Morgese and Others v EUIPO - All Star (2 STAR) (Judgment) [2017] EUECJ T-568/15 (15 February 2017)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark 2 STAR — Earlier EU figurative mark ONE STAR — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and G. Sakalaite-Orlovskiene, acting as Agents,

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

All Star CV, established in Hilversum (Netherlands), represented by C. Sleep, Solicitor,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 1 July 2015 (Case R 1906/2014-5), relating to opposition proceedings between All Star, on the one hand, and Messrs G. Morgese, P. Morgese and F. D’Onofrio, on the other hand,

composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,

having regard to the application lodged at the Court Registry on 24 September 2015,

having regard to the response of EUIPO lodged at the Court Registry on 8 December 2015,

having regard to the response of the intervener lodged at the Court Registry on 4 December 2015,

having regard to the fact that no request for a hearing was submitted by the main 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 1 September 2011, the company governed by Italian law, XY3 Srl, 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).

3 The goods in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9, 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 9: ‘Spectacle frames, sunglasses frames, spectacle and sunglasses cases’;

– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; bags, holdalls, handbags, backpacks, trunks and travelling bags, key cases, key rings of leather, wallets, purses, briefcases of leather, card holders, make-up bags, umbrellas’;

– Class 25: ‘Articles of clothing, namely shirts, t-shirts, jumpers, trousers, skirts, jeans, jackets, bathing suits, hats and caps, footwear’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 171/2011 of 9 September 2011.

5 On 8 December 2011, Converse Inc. filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods covered by that mark.

6 The opposition was based, first, on the international registration designating the European Union which was registered under the number 929078 on 15 May 2007 in respect of the figurative mark reproduced below, and was received and accepted by EUIPO on 9 August 2007 and 20 June 2008 respectively:

7 That registration covered goods in Class 25 corresponding to the following description: ‘Footwear; clothing, namely, T-shirts, shorts, tank tops, sweatsuits, vests, pants, jackets, swimwear, sweaters, jeans and outerwear, namely, lined jackets, insulated snowmobile suits and nylon jackets’.

8 The opposition was based, secondly, on the EU figurative mark registered under the number 7600026, which was filed on 13 February 2009 and registered on 11 March 2014, as reproduced below:

9 The earlier EU mark covered goods and services in Classes 18, 25 and 35, corresponding, for each of those classes, to the following description:

– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; bags; wallets; pouches; bags for sports; handbags; duffle bags; backpacks; messenger bags; sporting bags (not shaped to contain specific apparatus used in playing sports) and pocket wallets; purses, shoulder bags, tote bags, and all-purpose sport bags’;

– Class 25: ‘Clothing, headwear, footwear; t-shirts, shirts, sweatshirts, sweatpants, pants, trousers, shorts, jackets, wind-resistant jackets, coats, anoraks, pullovers, jumpers, sweaters, jerseys, socks, polo shirts, caps, hats, visors, gloves, scarves, underwear, bras, swimsuits, dresses, skirts, shoes, sports shoes, cleated shoes, training shoes, leisure shoes, sandals, sweatbands, wristbands, headbands’;

– Class 35: ‘Advertising; business management; business administration; office functions; retail services and online retail services for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images ; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; eyeglasses, sunglasses, all purpose sports goggles, optical frames and accessories therefor, eyewear cases and accessories; paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding 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); printers’ type; printing blocks; binders, notebooks, posters, stationery type portfolios, brief case type portfolios; 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; bags; wallets; pouches; bags for sports; handbags; duffle bags; backpacks; messenger bags; sporting bags (not shaped to contain specific apparatus used in playing sports) and pocket wallets; purses, shoulder bags, tote bags, and all-purpose sport bags, clothing, headwear, footwear, t-shirts, shirts, sweatshirts, sweatpants, pants, trousers, shorts, jackets, wind-resistant jackets, coats, pullovers, jumpers, sweaters, jerseys, socks, polo shirts, caps, hats, visors, gloves, scarves, underwear, bras, swimsuit, dresses, skirts, shoes, sport shoes, cleated shoes, training shoes, leisure shoes, sandals, sweatbands, wristbands, headbands’.

10 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009. By letter of 21 June 2012, the opponent also relied on Article 8(5) of that regulation.

11 On 28 May 2014, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, finding, in essence, that the mark applied for and the earlier EU trade mark were to be regarded as similar.

12 On 23 July 2014, Messrs Giuseppe Morgese, Pasquale Morgese and Felice D’Onofrio, the applicants, filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

13 The applicants have appeared as the applicants for the requested trade mark in EUIPO’s file since 20 February 2015.

14 By decision of 1 July 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, first, it referred to the identity between the goods in Classes 18 and 25 covered by the contested mark and by the earlier EU trade mark and also, as regards the goods in Class 25, by the earlier international registration designating the European Union. Secondly, it found that there was a certain degree of similarity between, on the one hand, the goods at issue in Class 9, namely the ‘spectacle frames’, ‘sunglasses frames’ and ‘spectacle and sunglasses cases’, and, on the other hand, some of the opponent’s services in Class 35 covered by the earlier EU trade mark, namely the ‘retail services and online retail services’ in respect of ‘optical frames and accessories therefor, eyewear cases and accessories’. Thirdly, in the light of those factors and having regard to the very similar structure of the signs at issue and to the degree of visual, phonetic and conceptual similarity between them, the Board of Appeal found that there was a likelihood of confusion between the signs at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009.

15 On 9 July 2015, All Star CV, the intervener, which had in the meantime become the proprietor of the earlier marks, was entered in EUIPO’s file as the opponent in place of the undertaking Converse.

– order EUIPO to pay the costs, including those relating to the proceedings before the Fifth Board of Appeal;

18 The intervener disputes the admissibility of the action, on the ground that the application does not contain the pleas in law or a summary of those pleas in law as required by Article 76(d) of the Rules of Procedure of the General Court.

19 In that regard, it must be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute, and to Article 76(d) of the Rules of Procedure of the General Court, an application must, inter alia, contain the subject-matter of the dispute and a brief statement of the pleas in law on which the application is based. 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 further information. In order to guarantee legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (order of 19 September 2016, Gregis v EUIPO — DM9 Automobili (ATS), T‑5/16, not published, EU:T:2016:552, paragraph 18).

20 More specifically, whilst it should be acknowledged, first, that the statement of the pleas in law in the application need not conform with the terminology and layout of the Rules of Procedure and, secondly, that those pleas may be expressed in terms of their substance rather than of their legal classification, the application must nonetheless set out those pleas with sufficient clarity. Moreover, a mere abstract statement of the pleas in law in the application does not satisfy the requirements of the Statute of the Court of Justice of the European Union or the Rules of Procedure, and the expressions ‘brief statement of the pleas in law’ and ‘summary of those pleas in law’ used therein mean that the application must specify on what pleas the action is based (judgment of 28 September 2016, Pinto Eliseu Baptista Lopes Canhoto v EUIPO — University College London (CITRUS SATURDAY), T‑400/15, not published, EU:T:2016:569, paragraph 43).

21 It is true that, in the present case, the applicants do not invoke any specific provision that may have been infringed by the contested decision.

22 However, as is apparent from their application, they seek to show that there is no likelihood of confusion between the mark applied for and the two earlier registrations with regard to the goods and services at issue.

23 In so doing, they are, in essence, claiming infringement of Article 8(1)(b) of Regulation No 207/2009.

24 It follows that the intervener’s argument relating to the admissibility of the action must be rejected as unfounded.

25 As has been pointed out in paragraph 23 above, the applicants are relying, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

26 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, 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.

27 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

28 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was a likelihood of confusion between the mark applied for and the earlier EU trade mark with regard to the goods and services at issue. It is only if the Court holds that there is no such likelihood of confusion that it would be necessary to examine whether there is a likelihood of confusion as regards the mark applied for and the earlier international registration designating the European Union.

29 According to paragraph 20 of the contested decision, which is not disputed in that regard by the applicants, the target public ‘as regards most’ of the goods and services at issue consists of the general public, namely of average consumers in the European Union, who are reasonably well informed and reasonably observant and circumspect. Furthermore, the Board of Appeal stated that the level of attention of the consumer is average as regards those goods and services. As is apparent from paragraph 18 of the contested decision, which is also not disputed in that regard by the applicants, the relevant territory is, in the present case, that of the European Union.

30 Those findings must be upheld as regards the goods and services at issue (see paragraph 14 above), but the following points have to be made. As regards the goods ‘leather and imitations of leather’ in Class 18, it must be pointed out that those goods are aimed primarily at a professional public (judgment of 9 November 2016, Birkenstock Sales v EUIPO (Representation of a pattern of wavy, crisscrossing lines), T‑579/14, EU:T:2016:650, paragraph 32). However, according to the case-law, even though a section of the relevant public consists of professionals with a higher level of attention, the fact remains that another section of the relevant public, in respect of which it is not claimed that it is of no significance, consists of reasonably observant and circumspect average consumers. Consequently, as regards the assessment of whether there is a likelihood of confusion, the section of the public which has the lowest level of attention must be taken into consideration (see judgment of 24 January 2013, Yordanov v OHIM — Distribuidora comercial del frio (DISCO DESIGNER), T‑189/11, not published, EU:T:2013:34, paragraph 31 and the case-law cited). In the present case, it is thus also necessary to take into consideration the average level of attention of end consumers in respect of the goods in Class 18, including all the goods of ‘leather and imitations of leather’.

31 According to settled case-law, in assessing the similarity of the goods or services, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

32 In the present case, the Board of Appeal correctly found, in paragraph 24 of the contested decision, that the goods in Classes 18 and 25 covered by the mark applied for are identical to the opponent’s goods covered by the earlier EU trade mark due to the fact that the listings in the respective goods’ specifications are identical or form a broader category to each other.

33 Although the applicants do not call that assessment on the part of the Board of Appeal into question, they do, however, dispute the Board of Appeal’s finding, as set out in paragraph 26 of the contested decision, that the goods in Class 9 covered by the mark applied for, namely ‘spectacle frames’, ‘sunglasses frames’ and ‘spectacle and sunglasses cases’ may be regarded as being similar to a certain degree to the ‘retail services and online retail services’ in respect of ‘optical frames and accessories therefor, eyewear cases and accessories’ in Class 35 covered by the earlier EU trade mark.

34 More specifically, in the applicants’ opinion, goods are not, in principle, similar to services. In their view, too broad a protection would be given to retail services if a similarity were found to exist where the goods retailed are only highly similar or similar to the goods covered by the other mark. The applicants submit that not only are goods and retail services in respect of such goods different in nature, inasmuch as services are intangible whereas goods are tangible, but that goods and services also serve different needs. They maintain that retail services consist in bringing together and offering for sale a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one retail outlet. They submit that that is not the purpose of the goods. In their view, the method of use of goods and services is also different.

36 In the first place, as regards whether goods may be compared to services, it should be noted that the principles applicable to the comparison of goods also apply to the comparison between goods and services. It is true that, by their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary or that the services may have the same purpose or use as the goods, and thus be in competition with them. It follows that, in certain circumstances, goods and services may be found to be similar (see judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited). In particular, it is apparent from the case-law that there is a certain degree of similarity between retail services in respect of certain goods and those goods themselves (see, to that effect, judgment of 5 October 2011, Cooperativa Vitivinícola Arousana v OHIM — Sotelo Ares (ROSALIA DE CASTRO), T‑421/10, not published, EU:T:2011:565, paragraph 33).

37 Consequently, first, the applicants’ argument that the goods covered by the mark applied for cannot be similar to the services covered by the earlier EU trade mark, owing to their difference in nature, must be rejected (see, by analogy, judgment of 7 September 2016, VICTOR, T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited).

38 Secondly, it is also necessary to reject the applicants’ argument that the services covered by the earlier EU trade mark and the goods covered by the mark applied for cannot be similar because they are different in nature, in the sense that the services are intangible whereas the goods are tangible, they serve different consumer needs and the method of use of goods and services is different.

39 It is true that the fact that the services are intangible whereas the goods are tangible and the fact that the goods serve other consumer needs than the services shows that the services and goods are different in nature. However, as follows from what has been pointed out in paragraph 36 above, the mere difference in nature between the goods and services is not sufficient to rule out, from the outset, any similarity between them (see, by analogy, judgment of 7 September 2016, VICTOR, T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited).

40 Thirdly, the applicants’ argument that too broad a protection would be given to retail services if a similarity were found to exist where the goods retailed are only highly similar or similar to the goods covered by the other mark is also not convincing.

41 The Court does not have to examine that argument, because, in the present case, the goods are not similar or highly similar, but identical.

42 The goods in Class 9 covered by the mark applied for, namely ‘spectacle frames’, ‘sunglasses frames’ and ‘spectacle and sunglasses cases’ are not ‘similar’ but identical to the goods to which the retail services in Class 35 covered by the earlier EU trade mark refer, namely ‘optical frames and accessories therefor, eyewear cases and accessories’.

43 In the second place, as regards the factors that are capable of making it possible to conclude in the present case that the goods and services at issue are similar, it must be borne in mind, as has been stated in paragraph 33 above, that, in paragraph 26 of the contested decision, the Board of Appeal found, in particular, that the goods in Class 9 covered by the mark applied for could be regarded as resembling to a certain degree the services in Class 35 covered by the earlier EU trade mark. The Board of Appeal stated that that was the case because they were directed at the same public, were complementary and were offered by the same commercial operators.

44 In that regard, as has been pointed out in paragraph 42 above, and without it being necessary to rule on the issue, raised by the Board of Appeal, of whether the goods and services at issue are complementary, it must be held that the ‘retail services and online retail services’ in respect of ‘optical frames and accessories therefor, eyewear cases and accessories’ in Class 35 covered by the earlier EU trade mark concern goods which are identical to those in Class 9 covered by the mark applied for, namely ‘spectacle frames’, ‘sunglasses frames’ and ‘spectacle and sunglasses cases’.

45 As has been stated in paragraph 36 above, there is a certain degree of similarity between retail services in respect of certain goods and those goods themselves.

46 Consequently, given that the relevant public with regard to the goods and services at issue includes average consumers, and having regard to the fact that, as the Board of Appeal observed in paragraph 26 of the contested decision, without being contradicted in that regard by the applicants, the goods and services at issue are offered by the same commercial operators, the Board of Appeal’s finding that there is a certain degree of similarity between the goods and services at issue must be upheld.

47 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 28 September 2016, The Art Company B & S v EUIPO — G-Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 21 and the case-law cited).

48 In paragraph 33 of the contested decision, the Board of Appeal stated that the degree of visual similarity was average whereas in paragraph 35 of the same decision it found that the degree of visual similarity was above average. It stated that that was the case because the signs at issue have the word element ‘star’ as well as the figurative element of a five-pointed star device in common. It took the view that, furthermore, and more importantly, those signs have the same overall structure given that the star is positioned between two word elements in a standard typeface. By contrast, it found that the fact that the star overlaps with the elements ‘2’ and ‘star’ in the contested sign, which is not the case as regards the earlier marks, is ‘rather negligible’.

49 The applicants concede that there is some visual similarity between the signs at issue, particularly in their layout, since they both contain the word ‘star’ and a figurative element in the shape of a star. However, in the applicants’ opinion, the figurative element which they have in common, namely the star device, is rather commonplace in trade marks. The applicants submit that not much inherent distinctiveness and ‘trademark’ significance can be attributed to an ordinary element like a ‘plain’ star. They maintain that, moreover, the other elements which present similarities also relate to the general layout of the signs and are not particularly elaborate or sophisticated.

50 They submit that, what is more, the beginnings of the signs at issue are different. In their view, the initial word element in the mark applied for, which is not in the earlier marks, namely the element which can be perceived as a ‘2’ or as a reversed capital letter ‘S’ and which is connected to the remaining word element ‘star’ by the star that overlaps those two elements, is a highly important element which creates a totally different layout and overall impression from those of the earlier marks. They submit that, by contrast, the earlier marks follow a common pattern, which is formed by a word element separated by a plain star from another word element.

52 In that regard, it must be pointed out that the Board of Appeal’s findings as regards the visual similarity of the signs at issue are not completely consistent. As has been pointed out in paragraph 48 above, the Board of Appeal refers in one paragraph of the contested decision to an average degree of visual similarity and in another paragraph of the contested decision to an above average degree of visual similarity. Furthermore, it must be pointed out that, according to paragraph 33 of EUIPO’s response, it should, in EUIPO’ view, be held that all the signs are visually similar to ‘at least’ an average degree.

53 In the present case, it must be examined whether the signs at issue are visually similar.

54 In that regard, it must be stated that those signs have the same overall structure, which consists, in essence, of the juxtaposition of three elements, namely, first, an element resembling the number 2, so far as concerns the mark applied for, on the one hand, and the word ‘one’, so far as concerns the earlier EU trade mark, on the other hand, secondly, a figurative element in the shape of a star and, thirdly, the word element ‘star’ written in a standard font. As regards the first element of the mark applied for, the fact that it might also be perceived as a reversed capital letter ‘S’ does not in any way detract from the fact that the relevant public will tend to read it more as a ‘2’. In particular, both that element and the first part of the earlier EU trade mark, ‘one’, consist of standard letters which are the same size as the last part of the two signs, namely the word ‘star’. As regards the star-shaped device, the position and design of that element are identical in all three marks. That five-pointed star forms, in conjunction with the word ‘star’, an element which is common to all the signs at issue. By contrast, the fact that the star in the contested sign is smaller than the element resembling the number 2 and than the word element ‘star’, whereas the star in the earlier EU trade mark is almost the same size as the word element ‘one’, which also appears in that mark, does not have a decisive effect on the overall structure. That structure is also not altered by the impression created by the star placed above the element consisting of the number 2, the star and the word ‘star’. In other words, that element does not alter the impression created, in the contested mark as well as in the earlier EU trade mark, by the conjunction of the initial elements, namely the element resembling the number 2, on the one hand, and the word ‘one’, on the other hand, with the element consisting of the star and the word ‘star’, which those marks have in common. Moreover, the applicants do not dispute the finding in paragraph 31 of the contested decision, that the element consisting of the number 2, the star and the word ‘star’ is visually dominant in the mark applied for and attracts the consumers’ attention. Given that the star-shaped device containing the element ‘2 S’ which is situated above the element consisting of the number 2, the star and the word ‘star’ is smaller than that element and constitutes no more than a mere reference to and a repetition of that which appears below it, the relevant public will perceive it more as a decorative element.

55 In the light of those findings, it must be held that there is an above average degree of visual similarity between the signs at issue.

56 That finding is not called into question by the applicants’ other arguments.

57 First, the argument that the device in the shape of a ‘plain’ star, which is common to all the marks at issue, does not have much inherent distinctiveness visually because it is commonplace in trade marks must be rejected.

58 Even if it were appropriate to regard that figurative element as an element with a low degree of inherent distinctiveness, it must be pointed out that, contrary to what the applicants seem to submit, it cannot automatically be ruled out that the signs are similar if the signs coincide in elements which are weakly distinctive (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, paragraphs 46, 47 and 49, and of 5 February 2015, Türkiye Garanti Bankasi v OHIM — Card & Finance Consulting (bonus & more), T‑33/13, not published, EU:T:2015:77, paragraphs 41 and 42).

59 On the contrary, all the relevant factors must be taken into account when comparing the signs, including the presence of an element which is weakly distinctive and the question as to whether that element is of secondary importance in relation to the other elements in the signs (see, to that effect, judgment of 5 February 2015, bonus & more, T‑33/13, not published, EU:T:2015:77, paragraphs 44 and 45).

60 In the present case, although it is true that the element representing a star does not have any specific features that are capable of making it more perceptible visually than the other elements and that those other elements are neither particularly elaborate nor sophisticated, the fact remains that, within the signs at issue, it forms, in conjunction with the word element ‘star’, an element which is common to all the marks at issue and which cannot, in any event, be perceived as being of secondary importance.

61 The element in common consisting of the star and the word ‘star’ takes up a large part of the signs, contributes strongly to the overall structure of all of those signs and is therefore in a highly visible position.

62 Secondly, the argument that the contested sign cannot bring the earlier marks to consumers’ minds as the beginnings of the signs at issue are different can also not succeed.

63 It is apparent from the application that the beginning to which the applicants refer is, as regards the mark applied for, the element resembling the number 2, and not the figurative element situated above the element ‘2 star’.

64 In that regard, it must be borne in mind that the fact that the average consumer focuses more on the beginning of the marks cannot apply in all cases and call into question the principle that the examination of whether trade marks are similar must take into account the overall impression produced by those trade marks (judgment of 7 October 2010, Accenture Global Services v OHIM — Silver Creek Properties (acsensa), T‑244/09, not published, EU:T:2010:430, paragraph 23).

65 As has been pointed out in paragraph 54 above, the overall impression created by the signs at issue is similar owing to their identical overall structure. The element in common consisting of the star and the word ‘star’ also has a strong impact on that impression.

66 By contrast, the fact that, in the mark applied for, the star-shaped device overlaps the element resembling the number 2 and the first letter, ‘s’, of the word element ‘star’, whereas the earlier marks consist of a word element separated by a simple star from another word element, which, in the eyes of the applicants, corresponds to a ‘common pattern’, cannot be regarded as an element which alters decisively the structure of the signs at issue.

67 As EUIPO and the intervener have correctly pointed out, that overlap is hardly perceptible. It does not affect the legibility or the overall impression created by the mark because the element resembling the number 2 and the first letter, ‘s’, of the word element remain clearly visible. That is also true of the word ‘one’ and the first letter, ‘s’, of the word element ‘star’ in the earlier EU trade mark. Furthermore, the star-shaped device and the word elements in the earlier EU trade mark are placed in close proximity, which also contributes towards creating an overall impression which is similar.

68 The Board of Appeal pointed out, in paragraph 36 of the contested decision, that there is at least an average degree of phonetic similarity between the signs at issue owing to the identical pronunciation, irrespective of the rules of pronunciation in the different parts of the relevant territory, of the word element ‘star’, which those signs have in common. In order to reach that conclusion, it pointed out, in essence, that it was unlikely that the white element inside the upper star device in the contested sign would be pronounced at all and that the elements in the marks at issue to be compared phonetically were ‘2 star’, which would be pronounced as ‘two star’, on the one hand, and ‘one star’, on the other.

69 Given that the element resembling the number 2 in the mark applied for will be pronounced as if it were the English word ‘two’, whereas the first element in the earlier EU trade mark will be pronounced like the English word ‘one’, and that both signs contain the word ‘star’, it must be held that there is an average degree of phonetic similarity between the marks at issue.

70 In paragraphs 37 and 49 of the contested decision, the Board of Appeal found that, conceptually, the word element ‘star’, which the signs have in common, would be perceived as a reference to a star or a famous person. It took the view, furthermore, that all the signs share a general reference to ‘an amount or a number of stars’, namely ‘2 star’ versus ‘one star’. The Board of Appeal found that, consequently, the signs at issue are also conceptually similar.

71 The applicants concede that there is some conceptual similarity between the signs at issue, inasmuch as they all contain the word ‘star’. As in the context of their arguments seeking to call into question the visual similarity, the applicants point out, with regard to the conceptual similarity, that the distinctiveness of the word ‘star’ is, however, below average. They submit that that word is, to some extent, laudatory, in the sense that it may be perceived by the relevant public as a mere reference to the superior quality or popularity of the goods and services concerned. In their view, it is common in marketing to refer to superior goods and services as ‘star’ or to rate them with stars.

72 In that regard, the Court has already held that the word ‘star’ is part of basic English vocabulary and is generally known by a large part of the public in the European Union, including the public in non-English-speaking territories. Accordingly, the Court has held that that English word is generally understood, by a large part of the relevant public, as a laudatory term which emphasises the quality of the goods (see, to that effect, judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraphs 19 and 52). It has also held that the English word ‘star’ will be perceived as a reference to a star or a famous person (judgment of 21 January 2010, G-Star Raw Denim v OHIM — ESGW (G Stor), T‑309/08, not published, EU:T:2010:22, paragraph 32).

73 However, there is no need to rule, at this stage of the examination, on whether the word ‘star’ may be weakly distinctive. The weak distinctive character of an element of a mark does not necessarily mean that that element will not be taken into consideration by the relevant public. Accordingly, it cannot be ruled out that, owing, in particular, to its position in the sign or its size, such an element holds a specific position in the overall impression conveyed by the mark concerned in the perception of the relevant public (see, to that effect, judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited).

74 That is the case here as regards the element ‘star’, which the signs at issue have in common and which determines, to a large extent, the overall impression created by the signs at issue.

75 It follows that there is an average degree of conceptual similarity between the two marks at issue.

76 As regards the global assessment of the likelihood of confusion, it must be borne in mind that it implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 28 September 2016, THE ART OF RAW, T‑593/15, not published, EU:T:2016:572, paragraph 37).

77 The average consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). In that regard, consumers tend to remember similarities rather than dissimilarities between signs.

78 In the present case, as is apparent from paragraphs 31 to 45 above, the goods at issue in Classes 18 and 25 are identical. By contrast, the goods in Class 9 covered by the mark applied for, namely the ‘spectacle frames’, ‘sunglasses frames’ and ‘spectacle and sunglasses cases’ may be regarded as being similar to a certain degree to the ‘retail services and online retail services’ in respect of ‘optical frames and accessories therefor, eyewear cases and accessories’ in Class 35 covered by the earlier EU trade mark.

79 As is apparent from paragraphs 47 to 75 above, the overall impression created by the marks at issue is the product of an above average degree of visual similarity and an average degree of conceptual and phonetic similarity.

80 The fact that the goods covered by the mark applied for in Class 9, on the one hand, and the services covered by the earlier EU trade mark in Class 35, on the other hand, are only similar to a certain degree is offset by the visual, conceptual and phonetic similarity between the marks at issue.

81 In the light of those findings, and since the goods at issue are either identical (see paragraph 32 above) or similar to an average degree (see paragraph 45 above) and the signs at issue, assessed as a whole, are similar to a high degree visually, similar to an average degree phonetically and similar to an average degree conceptually (see paragraphs 55, 69 and 75 above), there is, with regard to the goods and services at issue, a likelihood of confusion between the trade marks at issue on the part of the relevant public, in particular the relevant public with an average level of attention. Consumers might believe that the goods and services covered by the marks at issue come from the same undertaking or, as the case may be, from economically-linked undertakings.

82 That finding cannot be called into question by the applicants’ other arguments.

83 First, the applicants submit that the distinctiveness of the earlier EU trade mark is below average.

85 The distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. The examination of the distinctive character of the earlier mark is particularly relevant in circumstances where there is only a low degree of similarity between the signs and where it is necessary to determine whether that low degree of similarity between the signs may be offset by a high degree of similarity between the goods (judgment of 28 September 2016, THE ART OF RAW, T‑593/15, not published, EU:T:2016:572, paragraph 39).

86 Even if the degree of inherent distinctive character of an earlier mark were lower than average, such a weak distinctive character would not, in itself, preclude a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45). Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services covered (judgments of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70).

87 Secondly, the applicants submit that, as the beginnings of the signs at issue, on which most of the consumers’ attention will be focused, are different, the contested sign is not capable of bringing the earlier marks to consumers’ minds.

88 In that regard, it must be pointed out that the word ‘one’ and the word ‘star’ in the earlier EU trade mark are the same size. That is also true of the first element in the mark applied for, namely the element resembling the number 2, and the word element ‘star’. In the light of that fact and the presence of the element consisting of the star and the word ‘star’, which is not of secondary importance within any of the marks at issue, the average consumer, who will view the marks rather as a whole, will not pay more attention to the beginnings of the marks. If the marks at issue are considered as a whole, the impression made on consumers by the word and figurative elements, taken together, is not different.

89 Furthermore, the element in the mark applied for which is capable of being perceived as the number 2 might give the impression that it is connected with the word ‘one’ in the earlier EU trade mark. In any event, it may lead consumers to think that the mark applied for will again cover goods and services that are already covered by the earlier sign.

90 It follows from all of the above considerations that the Board of Appeal was right in finding that there is a likelihood of confusion between the mark applied for and the earlier EU trade mark. Consequently, the single plea in law put forward by the applicants must be rejected as unfounded and the action must therefore be dismissed in its entirety. In those circumstances, there is no need to examine whether there is also a likelihood of confusion between the mark applied for and the earlier international registration designating the European Union.

91 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.

92 Since the applicants have been unsuccessful, they must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

2. Orders Messrs Giuseppe Morgese, Pasquale Morgese and Felice D’Onofrio to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Morgese and Others v EUIPO - All Star (2 STAR) (Judgment) [2017] EUECJ T-568/15 (15 February 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T56815.html Cite as: ECLI:EU:T:2017:78, EU:T:2017:78, [2017] EUECJ T-568/15

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