8 July 2020 (*1)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark mediFLEX easySTEP — Earlier EU figurative mark Stepeasy — Relative grounds for refusal — Article 8(1)(b) of Regulation (EU) 2017/1001)

In Case T‑21/19,

Pablosky, SL, established in Madrid (Spain), represented by M. Centell, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, H. O’Neill and V. Ruzek, acting as Agents,

defendant,

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

docPrice GmbH, established in Koblenz (Germany), represented by K. Landes, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 November 2018 (Case R 76/2018-4), relating to opposition proceedings between Pablosky and docPrice,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 11 January 2019,

having regard to the response of EUIPO lodged at the Court Registry on 23 April 2019,

having regard to the response of the intervener lodged at the Court Registry on 17 April 2019,

having regard to the decision of 27 November 2019 joining Cases T‑20/19 and T‑21/19 for the purposes of the oral part of the procedure,

further to the hearing on 15 January 2020, in the course of which a number of questions were put to the applicant and to EUIPO,

gives the following

Judgment (*1)

Background to the dispute

On 3 August 2016, the intervener, docPrice GmbH, 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)).

Registration as a mark was sought for the following figurative sign:

3.3

The goods in respect of which registration of the mark applied for was sought are in Classes 10 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–Class 10: ‘Orthopaedic footwear, orthopaedic soles and shoe insoles, arch supports; boots for medical purposes; orthopaedic bandages and splints’;

–Class 25: ‘Clothing; headgear; footwear, and parts therefor, in particular shoe soles, shoe buckles and heels, health shoes’.

4.4

On 15 September 2016, the applicant, Pablosky, SL, filed a notice of opposition to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.

5.5

The opposition was based on the EU figurative mark reproduced below, which was filed on 4 February 2016 and registered on 22 June 2016 under the number 15076961 in respect of ‘clothing’, ‘footwear’ and ‘headwear’ in Class 25:

6.6

The grounds relied on by the applicant were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

On 6 December 2017, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, and that it was necessary, on that ground, to reject the application for registration in respect of ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 and in respect of ‘clothing’, ‘headgear’, ‘footwear’ and ‘health shoes’ in Class 25 (taken together, ‘the contested goods’), but that the mark applied for could be registered in respect of the other goods, namely ‘orthopaedic soles and shoe insoles, arch supports’ and ‘orthopaedic bandages and splints’ in Class 10 and ‘parts [for footwear], in particular shoe soles, shoe buckles and heels’ in Class 25.

On 11 January 2018, the intervener filed a notice of appeal with EUIPO, in accordance with Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division, in so far as the Opposition Division had partially upheld the opposition as regards the contested goods or, at the very least, as regards ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10.

By decision of 8 November 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO found that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, with regard to any of the goods at issue, even with regard to those which were identical. Consequently, it annulled the Opposition Division’s decision and rejected the opposition in its entirety, including with regard to the contested goods.

Forms of order sought

The applicant claims, in essence, that the Court should:

–annul the contested decision;

–reject the application for registration of the mark applied for in respect of all of the goods in Classes 10 and 25 referred to in the application;

–order EUIPO and the intervener to pay the costs.

11.11

EUIPO contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs.

12.12

The intervener contends, in essence, that the Court should:

–uphold the contested decision and dismiss the action;

–order the applicant to pay the costs.

Law

…

Substance

23.23

In support of its claims for annulment and alteration, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

24.24

EUIPO and the intervener contend that the action should be dismissed in its entirety on the ground that the Board of Appeal was right in finding, in the contested decision, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

25.25

It is important to bear in mind that Article 8(1)(b) of Regulation 2017/1001 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, 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.

26.26

The fact that parties which claim that a decision of a Board of Appeal should be annulled do not dispute certain factors that are essential to the analysis of the likelihood of confusion does not mean that the Court may not or must not review the merits of those factors, since those factors constitute an essential stage of the reasoning which the Court is required to engage in in order to carry out that review. Where one of the parties claiming that the Board of Appeal’s decision should be annulled has called into question the Board of Appeal’s assessment relating to the likelihood of confusion, the Court has, by virtue of the principle of interdependence between the factors taken into account, in particular the similarity of the trade marks and that of the goods and services covered, jurisdiction to examine the Board of Appeal’s assessment of those factors (see, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 47). Where it is called upon to assess the legality of a decision of a Board of Appeal of EUIPO, the Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before it (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48).

…

The relevant public and its level of attention

32.32

In paragraph 11 of the contested decision, the Board of Appeal stated that, in its view, the goods at issue were aimed ‘mainly at the general public, who w[ould] display an average level of attention in relation to them, given that they are durable items which are not normally purchased particularly frequently’.

33.33

The applicant does not dispute that the relevant public corresponds to the general public, but seems to take the view that the level of attention of that public, when it purchases the goods at issue, is low and not average, as the Board of Appeal assumes in the contested decision, because those goods are everyday consumer goods which average consumers do not spend much time in choosing.

34.34

EUIPO and the intervener dispute the applicant’s arguments, while maintaining that the Board of Appeal made certain incorrect assessments of the facts.

35.35

EUIPO concurs that the relevant public corresponds to the general public, but observes that, although it agrees with the Board of Appeal in considering that the level of attention of that public is average in respect of the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25, it takes the view, by contrast, that that level of attention is high as regards the ‘health shoes’, namely shoes which are beneficial for the health of the feet of the persons wearing them, in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10. It submits that, because of the special needs for which the ‘health shoes’ in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 are bought and because of the possibility that those goods may be made to measure or require adjustments on account of the personal handicaps of the persons for whom they are intended and also because of the case-law relating to the general public’s level of attention when purchasing goods that affect health, it should be held that that public displays a high level of attention when purchasing those goods.

36.36

Although the intervener does not dispute that the relevant public is the general public, the level of attention of which is average in relation to the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25, it submits that the ‘health shoes’ in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 are not aimed at the general public, but at healthcare professionals specialising in orthopaedics and at a specific category of consumers suffering from specific physical disorders requiring them to wear orthopaedic footwear, whose level of attention will be high as regards health-related products.

37.Where the marks at issue are registered or registration of those marks is sought in respect of different goods or services, the Board of Appeal is required to identify the consumers who, in the relevant territory, are likely to use each of those goods or services (judgment of 17 February 2017, Construlink v EUIPO — Wit-Software (GATEWIT), T‑351/14, not published, EU:T:2017:101, paragraph 44).

38.In addition, according to the case-law, the relevant public to be taken into account for the purposes of assessing whether there is a likelihood of confusion is composed solely of consumers who are likely to use both the goods or services covered by the earlier trade mark and those covered by the mark in respect of which registration is sought (see, to that effect, judgments of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23, and of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28).

39.Furthermore, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the goods or services in question, who is deemed to be 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 goods or services in question (see, to that effect, 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).

40.In that regard, it is apparent from the case-law that ‘clothing’, ‘footwear’ and ‘headgear’ in Class 25 are considered to be everyday consumer goods that are aimed at the general public, which will display an average level of attention when purchasing them (see, to that effect, judgments of 27 September 2012, Tuzzi fashion v OHIM — El Corte Inglés (Emidio Tucci), T‑535/08, not published, EU:T:2012:495, paragraphs 3, 6 and 29; of 24 November 2016, CG v EUIPO — Perry Ellis International Group (P PRO PLAYER), T‑349/15, not published, EU:T:2016:677, paragraphs 3, 6 and 27 and the case-law cited, and of 8 February 2019, Serendipity and Morgese v EUIPO — CKL Holdings (CHIARA FERRAGNI), T‑647/17, not published, EU:T:2019:73, paragraphs 3, 6, 20 and 21).

41.Furthermore, it has been held that the relevant public, as regards orthopaedic articles, is composed of professionals in that sector and patients suffering from malformations or dysfunctions which need to be corrected by the wearing of such articles, with the result that the level of technical knowledge of that public has to be regarded as high (judgment of 16 December 2010, Fidelio v OHIM (Hallux), T‑286/08, EU:T:2010:528, paragraph 42). It has also been held that, although ‘orthopaedic footwear’ in Class 10 can be purchased by consumers as part of the general public or by health professionals, it is always chosen with care (judgment of 9 November 2016, Birkenstock Sales v EUIPO (Representation of a pattern of wavy, crisscrossing lines), T‑579/14, EU:T:2016:650, paragraphs 29 and 32). Health-related goods and services may be aimed both at professionals and at end consumers who will display a high level of attention as regards goods and services related to the state of their health (see judgment of 8 October 2014, Laboratoires Polive v OHIM — Arbora & Ausonia (DODIE), T‑77/13, not published, EU:T:2014:862, paragraph 25 and the case-law cited).

42.Lastly, the global assessment of the likelihood of confusion must be carried out having regard to the average consumer who has the lowest level of attention (see, to that effect, judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited).

43.In opposition proceedings based on Article 8(1)(b) of Regulation 2017/1001, EUIPO may take account only of the list of goods applied for as it appears in the application for registration of the mark concerned, subject to any amendments thereto (see judgment of 16 September 2013, Oro Clean Chemie v OHIM — Merz Pharma (PROSEPT), T‑284/12, not published, EU:T:2013:454, paragraph 42 and the case-law cited).

44.In the present case, it must be pointed out that, in the light of the case-law cited in paragraph 40 above, the Board of Appeal did not err in finding that the ‘clothing’, ‘headgear’ and ‘footwear’ in Class 25 covered by the marks at issue were everyday consumer goods that were aimed at the general public, which would display an average level of attention when purchasing them.

45.By contrast, it must be held, in the light of the case-law cited in paragraph 41 above, that the Board of Appeal erred, in the contested decision, in finding that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for were aimed at the general public which had an average level of attention, rather than at healthcare professionals specialising in orthopaedics and at consumers belonging to the general public who suffered from orthopaedic problems requiring them to wear adapted footwear, whose level of attention is high as regards goods connected with their professional activity or the state of their health. The same is true as regards the ‘health shoes’ in Class 25 covered by the mark applied for, which, as is apparent from the name chosen in the application for registration, are a specific category of footwear which is, secondarily, beneficial for the health of the feet of the persons wearing them and is therefore purchased by consumers belonging to the general public who suffer from health problems of an orthopaedic nature and have a high level of attention.

The comparison of the goods at issue

46.In paragraph 13 of the contested decision, the Board of Appeal confirmed the Opposition Division’s assessment that the ‘clothing’, ‘headgear’, ‘footwear’ and ‘health shoes’ in Class 25 covered by the mark applied for were identical to the ‘clothing’, ‘headwear’ and ‘footwear’ in that class covered by the earlier mark, stating that ‘health shoes’ were included in the broader category of ‘footwear’. In paragraph 15 of that decision, it also confirmed the Opposition Division’s assessment that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for were similar, at least to a low degree, to the ‘footwear’ in Class 25 covered by the earlier mark. It took the view that the consumer could choose between purchasing general footwear, including certain types of health shoes, or more specialised orthopaedic footwear or boots for medical purposes, depending on the extent of his or her specific medical or orthopaedic needs. However, according to the Board of Appeal, in general terms, all of those goods were similar on account of their similar nature, method of use, method of manufacture and end users and also because they might be in competition with each other given that they serve the same purpose, namely to protect the foot.

47.The applicant claims that there is a ‘close similarity’ between the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for and the ‘footwear’ in Class 25 covered by the earlier mark, for the same reasons as those set out by the Board of Appeal in the contested decision. However, it requests that the Court hold that the goods at issue, namely, on the one hand, the contested goods covered by the mark applied for and, on the other hand, the ‘clothing’, ‘footwear’ and ‘headwear’ in Class 25 covered by the earlier mark are ‘identical’. In spite of that apparent contradiction, it therefore seems to be calling into question the merits of the Board of Appeal’s assessment, in the contested decision, that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for are merely similar, albeit to a low degree, to the ‘footwear’ in Class 25 covered by the earlier mark.

48.EUIPO and the intervener dispute the applicant’s arguments. The intervener, however, claims that certain assessments of the facts on the part of the Board of Appeal are incorrect. It submits that the ‘health shoes’ in Class 25 and the ‘orthopaedic footwear’ and ‘boots for medical purposes’ in Class 10 covered by the mark applied for cannot be considered to be similar to the goods covered by the earlier mark.

49.According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods or services at issue (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).

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