Pelikan v EUIPO - NBA Properties (NEW ORLEANS PELICANS) (EU trade mark - Judgment) [2018] EUECJ T-112/17 (12 September 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark NEW ORLEANS PELICANS — Earlier EU word marks and earlier national figurative mark Pelikan — Article 8(1)(b) and Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001)

Pelikan Vertriebsgesellschaft mbH & Co. KG, established in Hanover (Germany), represented by U. Hildebrandt, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Gája and D. Walicka, acting as Agents,

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

NBA Properties, Inc., established in New York, New York (United States), represented initially by M. Chapple, and subsequently by T. Elias, Barristers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 December 2016 (Case R 408/2016-4), concerning opposition proceedings between Pelikan Vertriebsgesellschaft and NBA Properties,

composed of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz and N. Półtorak, Judges,

having regard to the application lodged at the Court Registry on 17 February 2017,

having regard to the response of EUIPO lodged at the Court Registry on 4 May 2017,

having regard to the response of the intervener lodged at the Court Registry on 11 May 2017,

1 On 25 January 2013, the intervener, NBA Properties, Inc., 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 and services in respect of which protection was sought are in Classes 9, 16, 18, 25, 28 and 41 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.

4 The trade mark application was published in Community Trade Marks Bulletin No 61/2013 of 28 March 2013.

5 On 11 April 2013, the applicant, Pelikan Vertriebsgesellschaft mbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

– the German figurative mark in black and white registered on 17 July 2013 and renewed until 28 February 2023 under number 30310673, covering, inter alia, goods and services in Classes 9, 16, 18, 25, 28 and 41, as reproduced below:

– the EU word mark Pelikan registered on 1 March 2011 under number 6218631 covering, inter alia, goods and services in Classes 9, 16, 18 and 41;

– the EU word mark Pelikan registered on 20 May 2009 under number 7366073 covering, inter alia, goods and services in Classes 25 and 28.

7 The ground initially relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). Subsequently, before the end of the opposition period, the applicant also relied on the ground set out in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/2001).

8 On 21 December 2015, the Opposition Division upheld the opposition in respect of all of the contested goods and services. The Opposition Division found, in particular, that there was a likelihood of confusion in the public mind between the earlier word marks and the contested application for a mark pursuant to Article 8(1)(b) of Regulation (EC) No 207/2009, taking into account the identity and the similarity of the goods and services in question and the similarity of the signs at issue. The Opposition Division did not consider it necessary to assess the enhanced distinctiveness claimed and the reputation of the earlier mark.

9 On 19 February 2016, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

10 By decision of 16 December 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division and authorised registration of the mark applied for.

11 As regards the claim that Article 8(1)(b) of Regulation No 207/2009 had been infringed, the Board of Appeal found that the signs were different overall, which precluded the existence of a likelihood of confusion (see paragraphs 20 to 27 of the contested decision).

12 In relation to the claim that Article 8(5) of Regulation No 207/2009 had been infringed, the Board of Appeal took the view that that argument was inadmissible in view of the absence of precise information on the earlier mark and on the goods for which a reputation was claimed. The Board of Appeal also found that, even if that argument were admissible, it would have to be rejected, in view of the differences between the signs and the fact that the applicant had failed to submit a coherent line of argument as to why use of the mark applied for in respect of the goods and services concerned would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark (see paragraphs 15 and 28 to 31 of the contested decision).

15 In support of its action, the applicant relies on eight pleas in law, alleging, in the first seven, infringement of Article 8(1)(b) of Regulation No 207/2009 and, in the final plea, infringement of Article 8(5) of that regulation. In essence, the applicant contests the result of the comparison of the signs at issue, by disputing, first, the analysis of the various elements that compose the figurative mark applied for, and second, certain assessments relating to the visual, phonetic, and conceptual comparisons of that mark with the earlier marks.

17 Under Article 8(1)(b) of Regulation No 207/2009, 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.

18 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of 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).

19 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).

20 In the present case, it must be borne in mind that in the contested decision the Board of Appeal found that there was no likelihood of confusion solely on the ground that the signs at issue were different (see paragraphs 25 to 27 of the contested decision). This is the analysis that is at issue in the present case.

21 On this point, it should first be borne in mind that none of the parties refers to or calls into question the definition of the relevant public, which, first, explicitly includes the public at large in all of the Member States, and second, implicitly includes the German public at large, for the comparison of the mark applied for with the other earlier marks (see paragraphs 17 and 27 of the contested decision). This definition, which is not vitiated by error, must be upheld.

22 It should also be noted that the 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 proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

23 As a preliminary point, in its description of the mark applied for, the Board of Appeal noted the following at paragraph 21 of the contested decision. First, it found that this mark consists of a logo which is dominated by the words ‘new orleans’ — written in slightly stylised capital letters, the first ‘n’ and the last ‘s’ somewhat larger than the other letters in between and presented in a curved way — being ‘part of a striking graphic design’ below which is ‘what may be perceived as a head of an angry looking bird with its beak forming an integral part of a circular device with the lining pattern of what seems to be a basketball surrounded by what seems to be a pair of wings’. Second, the Board of Appeal noted that above this dominant part is a small French lily in between two curled lines, and that below that part is the word ‘pelicans’ written in small capital letters following the curved line underneath. The Board of Appeal took the view that the French lily and the word ‘pelicans’ play only a secondary role within the overall impression conveyed by the mark applied for.

24 That analysis of the mark applied for and the effect that it could have had on the visual comparison of the signs at issue are the subject of the applicant’s first three complaints (see paragraphs 26, 33, 38 and 46 below).

25 To establish that the signs at issue were different visually, phonetically and conceptually, the Board of Appeal then indicated the following, at paragraphs 22 to 24 of the contested decision, as regards the comparison of the mark applied for with the earlier EU word marks.

26 Visually, the Board of Appeal noted that the dominant part of the contested mark had no counterpart in the earlier word marks, which consist of the single word ‘pelikan’. The Board of Appeal also indicated that the only resemblance between the signs at issue lay in the fact that those earlier word marks were similar to the word ‘pelicans’ used by the mark applied for. However, as that word only plays a secondary role in the overall impression conveyed by the mark applied for, the Board of Appeal concluded that this simple fact could not render the marks similar.

27 Phonetically, the Board of Appeal noted that, as the figurative elements will not be pronounced, the mark applied for would be pronounced ‘new orleans’ or ‘new orleans pelicans’. Therefore, the Board of Appeal found that only in the second situation would the earlier marks resemble the last part of the mark applied for. However, as the word ‘pelicans’ only plays a secondary role and does not dominate the mark applied for, the Board of Appeal concluded that the signs at issue were also dissimilar from a phonetic point of view.

28 Conceptually, the Board of Appeal found that the signs at issue differed due to the presence of the words ‘new orleans’, and due to the head of an indefinable angry looking bird surrounded by wings and holding a basketball under his beak. It also indicated that the only similarity lay in the sense of the words ‘pelicans’ and ‘pelikan’. However, as the word ‘pelicans’ only plays a secondary role within the mark applied for, the Board of Appeal held that this resemblance could not compensate for conceptual differences between the signs.

29 That analysis is the subject of the applicant’s other two complaints, which focus on the assessment of the phonetic comparison and the conceptual comparison, the first three complaints already concerning the assessment of the visual comparison.

30 Consequently, the Board of Appeal found that the signs are different overall, which precludes the existence of a likelihood of confusion (see paragraphs 25 and 26 of the contested decision). As regards the comparison of the mark applied for with the earlier national figurative mark, the Board of Appeal also stated that the differences between the signs are even more striking (see paragraph 27 of the contested decision).

31 As a result this presentation, the Court notes that the conclusion reached by the Board of Appeal is based on a whole body of elements which may be summarised as follows for the purposes of the present case:

– the mark applied for is composed of, first, a striking figurative element dominated by the words ‘new orleans’ which also includes a stylised angry-looking bird with a basketball for a body — a bird which could potentially be perceived as a pelican — and, second, the word ‘pelicans’, written in small letters, which have a secondary role in the overall impression conveyed by that mark;

– visually, the dominant part of the mark applied for has no counterpart in the earlier marks; the only resemblance between these marks relating to the presence, first, of the word ‘pelicans’ — in a secondary role within the overall impression conveyed by the mark applied for — and, second, of the word ‘pelikan’;

– phonetically, in any event, even though the pronunciation of the signs at issue is, on the one hand, ‘new orleans pelicans’, and on the other hand ‘pelikan’, the differences override the similarities;

– conceptually, although there is a conceptual similarity owing to the meaning of the words ‘pelicans’ and ‘pelikan’, the secondary role of that element in the mark applied for and the differences resulting from the elements that characterise the striking figurative element of that mark establish a difference in the signs at issue in that regard.

32 The Court will assess, in light of this analysis by the Board of Appeal of the distinctive elements of the mark applied for and the visual, phonetic and conceptual comparison of the signs at issue, the applicant’s various complaints, which are limited to disputing that assessment of the similarity of the signs in a narrow and specific way, without directly calling it into question as a whole.

33 In the first place, the applicant argues that the Board of Appeal distorted the facts by finding that the mark applied for consisted of ‘what may be perceived as a head of an angry looking bird with its beak forming an integral part of a circular device with the lining pattern of what seems to be a basketball surrounded by what seems to be a pair of wings’. It submits that this figurative element clearly depicts a pelican. It should have been described as ‘a pelican with its body designed like a basketball’.

34 In that regard, it should be noted that in its description of the figurative element that dominates the mark applied for, the Board of Appeal did not rule out that the bird depicted could potentially be perceived as a pelican. The description of the figurative element in the contested decision mentions ‘the head of a bird’, a ‘beak’ and a ‘pair of wings’; those three elements are to be found in the depiction of a pelican.

35 However, contrary to what is asserted by the applicant, it cannot be concluded that this element is ‘clearly’ a pelican. The principal characteristic of a pelican, which distinguishes it from birds that resemble it, is to have a large beak equipped with a voluminous expandable pouch. In view of the description given by the Board of Appeal in the contested decision, the bird depicted in a frontal view in the mark applied for could evoke a pelican or a stork or any other bird with a large wingspan and a long pointed beak without the abovementioned characteristic.

36 Moreover, for the part of the relevant public which might perceive the bird depicted on the sign applied for as a pelican, in view, in particular, of the presence, under the ‘striking graphic design’, of the word ‘pelicans’, noted by the Board of Appeal, it would then — as was rightly pointed out by the Board of Appeal — probably be an ‘angry’ pelican or — as was indicated by the applicant in its application — of an ‘[angry] pelican with the body of what seems to be a basketball’.

37 The applicant’s argument that the Board of Appeal distorted the facts when describing the ‘striking graphic design’ that appears in the mark applied for cannot thus be upheld.

38 In the second place, the applicant criticises the Board of Appeal for not correctly analysing the relative weight of the various components of the mark applied for. The element ‘new orleans’ refers to the name of a major city of the United States, known, in particular, for its creative and clothing industry. The relevant public would thus perceive that element as a merely descriptive indication of a geographical place. Such an element is not dominant, but weak and not distinctive at all. Furthermore, the image of a pelican and the word ‘pelicans’ are in the present case highly distinctive and are not descriptive.

39 On that point, it cannot be alleged that the Board of Appeal did not examine the relative weight of the various components of the mark applied for. It is after such an examination that the Board of Appeal concluded that a striking figurative element that includes the words ‘new orleans’ dominated the sign and that the word ‘pelicans’ only played a secondary role in it.

40 Moreover, as regards, more particularly, the assessment by the Board of Appeal of the striking figurative element that includes the words ‘new orleans’, it is correct to note, as the applicant argues, that the relevant public will not consider, in general, a descriptive element forming part of a composite mark to be the dominant element of that mark. However, specific circumstances may justify a descriptive element having a dominant character (see judgment of 20 July 2016, TeamBank v EUIPO — Easy Asset Management (e@sy Credit), T‑745/14, not published, EU:T:2016:423, paragraphs 40 and 41, and the case-law cited).

41 In the present case, for the words ‘new orleans’ to be perceived by the relevant public as descriptive of the geographic origin of the goods and services covered by the mark applied for, it must be established that not only is that geographic name known to the relevant public as such, but also that the name currently presents, in the eyes of that public, a link with the goods or services concerned, or that it is reasonable to assume that such a name may, in their view, designate the geographic origin of those goods or services. In turn, in making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see, by analogy, judgment of 15 January 2015, MEM v OHIM (MONACO), EU:T:2015:16, paragraph 47 to 51 and the case-law cited, on an absolute ground for refusal for descriptive character of the mark applied for). However, as EUIPO notes, while the relevant public well knows that the words ‘new orleans’ present a link with jazz music, which originates in that city, or with the festivities of Carnival, also known in New Orleans under the name of ‘mardi gras’, there is no element here that establishes the slightest link between that city in the United States, the 46th by size with a population of around 350 000 inhabitants according to EUIPO, and the various goods and services covered by the mark applied for.

42 Moreover, in any event, it must be noted that the words ‘new orleans’ are not used in isolation, but are integrated — as was rightly noted by the Board of Appeal — in a striking figurative element that also includes the head of an angry looking bird with its wings spread and of which the body looks like a basketball. It is thus in the light of this striking figurative element and the overall elements that the use of the words ‘new orleans’ must be analysed, when assessing the link that this geographic name could have with the goods or services concerned. In the light of the three elements that characterise that striking figurative element, namely the name of a city in the United States, the design of an angry bird and the reference to a basketball, it may be held that if the goods or services concerned could be linked to that city, it would be as a reference to a basketball team whose emblem is an angry bird.

43 The applicant’s assertion — without any evidence supporting it and without taking account of the striking figurative element which dominates the sign applied for — that the relevant public perceives the words ‘new orleans’ as a purely descriptive geographic indication of the goods and services covered by the mark applied for cannot be upheld.

44 Lastly, the Board of Appeal’s assessment as to the secondary role of the word ‘pelicans’ cannot be called into question by the fact that this word is not devoid of distinctiveness or is not descriptive of the goods and services covered by the mark applied for. As is correctly stated in the contested decision, this mark consists of a logo that is, first, dominated by the words ‘new orleans’, which is part of a striking figurative element including the stylised representation of an angry bird and a basketball, and, second, includes other elements, like the word ‘pelicans’, which only play a secondary role in the overall impression conveyed by that mark.

45 It is apparent from the foregoing that the complaint that there was no assessment of the constituent elements of the mark applied for must be rejected as unfounded.

46 In the third place, the applicant maintains that the Board of Appeal analysed the elements of the mark applied for without examining the overall impression that they create. Thus, the Board of Appeal allegedly overlooked the fact that the average consumer will see the word ‘pelicans’ and the graphic element of the pelican as a whole (see, by analogy, judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, EU:T:2008:114, paragraphs 79 and 81). The words ‘new orleans’ do not alter that overall impression but serve only as an additional indication of the origin of the goods or of a company seat.

47 In that regard, as was already indicated at paragraphs 34 to 37 above, the Board of Appeal was entitled to find, first, that the striking figurative element dominated by the words ‘new orleans’ included the stylised representation of an angry bird, which was could potentially be perceived as a pelican, and, second, that the word ‘pelicans’ only plays a secondary role in the overall impression conveyed by the mark applied for. That secondary role can be explained in particular by the smaller size of the word ‘pelicans’ and by its minor positioning compared to that of the striking figurative element referred to above.

48 Similarly, contrary to what the applicant claims, as regards the part of the relevant public that might identify the stylised representation of the bird in the striking figurative element described in the contested decision, on account of the word ‘pelicans’ underneath, the fact remains that the angry pelican that is depicted does not display the characteristic trait of such a bird, namely its large beak with a voluminous expandable pouch. The mark applied for in the present case is distinguishable in that regard from the mark in the case referred to by the applicant, where the sign applied for was purely figurative and clearly showed the characteristic beak of the pelican in a stylised form, namely ‘a long bill with, in the bill’s lower half, the pouch in which this bird keeps fish’ (see judgment of 17 April 2008, (Representation of a pelican), T‑389/03, EU:T:2008:114, paragraphs 79).

49 In any event, whatever the most likely perception by the relevant public of the stylised representation of the bird included in the mark applied for, that mark is still characterised by the striking presence of the words ‘new orleans’ and of the presence, associated with those words, of what may be perceived as a basketball. Such significant elements for the analysis were correctly analysed by the Board of Appeal in its overall assessment of the various elements that compose the mark applied for.

50 It is apparent from the foregoing that the complaint that there was no overall assessment of the various elements of the mark applied for must also be rejected as unfounded.

51 In the first place, the applicant criticises the assessment of the phonetic comparison by the Board of Appeal, which was allegedly limited to a visual analysis of the marks at issue and did not proceed to a phonetic assessment of the signs at issue. In particular, the applicant submits that the Board of Appeal was influenced by the fact that, visually, the words ‘new orleans’ are written in bigger letters than the word ‘pelicans’.

52 In the present case, it must be held, as the Board of Appeal specifically did, that, as regards the mark applied for, the word ‘pelicans’ might not be pronounced, in view of its secondary role, and that, if it were, it would be pronounced at the end, after the words ‘new orleans’. In that regard, it must be borne in mind that the presence of the words ‘new orleans’ is striking and dominates the logo constituted by the sign applied for. Those words will thus very certainly be pronounced by the relevant public. Even if the word ‘pelicans’ were pronounced at the end of the mark applied for, the differences between those signs are such, having regard to the number of words in them, the arrangement and indeed the pronunciation of the words ‘pelikan’ and ‘pelicans’, that they cannot be held to be similar.

53 The complaint that the assessment of the phonetic similarity was erroneous must therefore be rejected as unfounded.

54 In the second place, the applicant criticises the assessment of the conceptual comparison on the ground that it asserts that the word ‘pelicans’ plays a secondary role. It submits that, on the contrary, that element is the central conceptual element of the mark applied for. According to the applicant, it has nothing in common with the goods and services in question and its significance is strengthened by the depiction of a pelican. Its role is more important than the existence of the geographical indication ‘new orleans’.

55 It must again be held that this argument does not take account of the elements highlighted by the Board of Appeal in its assessment of the conceptual comparison. That assessment is based on the premiss, well founded in light of the overall impression conveyed by the mark applied for, that the dominant element in that regard, namely the words ‘new orleans’, which has no conceptual equivalent in the earlier marks, is not neutralised by the presence of the word ‘pelicans’, which is conceptually close to the word ‘pelikan’ used in the earlier marks.

56 Contrary to what the applicant argues, it cannot be inferred from the presence of the term ‘pelicans’ — whose proximity to the depiction of the bird above, in the striking figurative element that also includes the words ‘new orleans’, is not as clear as the applicant maintains (see paragraph 34 above) — that this element is the central conceptual element of the mark applied for. On the contrary, as EUIPO observes, it must be noted that, as the Board of Appeal found in the contested decision, the concept conveyed by the mark applied for differs from that expressed by the earlier marks, since it refers to the words ‘new orleans’ and to an ‘indefinable angry looking bird surrounded by wings and holding a basketball under his beak’.

57 The presence, in a stylised form, of the name of a city in the United States together with an animal, reinforced as the case may be by an element referencing a sports team, such as a basketball, constitutes in itself a conceptual association capable of being recognised by the relevant public. Thus, if the Chicago Bulls or the Charlotte Hornets can be conceptually associated with basketball, the same is true for the New Orleans Pelicans.

58 The complaint that the assessment of the conceptual similarity was erroneous must therefore be rejected as unfounded.

59 It follows from the foregoing that, taking account of the overall impression conveyed by the various elements of the mark applied for and of the result of the visual, phonetic and conceptual comparison of the signs at issue, the Board of Appeal was entitled to conclude, as it did at paragraph 25 of the contested decision, that the signs were different, and that, consequently, the opposition had to be rejected on that ground, regardless of other relevant factors, such as the degree of similarity or the identity of the goods and services covered.

60 By its sixth complaint, the applicant notes that beyond the usual case in which the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the sign, without necessarily constituting the dominant element. In order to establish the likelihood of confusion, it thus suffices that, on account of the earlier mark still having an independent distinctive role, the public also attributes the origin of the goods or services covered by the composite sign to the owner of that mark (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 24). In the present case, the Board of Appeal did not find an independent distinctive role of the element ‘pelicans’. That is surprising, given that the element ‘new orleans’ could only be perceived as being a geographical indication. In such circumstances, if an earlier mark could be juxtaposed solely by combining it with a geographical indication, the holder of the earlier mark would in fact lose its rights in the mark. The guarantee of the earlier mark as an indication of origin would not be assured, even though it still had an independent distinctive role in the composite sign. Since the Board of Appeal did not assess the independent distinctive role of the elements in question, it did not conduct a full examination of the likelihood of confusion between the marks in question.

62 First, it is apparent from the case-law to which the applicant refers that it is possible that an earlier mark, used by a third party in a composite sign including the company name of the third party, will retain an independent distinctive role in the composite sign, and that, accordingly, in order to establish the likelihood of confusion, it suffices that, on account of the earlier mark still having an independent distinctive role, the public will attribute the origin of the goods or services covered by the composite sign to the owner of that mark (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 24).

63 In the present case, however, it is evident that the mark applied for does not include the name of the applicant, whose mark is composed of the word ‘pelikan’, but the word ‘pelicans’ with the letter ‘c’ instead of the letter ‘k’ and a final ‘s’ in order to indicate the plural. That difference of two letters is significant in so far as it thereby reduces the likelihood, alleged by the applicant, that the relevant public could attribute the origin of the goods or services covered by the sign applied for to the applicant.

64 Second, as the EUIPO rightly argues, the mark applied for does not consist of a simple juxtaposition of the earlier mark — or even of an element close to that mark — with another element. In the present case, the applicant can only rely on an element that, first, displays a certain resemblance to the earlier mark, and second, is included in the mark applied for in a place that plays a secondary role in the overall impression conveyed by the mark applied for.

65 In that context, in order to support its argument that, despite this secondary role, the word element ‘pelicans’ should be recognised as having an independent distinctive position, the applicant would have to establish the reasons for which, in the overall impression conveyed by the mark applied for, the dominant elements are eclipsed by the use of its name in a different form. Such a demonstration does not emerge in any way from the information provided for that purpose by the applicant, whether in relation to the present case or to the proceeding before the Board of Appeal, where the applicant merely referred to the judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594.

66 Consequently, in the absence of any such arguments and taking account of the differences between the signs, the Board of Appeal cannot be criticised for not having recognised an independent distinctive role for the word ‘pelicans’ in the mark applied for. The sixth complaint must therefore be rejected as unfounded.

67 The applicant argues that the Board of Appeal did not take account of the case-law according to which there can also be a likelihood of confusion when the public believes that the goods or services in question come from economically linked undertakings (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 19). The applicant also notes that in the case of a composite sign, the overall impression produced by the sign may lead the public to believe that the goods or services at issue come, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (see judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 31). When faced with the mark applied for, the relevant public would be likely to believe that the goods and services covered by that mark correspond to goods and services derived from a branch of the applicant in New Orleans. The new sign would be perceived as a variant of the earlier mark.

68 As EUIPO sets out in its response, that complaint is ineffective in that it refers to case-law which deals with the question of the global assessment of the likelihood of confusion. In the present case, the Board of Appeal held that as one of the necessary conditions to find that there is a likelihood of confusion pursuant to Article 8(1)(b) of Regulation No 207/2009, namely the similarity of the signs, was not fulfilled, there was no need to carry out a global assessment of the likelihood of confusion with regard to all the relevant factors (see the case-law cited at paragraphs 18 and 19 above).

69 Similarly, in so far as the applicant relies on the case-law relating to the role capable of being played by a secondary element of a composite sign when that element has an independent distinctive role, the Court has already responded to that argument and to the risk that would be linked to it if it were well founded, in paragraphs 60 to 66 above.

70 Consequently, the complaint that the Board of Appeal disregarded the risk that the consumer might believe that there was an economic link between the parties must be rejected as partly ineffective and partly unfounded.

71 It follows from the foregoing that all the complaints of an infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected.

72 The applicant raises a final plea in law alleging infringement of Article 8(5) of Regulation No 207/2009. According to the applicant, as a consequence of the incorrect examination of the similarity of the signs in the context of likelihood of confusion, the Board of Appeal also erroneously denied the similarity in the course of its examination of the protection of a well-known trademark. Article 8(1)(b) of Regulation No 207/2009 and Article 8(5) of that regulation differ in terms of the degree of similarity required (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 41 et seq.). It is only if there is no similarity between the signs at issue that Article 8(5) of Regulation No 207/2009 necessarily also does not apply to the case in question. Conversely, if the Board of Appeal took the view, in the context of that same examination, that there is some similarity between the signs at issue, such a finding would be equally valid with regard to the application of both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, paragraph 39). Consequently, if the Board of Appeal incorrectly denied a similarity under Article 8(1)(b) of Regulation No 207/2009, its decision concerning Article 8(5) of that regulation would be automatically incorrect too.

73 It follows from the foregoing that the Board of Appeal’s reasoning with regard to Article 8(1)(b) of Regulation No 207/2009 is well founded. It is not therefore necessary to consider the consequence that a potential similarity between the signs could have with regard to Article 8(5) of that regulation even if the applicant could put forward an argument on that point.

74 Consequently, the complaint alleging infringement of Article 8(5) of Regulation No 207/2009 is at least ineffective.

75 Furthermore, in any event, in so far as an infringement of Article 8(5) of Regulation No 207/2009 is alleged, it must be noted that the Board of Appeal was entitled to hold, at paragraphs 15, 28 and 31 of the contested decision (see paragraph 14 above), that the opposition was inadmissible under that provision, since the applicant had not clearly indicated in its pleadings in the opposition proceeding the marks for which, and in respect of which goods and services, a reputation was claimed.

76 It follows from the foregoing that the application must be dismissed in its entirety.

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

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Pelikan v EUIPO - NBA Properties (NEW ORLEANS PELICANS) (EU trade mark - Judgment) [2018] EUECJ T-112/17 (12 September 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T11217.html Cite as: EU:T:2018:528, [2018] EUECJ T-112/17, ECLI:EU:T:2018:528

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