FF Group Romania v EUIPO - KiK Textilien und Non-Food (_kix) (EU trade mark - Judgment) [2020] EUECJ T-659/19 (08 July 2020)

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(EU trade mark — Opposition proceedings — Application for European Union figurative mark _kix — Earlier national word mark kik — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Genuine use of the mark — Article 47(2) of Regulation 2017/1001)

FF Group Romania SRL, established in Bucharest (Romania), represented by A. Căvescu, lawyer,

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

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

KiK Textilien und Non-Food GmbH, established in Bönen (Germany), represented by L. Pechan, S. Körber and N. Fangmann, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 July 2019 (Case R 353/2019‑2), relating to opposition proceedings between KiK Textilien und Non-Food and FF Group Romania,

composed of A. Kornezov, President, E. Buttigieg and K. Kowalik-Bańczyk (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 30 September 2019,

having regard to the response of EUIPO lodged at the Court Registry on 21 November 2019,

having regard to the response of the intervener lodged at the Court Registry on 6 December 2019,

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

1 On 20 January 2014, the applicant, FF Group Romania 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), 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)).

2 The mark for which registration has been applied for is the figurative mark reproduced below:

3 The services in respect of which registration was sought are in Class 35 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 to the following description: 35: ‘Retailing of the following goods through a chain of stores: Clothing, Footwear, Fashion accessories, Goods of leather and imitations of leather, Headwear, Clothing and Sports footwear’.

4 The application was published in Community Trade Marks Bulletin No 2014/031 of 17 February 2014.

5 On 3 April 2014, the intervener, Kik Textilien und Non-Food GmbH, filed an opposition under 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 services referred to in paragraph 3 above.

– International Registration No 893 026 for the word mark kik filed and registered on 29 June 2006, designating the Czech Republic, Austria, Bulgaria, Hungary, France, Poland, Croatia, Slovenia, Benelux, Slovakia, Italy and Spain for the following services: Class 35 — ‘Retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use’.

– German trademark registration No 30 321 863 for the word mark kik filed on 28 April 2003 and registered on 29 November 2005 for the following services: Class 35 — ‘Retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use’.

7 The ground invoked in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 16 December 2014, the applicant requested evidence of use of the earlier rights. On 21 May 2015, the intervener submitted documents intended to prove genuine use of the marks relied on in support of the opposition.

9 By decision of 28 September 2015, the Opposition Division upheld the opposition in its entirety and rejected the contested application with respect to all of the services. It based its decision on the earlier national mark. The other earlier right relied on by the intervener in support of the opposition was not examined by the Opposition Division.

10 On 19 November 2015, the applicant brought an appeal against the decision of the Opposition Division.

11 By decision of 6 September 2016, the Fourth Board of Appeal of EUIPO, in Case R 2323/2015‑4, annulled the decision of the Opposition Division and dismissed the opposition on the ground that genuine use of the earlier national mark had not been proven. The Fourth Board of Appeal considered that the earlier mark’s ‘retail sale services in connection with textiles’ did not cover the services which appeared in the evidence of use and which were essentially ‘retail of clothing and other textile goods’.

12 On 10 November 2016, the intervener applied to the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) for a limitation of the list of services of the earlier national mark. The latter accepted the request for limitation and amended its register accordingly.

13 On 21 November 2016, the intervener brought an action against the decision of the Fourth Board of Appeal of EUIPO before the Court (Case T‑822/16, KiK Textilien und Non-Food v EUIPO — FF Group Romania (_kix)).

14 On 29 March 2017, the intervener requested the World Intellectual Property Organisation (WIPO) to limit, for some of the designated countries, the list of services included in Class 35 of the earlier international registration.

15 On 18 July 2017, the Fourth Board of Appeal of EUIPO revoked its decision in Case R 2323/2015‑4 on the ground that it had overlooked the fact that the earlier international registration invoked by the intervener was not subject to the obligation to prove genuine use for part of the designated territories and, therefore, the failure to examine the opposition on the basis of that earlier right constituted a manifest procedural error.

16 By order of 16 March 2018, KiK Textilien und Non-Food v EUIPO — FF Group Romania (_kix) (T‑822/16, not published, EU:T:2018:174), the Court held that there was no longer any need to adjudicate in the case at issue given the revocation of the decision under appeal.

17 On 5 February 2019, the case was reallocated to the Second Board of Appeal with a new appeal number R 353/2019‑2.

18 By decision of 4 July 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to bear the costs incurred by the other party to the proceedings before EUIPO. It examined the opposition only in so far as it was based on the earlier national mark, taking into account the limitation of the list of services designated by that mark made by the intervener (see paragraph 12 above). It concluded that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 resulting from the identity or similarity between the services at issue and the visual and phonetic similarity between the signs at issue, which could not be neutralised by a conceptual difference between them.

22 In support of the action, the applicant relies, in the introductory part of the application, on six pleas in law. The first alleges an infringement of Article 8(1)(b) of Regulation 2017/1001 as regards the relevant public and its level of attention, the similarity of the services at issue, the similarity of the signs at issue and the likelihood of confusion; the second alleges an infringement of the principles of the protection of legitimate expectations and legal certainty; the third alleges an infringement of Articles 94 and 95 of Regulation 2017/1001 and of the principle of impartiality in relation to the request for proof of use of the marks invoked in support of the opposition; the fourth alleges an infringement of Article 95 of that regulation, of Rule 20(7)(c) of Commission Regulation No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (now Article 71(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EC) No 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)) and of Rule 50(1) of the latter regulation, as well as the principles of equality and impartiality as regards the limitation of the list of services filed by the opponent directly in appeal proceedings; the fifth alleges misuse of powers, in that the Second Board of Appeal examined the other party’s new list of services in the course of the appeal proceedings, whereas the applicant was deprived of both levels of jurisdiction in respect of that new list of services; and, finally, the sixth alleges an infringement of Article 8(1)(b) and Articles 94 and 95 of Regulation 2017/1001, as well as of the right to be heard and the right to a fair hearing, in relation to the repeated failure to take into consideration the applicant’s observations on the amendments to the list of goods and services which the opponent’s rights designate.

23 In the body of the application, the applicant presents its arguments in an order which does not correspond to that of the presentation of the pleas in law cited in paragraph 22 above and without expressly attaching those arguments to each of those pleas. First of all, it formulates arguments relating to the limitation of the list of services covered by the earlier national mark. Next, it puts forward arguments relating to proof of genuine use. Finally, it submits arguments relating to the application of Article 8(1)(b) of Regulation 2017/1001, as regards the relevant public and its level of attention, the similarity of the services at issue, the similarity of the signs at issue and the overall assessment of the likelihood of confusion.

24 In the present case, the Court considers it appropriate to examine the applicant’s arguments in the order in which they were presented in the body of the application before ruling on all the pleas in law raised.

25 The applicant contests the Board of Appeal’s assessment of the list of services covered by the earlier national mark in so far as that assessment is based on the limited list, as amended and registered by the German Patent and Trade Mark Office.

26 In that regard, it is apparent from the file that, following the application for limitation of the list of services covered by the earlier national mark, filed by the intervener with the German Patent and Trade Mark Office on 10 November 2016, that is to say, after the adoption of the decision of the Fourth Board of Appeal of 6 September 2016 (see paragraph 12 above), the initial list, comprising ‘retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use’ in Class 35 was amended by a list comprising ‘retail sale services in connection with textiles, namely clothing, headgear made of textile materials, household linen, bed linen and table linen, as well as in relation to cosmetics, toys, household products and other products for everyday use’ in Class 35.

27 The applicant considers that the decision of the Board of Appeal to rely on the list of services of the earlier limited national mark is erroneous for two reasons.

28 In the first place, the applicant submits that the limitation in question is unclear and imprecise, since the correlation between textiles and ready-to-wear clothing is artificial and ambiguous. It points out that ‘textiles’ and ‘textile goods’ in Class 24 of the Nice Classification are different from ‘clothing, headgear etc.’ included in Class 25. That limitation, which would extend the list from Class 24 to Class 25, does not therefore constitute a genuine limitation, but an addition and amendment to the initial list of services covered by the earlier national mark.

29 That argument cannot succeed. The Board of Appeal rightly pointed out, in paragraph 31 of the contested decision, that the list of services covered by the earlier limited national mark does not refer to goods in Classes 24 and 25, but to the retail services in Class 35. Thus, the fact that ‘textiles’ in Class 24 does not include ‘clothing, headgear, etc.’ in Class 25 is irrelevant in the present case. What is relevant is whether the intervener was able usefully to limit the list at issue for the retail services in Class 35 by adding the words ‘namely clothing, headgear made of textile materials, household linen, bed linen and table linen’.

30 In that regard, first, as the Board of Appeal rightly pointed out in paragraph 30 of the contested decision, the word ‘namely’ is exhaustive and limits the scope of protection only to the specifically listed goods or services. Therefore, the addition of a list of goods or services preceded by that expression clarifies the scope of protection.

31 Secondly, the Board of Appeal rightly pointed out that, since the earlier right under examination in the present case was a German trade mark, the meaning of the term ‘textiles’ in the common German language was decisive. As is clear from a major German dictionary cited in the contested decision, the German term ‘Textilien’ refers not only to textile materials, fabrics and textiles, but also to ‘clothing’ and ‘products made from textiles’. The Board correctly inferred from that that, in everyday German, that term refers to goods such as ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’, so that the addition at issue is a limitation and not an extension or amendment of the original list of services covered by the earlier national mark.

32 In the second place, the applicant claims that the Board of Appeal infringed its right to a fair hearing by directly taking into account the limitation at issue and deciding the appeal on the basis of the list of services covered by the earlier limited national mark. The applicant submits that, since the situation changed during the course of the appeal proceedings, it had the right ‘to a first instance (opposition) retrial’.

33 First, according to Article 71(1) of Regulation 2017/1001, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

34 It follows from Article 71(1) of Regulation 2017/1001, enshrining the principle of functional continuity between the Opposition Division and the Boards of Appeal, that the Board of Appeal is under no obligation to remit the case to the Opposition Division for a decision on new factors liable to alter the outcome of the case. The limitation of the list of services covered by the earlier national mark did not therefore require the Board of Appeal to remit the case to the Opposition Division.

35 Secondly, it is apparent from paragraphs 15 to 20 of the contested decision that, after the revocation of the decision of the Fourth Board of Appeal of 6 September 2016 by its decision of 18 July 2017 and the reassignment of the case to the Second Board of Appeal on 15 March 2019, the Rapporteur requested the intervener to file updated certificates for the prior rights, which it did on 19 March 2019. The certificates showed that the lists of services covered by those prior rights had been limited. More particularly, they showed that the list of services covered by the limited earlier national mark was as set out in paragraph 26 above. On 23 March 2019, the Rapporteur invited both parties to submit their observations on the comparison of the services in question, given that the scope of protection of the earlier rights had been limited after the adoption of the decision of the Opposition Division.

36 It is apparent from the contested decision, without the applicant contesting it, that it responded to the Rapporteur’s invitation to submit its observations on 22 May 2019. In those circumstances, the applicant cannot validly claim that its right to be heard was infringed.

37 It follows from the foregoing that the applicant’s arguments relating to the limitation of the list of services covered by the earlier national mark must be rejected.

38 The applicant complains that the Board of Appeal considered that the question of genuine use of the earlier national mark was not the subject of the appeal proceedings on the ground that that question was not raised in its statement of grounds of appeal of 28 January 2016. According to it, in view of the limitation of the list of services covered by that mark, which occurred on 10 November 2016, and of the fact that that limitation could have changed the outcome of the case, the Board should have examined ex officio the question of proof of genuine use in the light of that list as limited.

39 According to the case-law, when the issue of genuine use of the earlier mark is not specifically raised before the Board of Appeal, it does not constitute a question of law which must necessarily be examined by the latter in order for the dispute before it to be settled and, consequently, it must not be regarded as the subject matter of the proceedings before the Board of Appeal (see judgments of 5 October 2017, Forest Pharma v EUIPO — Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 21 and the case-law cited).

40 In the present case, first, it follows from paragraph 22 of the contested decision, which is not contested by the applicant, that the latter did not raise the issue of genuine use of the earlier national mark in the pleading filed on 28 January 2016 in the proceedings which led to the adoption of the decision of the Fourth Board of Appeal of 18 July 2017. It also did not allege that the limitation of the list of services covered by that mark had any impact on the conclusions of the Opposition Division concerning proof of genuine use in its observations of 22 May 2019, submitted in response to the invitation of the Rapporteur in the proceedings which led to the adoption of the contested decision. The issue of genuine use of the earlier national mark was therefore not the subject of the dispute as brought before the Board of Appeal.

41 It follows that, contrary to the applicant’s claim, the Board of Appeal was not obliged to re-examine the issue of genuine use of the earlier national mark by taking into account the limitation of the list of services covered by that mark, as noted in paragraphs 34 to 36 of the contested decision.

42 Secondly, it is apparent from the file that the limitation in question was made by the intervener to reflect precisely the type of goods concerned by the retail services, designated by the earlier national mark, for which it had been able to produce evidence of genuine use of that mark. The Board of Appeal concluded, in essence, that that limitation cannot change the outcome of the case. In that regard, it is apparent from paragraph 37 of the contested decision that the Board of Appeal satisfied itself that there was still a match between the services for which the intervener had produced evidence of genuine use of that mark in accordance with the decision of the Opposition Division and the services set out in the list of services covered by the same limited mark. It noted, in particular, that, in the decision under appeal before it, the Opposition Division had accepted that the term ‘textiles’ included ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’. In the view of that board, it followed that the Opposition Division’s finding that the mark in question had been used for ‘retail sale services in connection with textiles’ in Class 35 included the finding that the mark in question had been used for ‘retail sale services in connection with textiles, namely clothing, headgear made of textile materials, household linen, bed linen and table linen’ in respect of which that list was subsequently restricted.

43 It follows that, contrary to the applicant’s submission, even supposing that the Board of Appeal was obliged to re-examine the question of genuine use of the earlier national mark after the limitation in question, without that question having been specifically raised before it by the applicant, any re-examination of that question by the Board of Appeal with regard to that limitation could not have led to the annulment of the Opposition Division’s decision on that point.

44 It follows from the above that the applicant’s arguments concerning the proof of genuine use must be rejected.

45 By the arguments put forward in paragraphs 52 to 172 of the application, the applicant claims, in essence, that the Board of Appeal erred in its finding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/2001. More particularly, the applicant contests that board’s assessments of the relevant public and its level of attention, the comparison of the services at issue, the comparison of the signs at issue, distinctiveness and the general assessment of the likelihood of confusion.

47 In accordance with Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its similarity to the earlier trade mark and the identity or similarity of the goods 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.

48 In the present case, it must be assessed whether the Board of Appeal was correct in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 resulting from the identity or similarity between the services at issue and the phonetic and visual similarity between the signs at issue which was not neutralised by a conceptual difference.

49 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).

50 In the present case, in paragraph 46 of the contested decision, the Board of Appeal confirmed the assessment of the Opposition Division by concluding that the relevant public consisted of the general public, whose level of attention was normal, and that the relevant territory was Germany.

51 The applicant submits that that conclusion is erroneous, first, in that the intervener presented itself as a leading seller of cheap textiles in Europe, whereas it itself provides retail sales services for high-end multi-brand products. The difference between discount and retail stores is important in defining the relevant public, as each type of store attracts a different public.

52 In that regard, it is sufficient to note that the differences between the retail sale services for high-end multi-brand products referred to by the applicant do not appear in the lists of services in question, since those lists do not contain any details as to the marketing arrangements adopted by the parties. EUIPO also correctly points out that the applicant does not explain to what extent the services covered by the mark applied for, described as ‘retailing of the following goods through a chain of stores: clothing, footwear, fashion accessories, goods of leather and imitations of leather, headwear, clothing and sports footwear’, would not include discount store services.

53 Secondly, the applicant claims that the Board of Appeal erred in taking into account solely the general public, to the exclusion of professional customers.

54 According to settled case-law, regarding the assessment of the likelihood of confusion, the section of the public which has the lowest level of attention must be taken into consideration (see judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 29 and the case-law cited). Although the applicant considers, in essence, that the Board of Appeal should have taken into consideration the professional public whose level of attention is higher, it does not dispute that the marks at issue target also the general public. Its argument is therefore ineffective in so far as, even assuming that that board of appeal had taken into consideration the professional public, it should have taken into consideration, as it did, only the general public whose level of attention is lower in the context of its assessment of the likelihood of confusion.

55 For the same reason, the applicant’s argument that the Board of Appeal should have found that the level of attention of at least part of the relevant public was higher than normal should be rejected, since the services covered by the mark applied for concerned, at least in part, expensive goods which cannot be qualified as everyday consumer goods.

56 Finally, thirdly, it is necessary to reject as ineffective the applicant’s argument that the Board of Appeal should have taken as the relevant public the public in the whole European Union and not only the German public. According to settled case-law, it is sufficient, for an EU trade mark to be refused registration, that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists only in part of that territory (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

57 In light of the above observations, therefore, the Board of Appeal was correct in defining the relevant public and its level of attention.

58 According to settled case-law, in assessing the similarity of the goods or services at issue, 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, for example, 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).

59 Services can be considered as identical when the services designated by the earlier mark are included in a more general category, designated by the mark application (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited) or where the services covered by the mark applied for are included in the services covered by the earlier mark (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

60 In the present case, in paragraphs 49 to 51 of the contested decision, the Board of Appeal stated, first, that ‘retailing of the following goods through a chain of stores: clothing (mentioned twice), headwear’ covered by the mark applied for were identical to the ‘retail services in connection with clothing, headgear made of textile materials’ covered by the earlier national mark.

61 Secondly, as regards the remaining services, the Board of Appeal considered that they were similar. In that respect, it held that, in relation to the services covered by the mark applied for and relating to the following goods: ‘footwear, fashion accessories, goods of leather and imitations of leather and sports footwear’, their purpose was similar to that of the ‘retail services in connection with clothing, headgear made of textile, household linen, bed linen and table linen’, covered by the earlier national mark. In that regard, it stated that the services to be compared were of the same nature, in so far as they were, in both cases, retail services. It considered that the services had the same purpose, namely to enable consumers conveniently to satisfy different purchasing needs, and had the same use. While it is true that, when comparing the services in question, the products to which those services related cannot be disregarded, it suffices to note that that board rightly pointed out in that regard that those goods were commonly sold in retail in the same outlets and that, therefore, their relevant public and their distribution channels were the same.

62 Finally, the Board of Appeal rejected as irrelevant the applicant’s argument alleging differences in the marketing strategies and methods of the services in question, on the ground that those differences were not reflected in the wording of the respective lists of services.

63 First, it should be noted that the applicant does not put forward any specific argument to contest the Board of Appeal’s finding, referred to in paragraph 60 above, that the services in question are in part identical. It merely claims in that respect that the category of goods ‘clothing, headgear made of textile materials’ covered by the earlier national mark does not include the ‘clothing and sports footwear’ covered by the mark applied for.

64 The Board of Appeal’s conclusion relating to the identical character of a part of the services at issue is correct. The applicant’s allegation must be rejected given that, firstly, ‘sports clothing’ is included in the broader category of ‘clothing’. The board rightly took account of that by pointing out that ‘clothing’ was ‘mentioned twice’ in the list of services covered by the mark applied for. Secondly, ‘sports footwear’ is not covered by the finding relating to the identical character of a part of the services at issue.

65 Secondly, more generally, the applicant puts forward several allegations that the Board of Appeal did not correctly group the services in question for the purposes of the comparison. According to the applicant, the services covered by the mark applied for can be divided into two groups, namely those relating to sporting goods and those unrelated to sport, and that the comparison of the services in question should have taken into account that division. By ignoring that division and by emphasising the fact that the services at issue were linked to textile-related retail services, the Board of Appeal vitiated the contested decision by a failure to state reasons.

66 Those allegations made by the applicant must be rejected since, as EUIPO rightly points out, they disregard the fact, mentioned in paragraph 64 above, that the category of ‘clothing’ includes ‘sports clothing’. Thus, the Board of Appeal rightly compared ‘sports clothing’ with ‘clothing’ and found them to be identical.

67 The applicant’s argument alleging a failure to state reasons must also be rejected. The alleged silence of the contested decision in relation to the comparison of ‘sports clothing and footwear’ with ‘clothing’ or, more generally, with all the services designated by the earlier national mark, is not due to a defect in the statement of reasons vitiating the contested decision, but to the fact that, in that decision, the Board of Appeal applied a different analytical framework from that favoured by the applicant.

68 Thirdly, as regards the Board of Appeal’s finding that the services at issue other than those referred to in paragraph 60 above are similar, the applicant submits that, contrary to what was found in the contested decision, those services are not of the same nature, in so far as the services covered by the earlier national mark are those of ‘discounter stores’, whereas the services designated by the mark applied for relate to the retailing high-end goods. The applicant thus reiterates, in substance, the argument put forward in paragraph 51 above.

69 That argument must be rejected. Under Article 8(1)(b) of Regulation 2017/1001, the comparison must relate solely to the services which the conflicting marks designate. However, as noted in paragraph 52 above, the differences between the services at issue referred to by the applicant do not appear in the lists of services designated by those marks, since those lists do not contain any details as to the marketing methods adopted by the parties.

70 Fourthly, the applicant claims that the services of ‘retailing of sports clothing and footwear’ covered by the mark applied for are different from ‘retail services in connection with clothing, headgear made of textile materials, household linen, bed linen and table linen’, covered by the earlier national mark, since there is no complementarity between those services. That argument must be rejected as inoperative, since the Board of Appeal did not base its conclusion as to the similarity of the services at issue on their complementarity.

71 In the light of the foregoing considerations, the Board of Appeal was therefore correct in considering that the services in question were, in part, identical and, in part, similar.

72 The overall assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression produced by the conflicting marks, taking into account, 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 overall assessment of that likelihood of confusion. In that 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).

73 There is nothing to prevent a determination as to whether there is any visual similarity between a sign constituting a word mark and a sign constituting a figurative mark, since both types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

74 In the present case, in paragraphs 54 to 57 of the contested decision, the Board of Appeal considered that the signs at issue show an average degree of similarity in visual terms and a high degree of similarity in phonetic terms. It considered that those signs had no meaning and therefore that there was no clear conceptual difference between them.

75 In the first place, as regards visual similarity, the applicant claims that the Board of Appeal attached greater importance to the word element of the mark applied for than to the figurative elements of that mark. Thus, the position of the underscore, which is placed in front of the word element, is unusual and surprising. The applicant also points out that the use of the black rectangle in the background, the light green colour for the letter ‘i’ appearing in the middle of the word element, the special font and the letter ‘x’ appearing at the end of the same element distinguishes the mark applied for from the earlier national mark so that those marks are only slightly similar in visual terms. In another part of the application, the applicant reiterates essentially the same arguments and submits that the Board of Appeal should have concluded that the figurative elements of the mark applied for had a dominant character and prevailed over the word element of that mark by making it hardly noticeable.

76 First of all, it should be noted that, according to the case-law, when a mark is composed of word elements and figurative elements, the word element of the mark is, as a rule, more distinctive than the figurative element, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited; judgment of 17 January 2012, Kitzinger v OHIM — Mitteldeutscher Rundfunk and Zweites Deutsches Fernsehen (KICO), T‑249/10, not published, EU:T:2012:7, paragraph 42). In the present case, the word element of the earlier national mark is more distinctive than its figurative element. The Board of Appeal therefore correctly attached more importance to the word elements of the mark applied for in the context of its assessment of the visual similarity of the signs at issue.

77 Next, the difference between the last letter of the word element of the signs at issue, namely, respectively, the letter ‘k’ and the letter ‘x’, pointed out by the applicant, does not make it possible to conclude that those signs are only slightly similar. Admittedly, as the applicant points out, it follows from the case-law that, in the case of word signs which are relatively short, even a difference consisting of a single consonant will preclude a finding that there is a high degree of visual similarity between the two signs (see judgment of 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, not published, EU:T:2008:10, paragraph 54 and the case-law cited). However, in the present case, the Board of Appeal found only an average degree, not a high degree, of similarity between the signs at issue. That finding is not incorrect, since the same signs do indeed coincide by the combination of the letters ‘ki’.

78 Finally, the applicant’s claims relating to the distinctive character of the elements of the mark applied for are not convincing. On the contrary, it is necessary to uphold the Board of Appeal’s assessment that, first, the underscore will have no lasting visual impact because of its small size and, secondly, the black rectangle and the white and green colouring of the word ‘kix’, which, although they have no equivalent in the earlier national mark, will be perceived only as essentially decorative elements.

79 In the second place, as regards phonetic similarity, the applicant submits that the letters ‘x’ and ‘k’ are pronounced differently in most States of the European Union and that the difference in pronunciation between the signs at issue is not negligible, given that they are very short words. It also submits that, according to the case-law, in the particular case of the sale of clothing, the visual perception of the signs is more important than the phonetic perception.

80 Those arguments of the applicant cannot succeed. First, the Board of Appeal rightly focused its assessment of phonetic similarity on the perception of the signs at issue by the German public, dismissing as irrelevant the applicant’s allegation relating to the different pronunciations of the letter ‘x’ in other countries of the Union. In German, those signs, pronounced ‘kik’ and ‘kiks’ respectively, are phonetically very similar.

81 Secondly, the case-law cited by the applicant, namely the judgments of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) (T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 50); of 7 May 2009, NHL Enterprises v OHIM — Glory & Pompea (LA KINGS) (T‑414/05, not published, EU:T:2009:145 paragraph 69); and of 8 July 2010, Engelhorn v OHIM — The Outdoor Group (peerstorm) (T‑30/09, EU:T:2010:298, paragraph 78), does not concern the question of the phonetic comparison of the signs at issue, but the overall assessment of the likelihood of confusion.

82 In the third place, the applicant claims that the signs at issue are conceptually different. It criticises the Board of Appeal, in substance, for having disregarded the fact that the relevant public will perceive the conflicting marks as having a different meaning and conveying a different idea. It submits, in that regard, that the word ‘kik’ can be understood as having the meaning of the English word ‘hit’, referring to a good deal made by the person buying cheap goods, whereas the word ‘kix’ can be associated with the German word ‘keks’, meaning ‘cookie’, or with the German word ‘kicks’, meaning ‘failure’, or, finally, with the English slang word ‘sneakers’, referring to sports shoes.

83 Those arguments must be rejected. The meanings to be given to the signs at issue proposed by the applicant are not sufficiently substantiated. The applicant itself admits, moreover, in the part of the application dealing with the distinctive character of those signs, that the ‘mark applied for would not be perceived [according to its meaning]’, since the ‘verbal elements kik/kix are unknown to the German-speaking consumer’.

84 It follows that the Board of Appeal was right to conclude that, in German, the signs at issue are devoid of meaning. Where the conflicting signs are devoid of any concrete meaning or semantic content, it must be concluded that a conceptual comparison is not possible (judgment of 16 June 2015, Norma Lebensmittelfilialbetrieb v OHIM — Yorma’s (Yorma Eberl), T‑229/14, not published, EU:T:2015:384, paragraph 30, and of 27 February 2020, Knaus Tabbert v EUIPO — Carado (CaraTwo), T‑203/19, not published, EU:T:2020:76, paragraph 79).

85 It follows from the above observations that the Board of Appeal was therefore correct in finding that the signs at issue had an average degree of visual similarity, a high degree of phonetic similarity and were devoid of any conceptual significance.

86 Under the heading ‘Distinctive character’ of the application, the applicant essentially reiterates the arguments relating to the visual comparison of the signs at issue. Those arguments have already been rejected in paragraphs 76 to 78 above.

87 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).

88 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).

89 In paragraph 65 of the contested decision, the Board of Appeal agreed with the finding of the Opposition Division and found that there was a likelihood of confusion in the present case within the meaning of Article 8(1)(b) of Regulation 2017/1001.

90 The applicant challenges that conclusion, in essence, on the ground that the signs at issue are not similar and that the services at issue are generally provided in different types of stores, namely, the services covered by the mark applied for which are supplied in high-end stores and the services covered by the earlier national mark which are supplied in discount stores.

91 Those arguments of the applicant must be rejected as unfounded. It is apparent from the examination of the applicant’s arguments, carried out in paragraphs 58 to 86 above, that the Board of Appeal rightly considered, first, that the services at issue were partly identical and partly similar and, secondly, that the signs at issue presented an average similarity in visual terms and high similarity in phonetic terms. It also follows that, as far as the visual aspect is concerned, the board’s conclusion that the figurative element of the mark applied for is purely decorative and, moreover, insignificant is correct. The significance of the similarities between those signs in the overall assessment of the likelihood of confusion is all the more important since, according to the case-law pertinently referred to by that board, average consumers only rarely have the chance to make a direct comparison between the different marks and have to place their trust in the imperfect image of them that they have retained in their minds (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

92 Secondly, it follows from the case-law that the particular ways in which the goods or services in question are marketed are not appropriate for the purposes of a prospective analysis of the likelihood of confusion between the conflicting marks, since those ways may vary over time and according to the wishes of the proprietors of those marks (see, to that effect, judgments of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59, and of 14 February 2019, Torro Entertainment v EUIPO — Grupo Osborne (TORRO Grande MEAT IN STYLE), T‑63/18, not published, EU:T:2019:89, paragraphs 32 to 34).

93 Finally, the case-law relied on by the applicant in support of its contention that, in the present case, the visual aspect of the marks is more important in the overall assessment of the likelihood of confusion than their phonetic aspect (see paragraph 81 above), must be excluded as irrelevant. That case-law concerns the comparison of marks registered for clothing goods and not for retail services. In any event, even if greater weight were to be given to the visual appearance of the signs in question, that would not affect the result of the overall assessment of the likelihood of confusion in the present case.

94 In the light of the above, as well as the fact that the Board of Appeal correctly concluded that the relevant public is the general public, whose level of attention is normal (see paragraphs 49 to 57 above), it should be noted that there is a likelihood in the present case that that public could believe that the services in question originate from the same undertaking or from economically linked undertakings.

95 It follows that the plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected.

96 Moreover, it should be borne in mind that, according to Article 76 of the Rules of Procedure of the General Court, an application initiating proceedings must, inter alia, contain the pleas in law and arguments relied on and a summary of those pleas in law. It must, accordingly, specify the nature of the grounds on which the action is based, which means that a mere abstract statement of the grounds does not satisfy the requirements of the Rules of Procedure.

97 It must be noted that, apart from the arguments examined in paragraphs 25 to 95 above, the applicant does not put forward any other arguments in support of the pleas in law set out in paragraph 22 above. In particular, as EUIPO points out, no specific arguments are put forward in support of the second plea alleging infringement of the principles of the protection of legitimate expectations and legal certainty or in support of the fifth plea, in that it alleges misuse of powers. Similarly, there is no argument in support of the fourth plea that the Board of Appeal infringed Rule 20(7)(c) and Rule 50(1) of Regulation No 2868/95. Those pleas must therefore be rejected as inadmissible.

98 It follows from all the foregoing considerations that the present action must be dismissed in its entirety, partly as unfounded and partly as inadmissible.

99 Under Article 134(1) of the Rules of Procedure, 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 form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> FF Group Romania v EUIPO - KiK Textilien und Non-Food (_kix) (EU trade mark - Judgment) [2020] EUECJ T-659/19 (08 July 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T65919.html Cite as: ECLI:EU:T:2020:328, EU:T:2020:328, [2020] EUECJ T-659/19

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