Guo v EUIPO - Sand Cph (sandriver) (EU trade mark - Judgment) [2021] EUECJ T-505/20 (06 October 2021)

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(EU trade mark – Invalidity proceedings – EU figurative mark sandriver – Earlier EU word mark SAND – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Xiuling Guo, residing in Shanghai (China), represented by L. Le Stanc, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Mrozowski, A. Folliard-Monguiral and V. Ruzek, acting as Agents,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 June 2020 (Case R 2019/2019-2) relating to invalidity proceedings between Sand Cph and Ms Guo,

composed of A.M. Collins, President, V. Kreuschitz (Rapporteur) and G. Steinfatt, Judges,

having regard to the application lodged at the Court Registry on 11 August 2020,

1 On 23 September 2016, the applicant, Ms Xiuling Guo, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Class 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 to the following description: ‘Scarves; neck scarfs [mufflers]; scarfs (knitted); knitted dresses; knit skirts; knitted sweater; knitted coat; woven coat; poncho; jumper; knitted gloves; knitted cap; knitted blouses; all in cashmere’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 190/2016 of 6 October 2016.

5 The mark, which is contested in the present case, was registered on 13 January 2017.

6 On 21 February 2018, the other party to the proceedings before the Board of Appeal of EUIPO, Sand Cph A/S, filed, pursuant to Article 63 of Regulation 2017/1001, an application for a declaration of invalidity of the contested mark in respect of all of the goods referred to in paragraph 3 above.

7 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof (now Article 60(1)(a) and Article 8(1)(b) of Regulation 2017/1001).

8 The application for a declaration of invalidity was based, inter alia, on the earlier EU word mark No 3 105 491 SAND, designating, inter alia, goods in Class 25 corresponding to the following description: ‘Clothing, footwear, headgear’.

9 On 11 July 2019, the Cancellation Division dismissed the application for a declaration of invalidity, having found that the differences between the marks at issue were rather striking, such that, overall, there was no likelihood of confusion between them.

10 On 10 September 2019, the other party to the proceedings before the Board of Appal filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

11 By decision of 2 June 2020 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the decision of the Cancellation Division and declared the contested mark invalid in its entirety. In particular, it stated in that decision that, first, the relevant public was the general public in the entirety of the European Union, whose level of attention was average, as the goods in question were not necessarily expensive (paragraphs 13 and 14); second, it would focus its analysis on the German-speaking consumer (paragraph 13); third, the goods covered by the contested mark fell within the general category of goods for which the earlier mark was registered, with the result that they were identical (paragraph 16); fourth, the consumer would understand the word ‘sand’, as it is a German word, but not the word ‘river’ (paragraph 20); fifth, the average German-speaking consumer would split the word element of the contested mark into two components, namely ‘sand’ and ‘river’ (paragraphs 21 and 22); sixth, the marks at issue were visually, phonetically and conceptually similar to a certain degree (paragraphs 23 to 30); seventh, the component ‘sand’ played an independent distinctive role in the contested mark and would not be perceived by the German-speaking public as indicating a colour (paragraphs 33 to 37) and, eighth, even assuming that the earlier mark had only a weak distinctive character, there was a likelihood of confusion between those marks, since the goods they covered were identical and those marks were similar (paragraphs 37 to 39).

14 Given the date on which the application for registration at issue was filed, namely 23 September 2016 (see paragraph 1 above), which is determinative for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

15 Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the provisions of Regulation 2017/1001 should be understood as referring to those provisions of Regulation No 207/2009 which are worded identically.

16 In support of the action, the applicant raises a single plea in law, alleging infringement of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009. She maintains that the Board of Appeal was wrong to find that there was a likelihood of confusion between the marks at issue. The single plea in law put forward by her is divided into six parts, which it is appropriate to examine together.

17 EUIPO disputes the applicant’s arguments and submits that the Board of Appeal was justified in finding that there was such a likelihood of confusion.

18 According to a combined reading of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, upon application of the proprietor of an earlier trade mark, the registered EU trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

19 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).

20 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two 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).

21 By the first part of the single plea, the applicant criticises the Board of Appeal of having restricted the relevant public to the German-speaking public only.

23 Where the protection of the earlier trade mark extends to the entirety of the European Union, as in this case, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, as EUIPO rightly asserts, in order for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (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).

24 While it is therefore true that, in principle, it was appropriate to take into account the perception of the marks at issue by the relevant public in the entirety of the European Union, the Board of Appeal cannot be criticised for having concentrated on the German-speaking part of that public and having concluded, in essence, that a likelihood of confusion for that part of that public was sufficient to grant the application for a declaration of invalidity.

25 As EUIPO correctly submits, it follows, moreover, that the applicant’s arguments concerning the perception of the marks at issue by a non-German-speaking public, in particular by an English-speaking public, must be rejected.

27 By the second part of the single plea, the applicant argues that the Board of Appeal erred in defining the level of attention of the relevant public. She submits that the goods covered by the contested mark are cashmere clothing and therefore expensive and luxury goods, meaning that the level of attention of that public is necessarily above average. Cashmere fibres are rare and clothes made from them are outstanding products. Cashmere products in more reasonable price ranges are made from blends with inferior quality wool and are therefore synonymous with poor quality. Consumers of cashmere clothing seek a product of special quality.

29 In paragraph 14 of the contested decision, the Board of Appeal found that the relevant public was the general public, whose level of attention was average, since it was well known that the price of clothing made of cashmere was not necessarily expensive.

30 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).

31 As EUIPO rightly contends, it is apparent from the evidence submitted by the applicant before the Court that even 100% cashmere goods can be relatively inexpensive. That evidence includes a document stating the following: ‘You can also grab a simple sweater of 100 percent cashmere off a discount rack at [U] for as little as [USD] 29.90’.

32 In that context, it should be borne in mind that it is apparent from Article 7(1) of Regulation (EU) No 1007/2011 of the European Parliament and of the Council of 27 September 2011 on textile fibre names and related labelling and marking of the fibre composition of textile products and repealing Council Directive 73/44/EEC and Directives 96/73/EC and 2008/121/EC of the European Parliament and of the Council (OJ 2011 L 272, p. 1) that a textile product may be labelled or marked ‘100%’, ‘pure’ or ‘all’ only if it is exclusively composed of the same fibre and that those or similar terms are not to be used for other textile products; Article 5(1) of that regulation, read in conjunction with the names set out in number 2 of Table 1 in Annex I to that regulation, refers to cashmere as a textile fibre obtained from the hair of the Kashmir goat. It follows that a 100% cashmere product can contain only hair of the Kashmir goat and would correspond, in any event, to consumers’ expectations as regards a cashmere product.

33 It is therefore common ground that cashmere clothes that will in fact be considered by the relevant consumer to be such goods are not necessarily very expensive. Consequently, the fact, alleged by the applicant, that the price level of those goods is often high is not decisive in determining the level of attention of that public.

34 It follows that the applicant’s arguments and, accordingly, the second part of the single plea must be rejected.

35 In the light of the foregoing, it must therefore be concluded that the Board of Appeal did not err in determining the relevant public and its level of attention in the present case.

36 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, inter alia, their nature, their intended purpose and 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).

37 Where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see 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).

38 The Board of Appeal found, in paragraph 16 of the contested decision, that the ‘scarves; neck scarfs [mufflers]; scarfs (knitted); knitted dresses; knit skirts; knitted sweater; knitted coat; woven coat; poncho; jumper; knitted gloves; knitted cap; knitted blouses; all in cashmere’ in Class 25 covered by the contested mark were identical to the ‘clothing, footwear, headgear’ in Class 25, for which the earlier mark is registered, since the former fall within the general category of the latter. The parties do not dispute that finding of the Board of Appeal.

39 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must 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 appreciation 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).

40 The Board of Appeal found, in paragraphs 18 and 19 of the contested decision, that the earlier sign consisted of the word ‘sand’ and that the contested mark consisted of the word element ‘sandriver’ and a figurative element representing a goat. In paragraphs 20 to 22 of that decision, it found that the German-speaking part of the relevant public would split the word element of that mark into two components, namely ‘sand’ and ‘river’, since, for it, the former has a clear meaning, namely the German word for ‘sand’. It stated in paragraphs 23 and 24 of that decision that, while the word elements of the signs at issue are of a different length, those signs nevertheless share the word ‘sand’, making them similar. It noted, in paragraph 25 of the same decision, that that similarity was increased by the fact that the component ‘sand’ is at the beginning of the word element of the contested mark. In paragraph 26 of the decision in question, it found that the component ‘river’ was not much longer than the component ‘sand’ and that neither its position in the mark in question nor its size permitted the inference that it was the dominant element of that mark. In paragraph 27 of that decision, it noted that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter and that the figurative element of the goat was allusive to the origin of the cashmere used to make the goods covered by the contested mark, with the result that it was somewhat weak. In paragraph 28 of the same decision, it found that, as a result, the differences between those signs were not sufficient to dispel that public’s impression that there was a certain degree of visual similarity between them. In paragraphs 29 and 30 of the decision at issue, it found that those signs were phonetically and conceptually similar to a certain degree. First, they coincide in the pronunciation of the word ‘sand’ and differ in that the contested mark includes the additional word ‘river’. Second, for the German-speaking part of that public, the signs in question allude to sand.

41 In the first place, by the third part of the single plea, the applicant claims that the Board of Appeal infringed the ‘logical unit’ of the contested mark, which, in her view, constitutes an ‘indivisible whole’.

43 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42).

44 In that regard, it has been stated that, even if the element common to the marks at issue cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of their similarity, to the extent that it constitutes, in itself, the earlier mark and retains an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element retains an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue come, at the very least, from economically linked undertakings, in which case a likelihood of confusion must be held to be established (see judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 38 and the case-law cited).

45 However, it has also been stated that an element of a composite sign does not retain such an independent distinctive role if, together with the other element or elements of the sign, that element forms a unit having a different meaning as compared with the meaning of those elements taken separately (see judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 39 and the case-law cited).

46 In the present case, the applicant submits, in essence, that the different parts of the word element of the contested mark, together with the figurative element of that mark representing a goat, form a unit which has a different meaning as compared with the meaning of those elements taken separately, so that it is not possible to base a similarity between the signs at issue on the common word element ‘sand’.

47 In support of her claim that the various elements of the contested mark form a ‘logical unit’, the applicant argues that the word element ‘sandriver’ is represented therein, without any visual separation, by thinly drawn letters in a rather rounded font and that the figurative element at the beginning of the sign corresponds to the round outline of the highly stylised body and head of a sheep or a goat, unusually represented from the front, which highlights its rich and thick fleece. The ‘logo’ – the figurative element – is in a proportion equivalent to that of that word element. Those two elements share the same colours, since the goat’s hair is represented in the same colour as that word element. Because of that interaction between those elements, that mark forms a ‘logical unit’. That is all the more true in view of the particular importance of the visual aspect when the clothing covered by the marks at issue is purchased and sold via mail order or on the internet.

48 As EUIPO rightly submits, the word element ‘sandriver’ of the contested mark, taken as a whole, is meaningless and there is no semantic link whatsoever between that element and the figurative element of that mark representing a goat.

49 In reality, the figurative element of the contested mark is slightly larger and rounder than the letters of the word element of that mark. It is therefore not represented in the same proportions as the latter. Furthermore, the distance between those two elements is much greater than the spacing of the various letters of the word element. Consequently, that figurative element is in fact separate from that word element.

50 As regards the colour link alleged by the applicant, it must be pointed out that only a part of the figurative element of the contested mark is represented in the same colour as the word element of that mark, namely the edges of the goat’s hair, horns and the tip of its snout. That figurative element contains four other colours, namely two additional colours for the hair, which could be perceived as gradients of the common colour, a large part in white and substantial parts, in particular the goat’s head, in black. It must therefore be held that the colour of that word element is only one of the various colours in which that figurative element is represented.

51 In so far as the applicant claims, in addition, that there is a link between that colour and the word element of the contested mark, since that colour refers to the meaning of the component ‘sand’ in the word element of that mark, it must be noted, first, that she thereby acknowledges that that component is capable of being analysed separately as regards its meaning and, second, that that colour, in which, inter alia, that word element is depicted, is too dark to be regarded as corresponding to a sand colour. In those circumstances, the relevant public will not, in any event, make a connection between the colour in which, inter alia, that word element is depicted and a sand colour; it is not necessary to analyse, at this stage, whether the German-speaking part of that public makes a connection between that component and a sand colour (see paragraph 64 below).

52 As EUIPO rightly contends, the coincidences referred to in paragraphs 49 and 50 above are, overall, minor. They are not sufficient to give rise, in accordance with the case-law cited in paragraph 45 above, to a unit having a different meaning as compared with the meaning of those elements taken separately.

53 EUIPO is right to argue that the applicant cannot usefully rely on the judgment of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO) (T‑386/15, EU:T:2017:632), since, in the case which gave rise to that judgment, the word element ‘badtoro’ referred specifically to the fanciful representation of a bull by the figurative element of the sign at issue (judgment of 20 September 2017, BADTORO, T‑386/15, EU:T:2017:632, paragraph 39 (not published)). There is no such semantic link in the present case between the word element of the contested mark and the figurative element of that mark, however.

54 The applicant’s argument that the ‘logical unit’ of the contested mark is reinforced by the particular importance of the visual aspect when the clothing covered by the marks at issue is purchased and sold via mail order or on the internet is not persuasive, either. The total lack of semantic link between the word and figurative elements of that mark cannot be offset by minor coincidences resulting from comparable proportions and a common colour, even if the visual aspect were of particular importance for assessing whether there is such a ‘logical unit’. It cannot be maintained, as the applicant does, that those minor aspects mean that the two elements clearly interact.

55 The applicant’s argument alleging a ‘logical unit’ of the various parts of the contested mark must therefore be rejected.

56 In the second place, still in the context of the third part of the single plea, the applicant claims that the component ‘sand’ of the word element of the contested mark does not occupy any autonomous or distinctive position in that mark and does not dominate it. According to her, that component does not have a distinctive character.

57 In the context of the fourth part of the single plea, the applicant adds that, in her view, the component ‘sand’ of the word element of the contested mark has only a minimum degree of distinctive character, since it alludes to a colour of clothing in the mind of the relevant public.

59 Given that the applicant has no grounds to claim that the contested mark constitutes a ‘logical unit’ (see paragraphs 46 to 55 above), it follows, first of all, having regard to the case-law cited in paragraph 45 above, that those elements have, as a rule, an independent distinctive role.

60 Next, as the Board of Appeal pointed out in paragraph 21 of the contested decision, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, that consumer will break it down into word elements which, for him or her, have a concrete meaning or which resemble words known to him or her (see judgment of 20 September 2017, BADTORO, T‑386/15, EU:T:2017:632, paragraph 55 (not published) and the case-law cited). As rightly pointed out by the Board of Appeal in that same paragraph, such a breaking down will also be carried out by the average consumer if only one of the elements making up that sign is familiar to him or her (see judgment of 22 May 2012, Aitic Penteo v OHIM – Atos Worldline (PENTEO), T‑585/10, not published, EU:T:2012:251, paragraph 72 and the case-law cited).

61 As regards the German-speaking part of the relevant public, the Board of Appeal was therefore right to observe, in paragraph 20 of the contested decision, that that part of that public would recognise the component ‘sand’ in the word element of the contested mark, since it is a common German word meaning ‘sand’. Furthermore, the parties do not call into question that Board of Appeal’s finding that, on the contrary, that public will not understand the rest of that word element, namely the component ‘river’.

62 Consequently, it is necessary to reject the applicant’s argument that it is also possible for the relevant public to split the word element of the contested mark into two components, ‘san’ and ‘driver’, or into three components, ‘san’, ‘dri’ and ‘ver’. None of the abovementioned components has a concrete meaning for the German-speaking part of that public within the meaning of the case-law cited in paragraph 60 above. That part of the public will not split that word element into one or the other of the ways suggested by the applicant, but will break it down into two components, ‘sand’ and ‘river’, since, for it, the former has a concrete meaning.

63 It follows that the Board of Appeal was entitled to rely on such a breaking down in order to assess the similarity of the signs at issue.

64 As regards the distinctive character of the component ‘sand’ of the word element of the contested mark in respect of the goods at issue, namely, in essence, clothing, the Board of Appeal was right to find, in paragraph 33 of the contested decision, that it played an independent distinctive role within that mark. It is necessary to reject, as EUIPO does, the applicant’s argument that that component necessarily alludes to a colour of clothing for the German-speaking part of the relevant public, since such a colour would be referred to as ‘sandfarben’ in German. Consequently, EUIPO is right to claim, in essence, that the component in question not designating a colour has a normal distinctive character in respect of those goods. In any event, even assuming that that component has a weaker distinctive character on the ground that that part of that public immediately associates it with a colour, it is apparent from paragraphs 37 and 38 of that decision that that Board of Appeal did not accord decisive weight to that aspect in its assessment of the similarity of the signs at issue.

65 Since the component ‘sand’ of the word element of the contested mark thus has an independent distinctive role, the applicant’s arguments must be rejected.

66 In the third place, by the fourth part of the single plea, the applicant accuses the Board of Appeal of having incorrectly found that the component ‘sand’ of the word element of the contested mark was distinctive and dominant in that mark and that it overshadowed the word ‘river’.

67 EUIPO disputes the applicant’s arguments and contends, correctly, that the applicant misinterprets the contested decision. Although the Board of Appeal found, in paragraph 26 of that decision, that the component ‘river’ of the word element of the contested mark was not the dominant element of that mark, that does not mean that it considered the other component of that word element – ‘sand’ – to be the dominant element or that it failed to take account of the word ‘river’ in its assessment.

68 It is clear from paragraphs 28 to 30 of the contested decision that the Board of Appeal found the signs at issue to be visually, phonetically and conceptually similar only ‘to a certain degree’. In particular, it is clear from paragraph 29 of that decision that the Board of Appeal did indeed take into account a phonetic difference between those signs on account of the component ‘river’ of the word element of the contested mark. Furthermore, while the Board of Appeal pointed out, correctly, in paragraph 27 of that decision, that it was apparent from the case-law that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter (see judgment of 22 May 2008, NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited) and found that the figurative element had a somewhat weak distinctive character, it must be stated that it nevertheless did take that element into account.

69 It is true that the Board of Appeal stated, in paragraph 34 of the contested decision, in the global assessment of the likelihood of confusion, that it was apparent from the case-law that it was common in the clothing sector for the same clothing manufacturer to use sub-brands, that is to say signs that derive from a principal mark and share with it a common dominant element, in order to distinguish its various lines of production. However, in the light of the factors identified in paragraphs 67 and 68 above, from which it is apparent that that Board of Appeal did indeed take into account all of the elements of the contested mark, that mere reference to paragraph 49 of the judgment of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties) (T‑104/01, EU:T:2002:262), does not permit the inference that that Board of Appeal considered the component ‘sand’ of the word element of that mark to be dominant within that mark and that it failed to take account of the other elements of that mark, in particular the component ‘river’ of that word element.

70 Consequently, since the Board of Appeal did indeed take account of all of the elements of the contested mark, the applicant’s argument alleging that that board considered the component ‘sand’ of the word element of the contested mark to be dominant within that mark and that it overshadowed the word ‘river’ must be rejected as unfounded.

71 In the fourth place, still in the context of the fourth part of the single plea, the applicant claims that, where signs share an element with a weak distinctive character, like the word ‘sand’ in the present case, that coincidence would not normally lead, on its own, to a likelihood of confusion.

73 In that regard, it is apparent from the case-law that, where the elements of similarity between two signs are the result of the fact that they have a weakly distinctive component in common, the impact of those elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 30 May 2018, L’Oréal v EUIPO, C‑519/17 P and C‑522/17 P to C‑525/17 P, not published, EU:C:2018:348, paragraph 73 and the case-law cited).

74 It has been held in paragraph 64 above, however, that the component ‘sand’ of the word element of the contested mark has a normal distinctive character in this case, such that the argument alleging that a similarity owing to a common element with a weak distinctive character has less impact must, in any event, be rejected.

75 In the fifth place, in the context of the fourth and fifth parts of the single plea, the applicant argues, in essence, that the Board of Appeal did not correctly assess the distinctive character of the component ‘river’ of the word element of the contested mark and of the figurative element of that mark.

77 As regards the figurative element of the contested mark, the applicant herself states that it depicts a sheep or a goat (see paragraph 47 above). In the present case, the goods covered by that mark are various types of clothing ‘all in cashmere’. In those circumstances, the Board of Appeal was right to find, in paragraph 27 of the contested decision, that that figurative element was allusive to the origin of the cashmere used to produce those goods. It follows that the distinctive character of that figurative element is somewhat weak.

78 As regards the component ‘river’ of the word element of the contested mark, the Board of Appeal found, in paragraph 20 of the contested decision, that the German-speaking part of the relevant public would not understand it (see paragraph 61 above), which the applicant does not dispute. It should therefore be acknowledged, as EUIPO does, that that component has a normal distinctive character, as the applicant ultimately claims.

79 It is not apparent from the contested decision, however, that the Board of Appeal did not, at least implicitly, acknowledge that the component ‘river’ of the word element of the contested mark has such a normal distinctive character, as the applicant appears to argue. In paragraph 26 of that decision, that Board of Appeal noted that that component was not much longer than the component ‘sand’ of that same word element and that neither its position in that mark nor its size permitted the inference that it was the dominant element of that mark. In so doing, the Board of Appeal compared the relative importance of the two components of that word element, without however finding that there was dominance (see also paragraphs 67 and 68 above). Thus, it implicitly attributed some distinctive character to the component ‘river’.

80 As has already been pointed out in paragraph 25 above, the applicant’s arguments concerning the perception of the component ‘river’ of the word element of the contested mark by a non-German-speaking public, in particular by an English-speaking public, are not relevant in this case.

81 Consequently, the applicant’s arguments according to which the Board of Appeal did not correctly assess the distinctive character of the component ‘river’ of the word element of the contested mark and of the figurative element of that mark must also be rejected.

82 As has already been pointed out in paragraph 40 above, the Board of Appeal concluded that the signs at issue were visually, phonetically and conceptually similar to a certain degree. That conclusion should be interpreted, as EUIPO does, as meaning that that Board of Appeal found that there was at least a low degree of similarity between those signs at all levels of comparison.

83 As regards visual similarity, in the light of the foregoing considerations, it should be acknowledged that the signs at issue coincide in the word ‘sand’, which is, admittedly, not dominant, but has a normal distinctive character (see paragraph 64 above). They differ in the word ‘river’ and in the figurative element that are present in the contested mark, which have no equivalent in the earlier mark. Whereas the former has a normal distinctive character (see paragraph 78 above), the latter has only a weak distinctive character (see paragraphs 77 and 78 above).

84 The Board of Appeal was, moreover, justified in finding, in paragraph 25 of the contested decision, that the relevant public would take more note of the component ‘sand’ of the word element of the contested mark, since it is the first part of the word ‘sandriver’, to which that public normally attaches more importance (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65). Having regard to the fact that the distinctive character of the figurative element of that mark is, in reality, somewhat weak, the applicant is wrong to criticise that finding of that Board of Appeal by insisting that that figurative element allegedly has a greater distinctive character than that of that component.

85 Overall, the Board of Appeal cannot therefore be criticised for having found that the signs at issue were visually similar at least to a low degree.

86 As regards phonetic similarity, the German-speaking part of the relevant public will split the word element of the contested mark into two components: ‘sand’ and ‘river’ (see paragraphs 60 to 63 above). Thus, when they are pronounced, the signs at issue coincide in the word ‘sand’ and differ in that that mark includes the sound of the word ‘river’, just as the Board of Appeal found. It follows that the Board of Appeal was justified in finding that those signs are phonetically similar at least to a low degree.

87 So far as concerns the conceptual comparison, the common word element ‘sand’ of the signs at issue refers to the concept of sand (see paragraphs 61 and 64 above). To that extent, those signs are conceptually similar. Nevertheless, in view of the component ‘river’ of the word element of the contested mark which, in the undisputed opinion of the Board of Appeal, is meaningless for the German-speaking part of the relevant public (see paragraph 61 above), that similarity can be classified only as low, just as the Board of Appeal did.

88 A global assessment of the likelihood of confusion 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 lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

89 In paragraphs 31, 32 and 39 of the contested decision, the Board of Appeal pointed out that, where the goods are identical, the differences between the signs must be striking in order to exclude a likelihood of confusion between two marks. In its view, in the present case, the signs at issue are similar in so far as the contested mark consists of the earlier mark, to which the word ‘river’ is joined. In paragraphs 33 and 34 of that decision, the Board of Appeal, first of all, stated that, for the German-speaking part of the relevant public, the component ‘sand’ of the word element of the contested mark played an independent distinctive role in that mark. In its view, that public might think that that component was the house mark, denoting one line of goods, while the word element ‘sandriver’ was a derivative mark designating another line. According to it, such a practice is common in the clothing sector at issue in the case at hand. Consequently, that public might believe that the goods covered by the marks at issue came from the same manufacturer, with the result that there is a likelihood of confusion between them. In paragraphs 35 to 38 of that decision, the Board of Appeal added that there would be a likelihood of confusion even if the level of attention of the public in question was above average and even if the distinctive character of the earlier mark was weak.

90 By the sixth part of the single plea, the applicant criticises that assessment of the likelihood of confusion carried out by the Board of Appeal.

92 In support of her criticism, the applicant puts forward, in part, the same arguments as those advanced in the context of the first to fifth parts. However, since all of the arguments put forward by her in the context of those parts have been rejected, they cannot call into question the global assessment of the likelihood of confusion carried out by the Board of Appeal. As has been explained above, there is no ‘logical unit’ in the contested mark which would prevent the component ‘sand’ of the word element of that mark from being perceived separately in that mark (see paragraphs 46 to 55 above). Moreover, that component has a normal distinctive character, so that the argument alleging that a similarity owing to a common element with a weak distinctive character has less impact is not relevant in this case (see paragraphs 64 and 73 to 74 above). The fact that, in the clothing sector, the visual aspect is of particular importance does not reinforce or give rise to a ‘logical unit’ in the contested mark (see paragraph 54 above). The figurative element of that mark has a somewhat weak distinctive character (see paragraphs 77 and 78 above).

93 In the present case, it follows from the foregoing that the level of attention of the German-speaking part of the relevant public is average (see paragraphs 29 to 34 above), that the goods covered by the marks at issue are identical (see paragraph 38 above), that the signs at issue are visually (see paragraphs 83 to 85 above), phonetically (see paragraph 86 above) and conceptually (see paragraph 87 above) similar, at least to a low degree, and that the word ‘sand’, which gives rise to that similarity, has a normal distinctive character (see paragraph 64 above). The earlier mark consisting exclusively of that word, it must be held that it also has a normal distinctive character.

94 In those circumstances, it must be held, as the Board of Appeal did in the contested decision, that, overall, there is a likelihood of confusion between the marks at issue on the part of the German-speaking public, which is sufficient to grant the application for a declaration of invalidity under Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009 (see paragraph 23 above).

95 In so far as the applicant claims, moreover, that the Board of Appeal failed to emphasise sufficiently the differences which it had noted between the signs at issue, namely their different length and pronunciation, and, having regard to the component ‘river’ of the word element of the contested mark, it is sufficient to state that the Board of Appeal correctly found that there was a low degree of similarity between those signs, in particular on account of those differences. Having regard to the level of attention of the relevant public and taking into account both the identity of the goods and the fact that the common word ‘sand’ has a normal distinctive character, even a low degree of similarity between those signs is sufficient to give rise to a likelihood of confusion on the part of that public in the present case.

96 Furthermore, in so far as the applicant criticises the Board of Appeal for having found that it would still be possible to conclude that there is a likelihood of confusion, even if the word ‘sand’ had a weak distinctive character, it must be stated, first, that the Board of Appeal made those statements expressly for the sake of completeness and, second, that, in any event, the common word ‘sand’ has, in actual fact, a normal distinctive character. That argument of the applicant is therefore ineffective.

97 In the light of all of the foregoing, it must therefore be held that the Board of Appeal did not err in finding that there was a likelihood of confusion between the marks at issue and in granting, as a result, the application for a declaration of invalidity under Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009. The single plea in law must therefore be rejected and, accordingly, the action must be dismissed in its entirety.

98 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.

99 Since the applicant has been unsuccessful, she 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) >> Guo v EUIPO - Sand Cph (sandriver) (EU trade mark - Judgment) [2021] EUECJ T-505/20 (06 October 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T50520.html Cite as: [2021] EUECJ T-505/20

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