Contents
Judgment of the General Court (Ninth Chamber)10 November 2016note(EU trade mark — Opposition proceedings — Application for the EU figurative mark POLO CLUB SAINT-TROPEZ HARAS DE GASSIN — Earlier EU figurative marks BEVERLY HILLS POLO CLUB — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Production of additional evidence — Discretion conferred by Article 76(2) of Regulation No 207/2009 — Remittal of the case in part to the Opposition Division — Article 64(1) and (2) of Regulation No 207/2009)In Case T‑67/15,Polo Club, established in Gassin (France), represented by D. Masson, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented initially by V. Melgar and H. Kunz and subsequently by H. O’Neil, acting as Agents,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingLifestyle Equities CV, established in Amsterdam (Netherlands), represented by D. Russo and V. Wellens, lawyers,THE GENERAL COURT (Ninth Chamber),composed of G. Berardis (Rapporteur), President, V. Kreuschitz and D. Spielmann, Judges,Registrar: J. Weichert, Administrator,having regard to the application lodged at the Court Registry on 12 February 2015,having regard to the response of EUIPO lodged at the Court Registry on 15 June 2015,having regard to the response of the intervener lodged at the Court Registry on 3 June 2015,having regard to the written questions put to the parties by the General Court and their oral replies at the hearing,further to the hearing on 14 July 2016,gives the following
Judgment
Background to the dispute
1On 23 December 2011, the applicant, Polo Club, 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).
2Registration as a mark was sought for the following colour figurative sign:
3The goods and services in respect of which registration was sought are in, inter alia, Classes 3 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:— Class 3: ‘Soaps; perfumes, perfumery; essential oils, cosmetics, hair lotions; dentifrices’;— Class 41: ‘Training, education, entertainment; arranging and conducting of conferences, colloquiums, workshops, congresses, seminars, competitions (education or entertainment); production of films and video-tape films, radio programmes, radio and television entertainment, editing of video tapes, radio and television programmes, organisation of exhibitions for cultural or educational purposes, cultural activities, organisation of shows (impresario services); publication of books and texts (not including publicity texts)’.
4The EU trade mark application was published in Community Trade Marks Bulletin No 30/2012 of 13 February 2012.
5On 2 May 2012, the intervener, Lifestyle Equities CV, filed a notice of opposition to registration of the mark applied for, inter alia in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.
6The opposition was based on, inter alia, the earlier EU figurative marks registered under numbers 4033742 and 9415787, both of which consist of the following figurative sign in black and white:
7The earlier mark No 4033742 was registered on 9 May 2009 for goods in Class 3 of the Nice Agreement corresponding to the following description: ‘Soaps, perfumery, essential oils, cosmetics, lotions, creams, gels, powders, lipsticks, deodorants and antiperspirants, expressly excluding toothpaste, mouthwash and products for oral and dental care and hygiene.’
8The earlier mark No 9415787 was registered on 6 March 2011, inter alia, for services in Class 41 of the Nice Agreement corresponding to the following description: ‘Education; providing of training; entertainment; sporting and cultural activities.’
9The intervener also based its opposition on three other earlier EU marks (‘the other earlier marks’) consisting of the same sign as that set out in paragraph 6 above, for goods other than those covered by the earlier marks Nos 4033742 and 9415787, and which had been registered at the latest in November 2006.
10The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
11The intervener claimed enhanced distinctive character of the earlier marks by producing some evidence for that purpose, within the time limit specified in accordance with Rule 19(1) and (2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), in order to prove, inter alia, the existence, validity and scope of the protection of the earlier marks, which expired on 28 September 2012.
12On 10 January 2013, upon the applicant’s request, EUIPO invited the intervener to adduce evidence to prove genuine use of the other earlier marks pursuant to Article 42(2) of Regulation No 207/2009.
13The intervener replied to the invitation on 20 March 2013, that is to say, within the time limit, by submitting to the Opposition Division evidence additional to that referred to in paragraph 11 above (‘the additional evidence’), in order to demonstrate not only genuine use but also the enhanced distinctive character of its trade marks.
14By decision of 31 July 2013, the Opposition Division rejected the opposition in its entirety, finding that there was no likelihood of confusion in the case at hand. To that end, it found that the evidence referred to in paragraph 11 above was insufficient to demonstrate that the earlier marks had enhanced distinctive character as a result of the intervener’s use of them and that the additional evidence could not be taken into account in order to establish the existence of such distinctive character, on the ground that it had been filed after the time limit referred to in paragraph 11 above. According to the Opposition Division, in the absence of sufficient admissible evidence to establish enhanced distinctive character, the signs at issue were insufficiently similar to find that there was a likelihood of confusion, even if the goods and services concerned were identical. Accordingly, the Opposition Division did not adjudicate on the issue of whether genuine use of the other earlier marks had been proved.
15On 25 September 2013, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.
16By decision of 21 November 2014 (the ‘contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division in its entirety, on the one hand, upholding the opposition in respect of the goods referred to in paragraph 3 above, and, on the other hand, remitting the case to the Opposition Division as to the remainder.
17Concerning the first part of the result set out in paragraph 16 above, the Board of Appeal found, in essence, that:— the signs at issue were visually and phonetically similar to a low degree, whereas conceptually they were similar, if not highly similar;— the earlier marks had at least normal inherent distinctive character for the services in question in Class 41, given that those services may relate to the teaching of polo and organising the competition of polo, but enhanced inherent distinctive character for the goods concerned in Class 3, in relation to which the device of a polo player had high imaginative content;— account had to be taken only of the goods and services covered by the earlier marks Nos 4033742 and 9415787, and those marks were not subject to proof of genuine use as they benefited from the five-year grace period as from their registration, provided for in the final clause of the first sentence of Article 42(2) of Regulation No 207/2009;— the goods in Class 3 protected by the earlier mark No 4033742 were identical to those covered by the mark applied for;— the services in Class 41 covered by the earlier mark No 9415787 were partly identical and partly similar to those covered by the mark applied for;— there was a likelihood of confusion between the mark applied for and those earlier marks for those goods and services.
18Concerning the second part of the result set out in paragraph 16 above, the Board of Appeal observed that in order not to deprive the interested parties of the possibility of review by the second instance at EUIPO, it was for the Opposition Division to be the first to decide on the proof of genuine use of the other earlier marks and, where appropriate, on the likelihood of confusion for the other goods and services covered by the marks at issue. In that regard, the Board of Appeal stated that the Opposition Division had erred in refusing to take into consideration the additional evidence in order to determine whether the earlier marks had enhanced distinctive character as a result of the intervener’s use.
Forms of order sought
19As a result of clarifications provided at the hearing in reply to oral questions from the Court, the applicant claims that the Court should:— declare the present action admissible;— annul the contested decision;— order EUIPO to pay the costs incurred by the applicant in the present proceedings.
20EUIPO contends that the Court should:— dismiss the action;— order the applicant to pay the costs incurred by EUIPO.
21As a result of clarifications provided at the hearing in reply to oral questions from the Court, the intervener contends that the Court should:— dismiss the action;— order the applicant to pay the costs incurred by the intervener in respect of the proceedings both before the Board of Appeal and before the Court.
Law
22In support of its action, the applicant relies, in substance, on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, secondly, infringement of the procedural rules governing opposition proceedings.
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
23By its first plea in law, the applicant disputes the findings of the Board of Appeal relating to the inherent distinctive character of the image of a polo player, the similarity of the signs and the similarity of the goods and services concerned.
24EUIPO and the intervener dispute the applicant’s arguments.
25Article 8(1)(b) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
26According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
The relevant public
27According 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 or services 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).
28The Court notes that, in the contested decision, the Board of Appeal did not expressly define the relevant public, nor its level of attention. By contrast, the Opposition Division had found that the goods and services covered by the marks at issue were directed at both the public at large and professionals.
29Although the Board of Appeal did not set out its definition of the relevant public, it must be found, as EUIPO contended at the hearing, in reply to a written question from the Court — which was not challenged by the applicant — that the Board of Appeal’s silence must be interpreted as meaning that it carried out the overall assessment of the likelihood of confusion from the perspective of the general public with a normal level of attention. In that regard, it must be stated that even if some of the services at issue may also be targeted at professionals, which are deemed to be more attentive, the Board of Appeal was properly entitled to assess the likelihood of confusion only from the perspective of the public having the lowest degree of attention (see, to that effect, judgment of 3 March 2015, Bial-Portela v OHIM — Isdin (ZEBEXIR), T‑366/11 RENV, not published, EU:T:2015:129, paragraph 30).
The comparison of the goods and services
30According 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 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).
31In the first place, the Board of Appeal found, in paragraph 30 of the contested decision, that, in the light of their wording, the goods covered by the marks at issue in Class 3 were identical.
32First of all, that finding, which is not indeed challenged by the applicant, must be confirmed.
33In the second place, it is apparent from paragraphs 31 to 34 of the contested decision that the Board of Appeal found that some of the services in Class 41 covered by the marks at issue were identical, while others were similar. More specifically, the Board of Appeal found that:— the services ‘training, education, entertainment and cultural activities’, which are covered both by the mark applied for and the earlier mark No 9415787, are identical;— the services ‘organisation of exhibitions for cultural purposes’, designated by the mark applied for, are identical to the services ‘cultural activities’ protected by that earlier mark, since they are included in those services;— the services ‘arranging and conducting of conferences, colloquiums, workshops, congresses, seminars, competitions (education)’ and ‘organisation of exhibitions for educational purposes’, covered by the mark applied for, are similar to the services ‘education’ and ‘providing of training’, protected by the earlier mark No 9415787, since they are organised to share knowledge and experiences, to teach and provide a forum for exchanges, may be offered by the same service providers and may be aimed at the same public;— the services ‘publication of books and texts (not including publicity texts)’, covered by the mark applied for are similar to the services ‘education’ and ‘providing of training’, protected by the earlier mark No 9415787, since, first, it is not unusual for educational centres, notably universities, to have their own publishing house and, secondly, those services are complementary and are aimed at the same users;— the services ‘competitions (entertainment)’, ‘production of films and videotape films, radio programmes, radio and television entertainment, editing of video tapes, radio and television programmes’, and ‘organisation of shows (impresario services)’ designated by the mark applied for are identical to the ‘entertainment’ services covered by the earlier mark No 9415787, since they are included in those services.
34The applicant challenges those assessments, stating in particular that the services ‘publication of books, videotaping, videotape film production or film production’, covered by the EU mark applied for, and the services in Class 41 protected by the earlier mark No 9415787 differ as to their nature and purpose and are neither complementary nor in competition with each other.
35EUIPO contends that all of the services covered by the mark applied for are included in the ‘entertainment’ services or in the ‘cultural activities’ services protected by the earlier mark No 9415787.
36The intervener contends that all of the services concerned are identical because the services covered by that earlier mark cover all of the services concerned by the mark applied for.
37In the first place, the Board of Appeal’s assessments summarised in the first and second indents of paragraph 33 above must be confirmed. Indeed, the wording of certain services fully coincides and, as to the remaining services, reference must be made to the settled case-law which states that where the services covered by the earlier mark include the services covered by the trade mark application, those services are considered to be identical (see judgment of 24 November 2015, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited). In addition, the applicant does not put forward any argument relating specifically to the services mentioned in those indents.
38In the second place, it must be pointed out that although the applicant does not put forward any argument in relation to the Board of Appeal’s evaluation set out in the third indent of paragraph 33 above, the General Court can, according to the case-law, carry out a full review of the legality of the decisions of EUIPO’s Boards of Appeal, if necessary examining whether those boards have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed. Where it is called upon to assess the legality of a decision of the Board of Appeal of EUIPO, the General Court cannot, even in the absence of specific contentions of the parties, be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the General Court (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 39 and 48, and of 24 September 2015, Primagaz v OHIM — Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 59).
39In that context, the case-law mentioned in paragraph 37 above allows the conclusion to be drawn that the services referred to in the third indent of paragraph 33 above are not merely similar, as the Board of Appeal concluded, but identical, as EUIPO and the intervener maintain in reply to a question from the Court. The services ‘arranging and conducting of conferences, colloquiums, workshops, congresses, seminars, competitions (education)’ and ‘organisation of exhibitions for educational purposes’ are fully included within the services ‘cultural activities’, ‘education’ and ‘providing of training’. Consequently, those services must be considered identical.
40In the third place, as regards the services referred to in the fourth indent of paragraph 33 above, the similarity found by the Board of Appeal must be confirmed, for the reasons adopted by it and set out in that indent, which must be endorsed.
41In the fourth place, as regards the services referred to in the fifth indent of paragraph 33 above, first, in the absence of any challenge by the applicant, the Board of Appeal’s assessment that the services ‘competitions (entertainment)’ and ‘organisation of shows (impresario services)’, designated by the mark applied for, are included in the ‘entertainment’ services covered by the earlier mark No 9415787, so that those services are identical in accordance with the case-law mentioned in paragraph 37 above, must be confirmed.
42Secondly, as regards the other services covered by the mark applied for, listed in the fifth indent of paragraph 33 above, it must be noted that the scope of the ‘entertainment’ services covered by the earlier mark No 9415787 is broad enough to include not only the broadcasting of films and radio and television programmes for entertainment purposes, but also the production and editing of those films, programmes and broadcasts. Consequently, the Board of Appeal’s assessment that the services at issue covered by the mark applied for are included in the ‘entertainment’ services, so that they are identical to them, must be upheld. In addition, although the Board of Appeal made no such finding, it may be considered that the services at issue forming the subject-matter of the mark applied for are also included in the services ‘cultural activities’ protected by the earlier mark, so that it may be held that the services in question are also identical on that ground.
43Lastly, even if the services ‘entertainment’ and ‘cultural activities’ are limited to the broadcasting of films and television and radio programmes, it must in any event be found that those services are complementary to the services ‘production of films and video-tape films, radio programmes, radio and television entertainment, editing of video tapes, radio and television programmes’ covered by the mark applied for. According to the case-law, services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited). It cannot be denied that the production or editing of a film or television or radio programme is important, if not essential, for it to be broadcast. Consequently, even in that case, it should be found that those services are similar.
44In the light of the foregoing considerations, most of the Board of Appeal’s conclusions concerning the similarity of the goods and services must be endorsed, while it must be held that the services ‘arranging and conducting of conferences, colloquiums, workshops, congresses, seminars, competitions (education)’ and ‘organisation of exhibitions for educational purposes’ covered by the mark applied for are identical and not merely similar to the services ‘cultural activities’, ‘education’ and ‘providing of training’ covered by the earlier mark No 9415787.
The comparison of the signs
45The applicant submits that the Board of Appeal was wrong to deny that the image of a polo player and the words ‘polo club’ had a weak inherent distinctive character in respect of the goods and services concerned. According to the applicant, that weak distinctive character and the differences between the other elements of the signs at issue make them visually, phonetically and conceptually dissimilar to a high degree.
46EUIPO and the intervener dispute the applicant’s arguments.
–Preliminary observations
47The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
48Assessment 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 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
49Lastly, it should be borne in mind that the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM — Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited).
–The distinctiveness of the image of a polo player and the words polo club
50In paragraphs 25 to 27 of the contested decision, the Board of Appeal essentially found that the device of a polo player was inherently highly distinctive in relation to the relevant goods in Class 3 and that it had at least normal inherent distinctiveness in relation to the relevant services in Class 41. In the context of the comparison of the signs, the Board of Appeal took ample account of both the device and the words ‘polo club’, without however describing the other elements comprising the signs at issue as negligible.
51In that regard, it must be borne in mind that, according to the case-law, the image of a polo player and the words ‘polo club’ have no connection with the goods in Class 3 covered by the marks at issue, so that they have high imaginative content and are intrinsically highly distinctive in relation to those goods (see, to that effect, judgments of 21 February 2006, Royal County of Berkshire Polo Club v OHIM — Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB), T‑214/04, EU:T:2006:58, paragraphs 42 and 43, and 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 47, 49 and 73).
52As regards the relevant services in Class 41, the Board of Appeal stated in paragraph 27 of the contested decision that ‘given that [those] services might relate to the teaching of polo and organising the competition of polo, the earlier mark [ought] to be considered as having at least normal distinctive character’. Such wording is at first sight surprising since the inherent distinctive character of the earlier marks would be weakened if the activities were directly linked to the playing or teaching of polo. However, as EUIPO observed at the hearing, in reply to a written question from the Court, the Board of Appeal probably intended by that wording to emphasise that, with regard to those services, the image of a polo player and the words ‘polo club’ did not have a high level of inherent distinctiveness, as is the case when those elements refer to the goods in Class 3, which formed the subject-matter of paragraph 26 of the contested decision.
53In any event, it must be found that the services in Class 41 covered by the marks at issue (see paragraphs 6 and 8 above) are not defined as having a direct connection to polo, with the exception of the services ‘sporting activities’ which are not however relevant in the present case, as is apparent from paragraphs 33 to 44 above. According to the case-law, the image of a polo player and the words ‘polo club’ have normal inherent distinctiveness in relation to the goods and services the description of which does not state that they are specifically related to polo playing (see, to that effect, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraphs 49 and 73).
54In the light of the foregoing considerations, it must be held that the image of a polo player and the words ‘polo club’ have enhanced inherent distinctiveness with regard to the goods in Class 3 and normal inherent distinctiveness with regard to the services in Class 41, so that those elements were not of secondary importance in the assessment of the signs’ similarity, which effectively confirms the essence of the Board of Appeal’s assessment.
–The visual comparison
55In paragraphs 21 and 22 of the contested decision, the Board of Appeal found, in particular, that the signs at issue both contained the image of a polo player on a galloping horse, with a mallet in a similar position ready to strike a ball. The Board of Appeal also stated that that image was surrounded by the word elements ‘beverly hills polo club’, in the earlier marks, and ‘polo club saint-tropez — haras de gassin’, in the mark applied for, which also included a circular emblem with a blue band containing those word elements. Accordingly, the Board of Appeal held that, visually, there was a low degree of similarity between the signs, since although they both included an image of a polo player on a horse, in two almost identical positions, and the words ‘polo club’, they differed on account of the remaining word elements and the blue band surrounding the mark applied for.
56The applicant submits that the signs are dissimilar in view, inter alia, of the different number of words they contain, the way the words are laid out, the presence of colours in the mark applied for only and the weak distinctive character of the elements common to those signs.
57EUIPO and the intervener dispute the applicant’s arguments.
58As the Board of Appeal rightly established, it follows from the examination of the signs at issue that the figurative element representing a polo player in motion, wielding a mallet, and the words ‘polo club’ are elements common to the marks at issue.
59Although the images of the polo players are very similar, both in terms of their shape and position within the signs at issue, nonetheless the play of light and shade in that image in the mark applied for serves to distinguish those signs. Similarly, the common words ‘polo club’ appear in two different positions, since in the mark applied for they are located in the upper part of the circle which surrounds the polo player on horseback, whereas in the earlier marks they are below the player.
60In addition, all the other word and figurative elements distinguish the signs at issue.
61However, since, as has been concluded in paragraph 54 above, the image of a polo player and the words ‘polo club’ have normal or enhanced inherent distinctiveness in the present case and that image is in the centre of the signs, surrounded by word elements or word and figurative elements which are partly the same, it must be found that the relevant public will recognise clearly the image of a polo player on horseback and retain this when in the presence of each of the signs at issue.
62In any event, even if the elements common to the signs at issue are descriptive in respect of the goods and services covered, and therefore inherently distinctive to a low degree, it must be borne in mind that, according to case-law, the weak distinctive character of an element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public. Thus, it cannot be excluded that because, in particular, of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark involved in the relevant public’s perception. Similarly, despite its weak distinctive character, an element of a mark which is descriptive is likely to attract the attention of the relevant public because of its position in particular (see, to that effect, judgment of 10 December 2014, Novartis v OHIM — Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraph 36 and the case-law cited).
63The central position of the image of the polo player in the present case, surrounded by words, including the words ‘polo club’, means that those elements are in no way negligible when the signs are compared visually.
64Accordingly, the Board of Appeal correctly carried out an overall assessment of the visual similarity of the signs in concluding that they were visually similar only to a low degree. Indeed, if it had considered that those signs were completely different visually, it would essentially have found that their common elements were negligible, which would have been an error.
–The phonetic comparison
65In paragraph 23 of the contested decision, the Board of Appeal found that the signs at issue were phonetically similar to a low degree, since, although they shared the word elements ‘polo club’, they differed on account of all their other word elements.
66The applicant submits that the signs at issue are highly dissimilar phonetically because all of their word elements, other than the words ‘polo club’ which are purely descriptive, are different and refer to two distinct well-known towns.
67EUIPO and the intervener dispute the applicant’s arguments.
68It must be found that the similarities in the pronunciation of the signs at issue stem from the common presence in those signs of the words ‘polo club’, which are not devoid of distinctive character, as observed in paragraph 54 above. By contrast, the other word elements of those signs are completely different, inter alia as regards the number of words comprising them.
69Consequently, the Board of Appeal was justified in concluding that the signs at issue were phonetically similar only to a low degree, regardless of whether or not the geographical locations to which they refer are well known. Even if it were established that they were well known and that fact could be of relevance to the phonetic comparison, it could not eliminate the similarity arising from the presence in both signs of the words ‘polo club’, which are in no way negligible.
70As regards the allegedly reduced importance of the phonetic aspect, relied upon by the intervener, this is not a factor to be taken into consideration when evaluating phonetic similarity, but only, where relevant, in the context of the overall assessment of the likelihood of confusion.
71Consequently, the Board of Appeal’s assessment of the signs’ phonetic similarity must be confirmed.
–The conceptual comparison
72In paragraph 24 of the contested decision, the Board of Appeal noted, in essence, that the signs at issue were conceptually similar, since they evoked a polo player and a polo club and the references to different geographical locations did not introduce a significant conceptual difference, as the geographical names simply qualified the name of a polo club. Without introducing any additional considerations, in paragraph 35 of the contested decision, the Board of Appeal described those signs as ‘highly similar’ conceptually.
73The applicant submits that the element ‘beverly hills’ in the earlier marks and the element ‘saint-tropez — haras de gassin’ in the mark applied for attract more attention because they refer to well-known towns, very different from one another for the relevant public. According to the applicant, the signs at issue are, therefore, conceptually different.
74EUIPO and the intervener dispute the applicant’s arguments.
75In that regard, it must be found that the signs at issue are conceptually similar, since they both refer to a polo club and display a device of a polo player, and those devices are similar. Accordingly, as the Board of Appeal correctly found, either of those signs will bring the idea of polo to the minds of the relevant public (see, to that effect, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 68).
76Moreover, the fact that the relevant public may associate those signs with two different polo clubs only marginally reduces their degree of conceptual similarity. Even in that case, those signs would nevertheless both continue to refer to the same concept, that of polo playing at a club, although the clubs may be in different geographical locations (see, to that effect, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 69).
77Accordingly, notwithstanding the lack of specific reasoning in paragraph 35 of the contested decision concerning the allegedly high degree of conceptual similarity, it must be concluded that those signs display at least an average degree of conceptual similarity.
–Conclusions on the comparison of the signs
78In the light of all the foregoing observations concerning the comparison of the signs at issue, the Board of Appeal’s assessment that those signs, each considered as a whole, are visually and phonetically similar to a low degree and conceptually similar at least to an average degree must essentially be confirmed.
The likelihood of confusion
79A 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 low degree of similarity between those goods or services may be offset by a high 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 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 74).
80Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
81In paragraphs 35 and 36 of the contested decision, the Board of Appeal found that there was a likelihood of confusion between the marks at issue, since the goods and services covered were identical or similar, the signs were similar above all conceptually and the earlier marks were inherently distinctive at least to a normal if not high degree, according to the goods or services concerned.
82The applicant submits that, in view of the earlier marks’ weak distinctive character, the differences between the signs outweigh their elements of similarity and preclude the existence of a likelihood of confusion, even for identical or similar goods and services.
83EUIPO and the intervener dispute the applicant’s arguments.
84First, the Court observes that, in accordance with the considerations set out in paragraphs 50 to 54 above, the earlier marks are inherently distinctive to a normal degree in respect of the services at issue and to a high degree in respect of the goods at issue.
85Secondly, the signs are conceptually similar at least to an average degree and visually and phonetically similar to a low degree.
86Thirdly, the assessment of the likelihood of confusion must be carried out on the basis of the normal level of attention specific to the public at large (see paragraph 29 above).
87Accordingly, given also that the corollary of the fact that the goods and services are identical is that the scope of any differences between the signs in question is reduced (see judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 79 and the case-law cited), it must be found that there is a likelihood of confusion as regards the goods and services which were considered identical.
88As regards the services which are not identical, but similar (see paragraph 40 above), that factor, combined with the signs’ similarity — above all their conceptual similarity — and with the normal distinctive character of the earlier marks, is sufficient to confirm that there is a likelihood of confusion.
89In light of all those considerations, the first plea in law must be rejected.
The second plea in law, alleging infringement of the procedural rules governing opposition proceedings
90The applicant disputes the Board of Appeal’s reasoning that the Opposition Division should have taken into consideration the additional evidence in order to determine whether the earlier marks had acquired enhanced distinctive character by virtue of the intervener’s use, even though such evidence had been submitted after the expiry of the period set pursuant to Rule 19 of Regulation 2868/95. The applicant states that the opposition procedure is governed by strict rules that must be applied by everyone, in order to avoid leniency and stalling tactics.
91EUIPO and the intervener dispute the applicant’s arguments.
92First of all, it must be observed that the Board of Appeal’s reasoning set out in paragraphs 39 to 50 of the contested decision, criticised by the applicant, forms part of the grounds on which point 1 of the operative part of that decision — which annuls the Opposition Division’s decision without qualification, thereby annulling it in its entirety — is based.
93In addition, in point 3 of the operative part of the contested decision, read in the light of paragraphs 37, 38 and 50 of the grounds of that decision, the Board of Appeal remitted to the Opposition Division the assessment of whether the genuine use of the other earlier marks had been proved and, if so, whether there was a likelihood of confusion between the marks at issue in respect of the goods and services concerned other than those in Classes 3 and 41, having regard, in particular, to all the evidence capable of establishing the enhanced distinctive character of the earlier marks on account of the intervener’s use.
94In that regard, it must be borne in mind that, according to Article 64(1) and (2) of Regulation No 207/2009:1. Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. 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.2. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.’
95It follows that the Opposition Division will be required to take into consideration the additional evidence not only in order to adjudicate on the issue of genuine use, but also, if genuine use has been proved, in order to establish in the context of the examination of the likelihood of confusion whether those marks have enhanced distinctive character on account of the public’s knowledge of them.
96That fact is unfavourable to the applicant, since the more distinctive the earlier mark, the greater the likelihood of confusion will be (see the case-law referred to in paragraph 80 above).
97Consequently, it is clear that the applicant has a certain interest in the Court adjudicating now on the merits of the reasoning which led the Board of Appeal to consider that all the evidence lodged by the intervener had to be taken into account for the purposes of assessing the earlier marks’ distinctive character.
98As to the substance, it must be borne in mind that, in paragraph 42 of the contested decision, the Board of Appeal observed that the Opposition Division had refused to take into account the additional evidence for the purposes of assessing the enhanced distinctiveness of the earlier marks, without giving any reasons other than it was filed after the time limit initially set under Rule 19(1) and (2) of Regulation No 2868/95.
99As the Board of Appeal in essence found in paragraphs 43 to 45 of the contested decision, first, it is apparent from the wording of Article 76(2) of Regulation No 207/2009, according to which EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’, that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late. In stating that the latter ‘may’, in such a case, decide to disregard such evidence, Article 76(2) grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraphs 21 to 23 and the case-law cited).
100Secondly, Rule 20(1) of Regulation No 2868/95 does not constitute a provision to the contrary, within the meaning of the case-law referred to in paragraph 99 above, precluding EUIPO, in this case the Opposition Division, from using its discretion under Article 76(2) of Regulation No 207/2009 for the purposes of taking into account facts and evidence relied on or produced late.
101Admittedly, contrary to the Board of Appeal’s assessment, in the present case that discretion does not stem from the third subparagraph of Rule 50(1) of Regulation No 2868/95, which provides that ‘[w]here the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with … Regulation [No 207/2009] and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 7[6](2) of th[at r]egulation’. In fact, that subparagraph is not applicable ratione personae to the Opposition Division, while it is that division which ought to have exercised its discretion, stating reasons.
102Nevertheless, the fact that the Board of Appeal’s reference to Rule 50 is irrelevant does not call in question the merits of the solution which it adopted regarding the fact that Rule 20(1) of Regulation No 2868/95 does not constitute a provision to the contrary. Rule 20(1) simply provides that ‘[i]f until expiry of the period referred to in Rule 19(1) [of that regulation] the opposing party has not proven the existence, validity and scope of protection of his earlier mark …, the opposition shall be rejected as unfounded.’
103However, in the present case, the intervener had indeed proven the existence, validity and scope of the earlier marks’ protection, even though it had provided only limited evidence of the highly distinctive character which, in its view, those marks had acquired on account of the intervener’s use.
104On that point, it must be observed that the concept of ’scope of the protection’ refers to the definition of the goods and services protected by the mark relied on in support of the opposition, not the greater or lesser extent of that mark’s distinctive character.
105In any event, as the Board of Appeal rightly observed in paragraph 47 of the contested decision, the intervener had filed evidence of the highly distinctive character of the earlier marks within the time limit initially set. Consequently, the evidence submitted outside that time limit is not the initial and only evidence, but additional evidence complementary to the relevant evidence filed beforehand.
106In that regard, it is apparent from the case-law that when evidence submitted by one of the parties to the proceedings before the Opposition Division outside the time limit set by it is evidence complementary to relevant proof which was submitted within the time limit, the fact that the other party to the opposition proceedings disputed that evidence is sufficient to justify production by the first of those parties of additional evidence, so that EUIPO may take its decision on the basis of all the relevant facts and evidence (see, to that effect, judgment of 29 September 2011, New Yorker SHK Jeans v OHIM — Vallis K.-Vallis A. (FISHBONE), T‑415/09, not published, EU:T:2011:550, paragraph 33).
107In the present case, in its observations filed before the Opposition Division on 12 December 2012, the applicant had denied that the intervener had produced sufficient evidence to establish that the earlier marks had a highly distinctive character. Consequently, in accordance with the case-law referred to in paragraph 106 above, the intervener could file additional evidence.
108Moreover, it has also been clarified in the case-law that the conclusion that the Opposition Division may take into consideration additional evidence complies with the more general objective underlying the opposition proceedings. In that context, Article 76(2) of Regulation No 207/2009 has been interpreted as meaning that taking into account evidence produced late is particularly likely to be justified where EUIPO considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see, to that effect, judgments of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 38, and 29 December 2011, FISHBONE, T‑415/09, not published, EU:T:2011:550, paragraph 34).
109In the present case, first, in paragraph 48 of the contested decision, the Board of Appeal noted, in essence, that the additional evidence consisting in particular of invoices, catalogues, internet printouts, turnover figures, selling and royalty reports and evidence of the presence of the earlier marks at international fairs, could affect the distinctive character of those marks and, consequently, the examination of the likelihood of confusion, since a highly distinctive character could enable a likelihood of confusion to be found even when the goods are slightly similar.
110Consequently, the Board of Appeal was fully entitled to find that the condition, established in the case-law referred to in paragraph 108 above, relating to the relevance of the additional evidence, was fulfilled.
111Secondly, in paragraph 49 of the contested decision, the Board of Appeal found that the additional evidence had not been submitted at a very late stage of the proceedings, but in reply to the request for proof of genuine use, and that it would have been artificial and over formalistic to separate from the whole body of evidence the evidence which is admissible only for the purpose of showing genuine use of the other earlier marks but is then ignored for the purpose of assessing their distinctive character. It also noted that the applicant had had an opportunity to comment on that evidence.
112In that regard, it must be borne in mind that the genuine use of an earlier mark is a preliminary issue which must be settled before a decision is given on the opposition proper, which may relate, as in the present case, to the existence of a likelihood of confusion between that mark and a mark applied for (see, to that effect, judgments of 16 March 2015, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 26, and 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 33).
113In the present case, since the Opposition Division had not yet ruled on the genuine use of the other earlier marks when the additional evidence was filed, which sought above all to prove genuine use, it had not been allowed to begin examining the likelihood of confusion, in the context of which the possible enhanced distinctiveness of those marks could have played a role. It is, therefore, clear that the stage of the proceedings at which the additional evidence was produced did not preclude its being taken into account.
114Consequently, the General Court is to confirm the Board of Appeal’s assessment that the condition, established in the case-law referred to in paragraph 108 above, relating to the stage of the proceedings at which the evidence was filed, was fulfilled.
115Lastly, it must be pointed out that in paragraph 50 of the contested decision, the Board of Appeal found that the grounds which it had just set out provided sufficient justification for taking the additional evidence into account, so that it was immaterial that the intervener had offered no explanation as to why it was unable to submit that evidence at an earlier stage of the proceedings before the Opposition Division.
116In that regard, it must be pointed out that in the judgment of 3 October 2013, Rintisch v OHIM (C‑120/12 P, EU:C:2013:638, paragraphs 40 to 44), the Court of Justice found that, in accordance with the case-law referred to in paragraph 108 above, the Board of Appeal which had adopted the contested decision in the case giving rise to that judgment, which concerned the evidence of the existence, validity and scope of an earlier mark’s protection, was entitled to disregard the evidence submitted late, simply because the party concerned had not explained the reasons for which it had not been able to produce that evidence earlier. In essence, the Court of Justice considers, in such a context, that the circumstances surrounding the late production of that evidence precluded it from being taken into account.
117Even if those considerations of the Court of Justice apply to a case such as the present, where additional evidence concerning the enhanced distinctive character of the earlier marks — not the existence, validity and scope of their protection — is adduced at a second stage, it is sufficient to note that the intervener produced that evidence at the first opportunity open to it in order to respond to the applicant’s criticisms mentioned in paragraph 107 above.
118In the light of all the foregoing considerations, the second plea in law must also be rejected and, therefore, the action must be dismissed in its entirety.
Costs
119Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs of the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener.
120As regards the intervener’s head of claim relating to the costs before the Board of Appeal, those costs are to continue to be governed by the contested decision.
Operative part
On those grounds,THE GENERAL COURT (Ninth Chamber)hereby:
1.Dismisses the action;
2.Orders Polo Club to pay the costs of the present proceedings.
Delivered in open court in Luxembourg on 10 November 2016.
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