlier marks, the elements produced by the applicant before the Board of Appeal, even when taken as a whole, are insufficient to establish the reputation of those marks. Either they do not directly concern relevant evidence, or they merely demonstrate that those marks had a certain media visibility, which they may still have, but from which it cannot be inferred with sufficient certainty that theygave to those marks a reputation among a significant part of the relevant public, namely the general public. The reputation of a mark cannot be assumed on the basis of fragmentary and insufficient evidence (see judgment of 8 November 2017, Representation of a broken ellipse, T‑754/16, not published, EU:T:2017:786, paragraph 105 and the case-law cited).

133 Therefore, the Board of Appeal’s finding that the applicant has not established to the requisite legal standard that the earlier marks have a reputation is not vitiated by error. Accordingly, the second plea in law must be rejected.

134 Since the first plea in law of the action is successful, the contested decision must be set aside, and it is not necessary to rule on the third plea in law, by which the applicant complains, in essence, that the Board of Appeal ordered it to pay the legal representation costs of the other party to the proceedings before the Board.

135 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.

136 In the present case, since EUIPO has been largely unsuccessful, it must be ordered to pay the costs, as applied for by the applicant.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 May 2017 (Case R 2307/2015-4);

2. Orders EUIPO to bear its own costs and to pay those incurred by VF International Sagl.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> VF International v EUIPO - Virmani (ANOKHI) (EU trade mark - Judgment) [2018] EUECJ T-548/17 (16 October 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T54817.html Cite as: [2018] EUECJ T-548/17, ECLI:EU:T:2018:686, EU:T:2018:686

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