(EU trade mark– Opposition proceedings– Application for the EU figurative mark WOOD STEP LAMINATE FLOORING– Earlier international word mark STEP– Relative ground for refusal– Likelihood of confusion– Article8(1)(b) of Regulation (EU) 2017/1001

93A 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 29September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph17, and of 14December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph74).

94The Board of Appeal found, in paragraphs54 to 64 of the contested decision, that there was in the present case a likelihood of confusion on the part of the relevant public. It referred to its assessments relating to the similarity of the marks at issue and to the identity or similarity of the goods and services at issue and to its finding that the element ‘step’ might be perceived by a part of the relevant English-speaking public as ‘not particularly distinctive’ for most of those goods and services. The Board of Appeal pointed out, however, that, even in a case involving an earlier mark with a weak distinctive character, there might be a likelihood of confusion and that, furthermore, since that mark was validly registered, it had to be recognised as having a minimum degree of inherent distinctiveness in the context of opposition proceedings. It added that the presence of elements other than the element ‘step’ in the mark applied for was not capable of ruling out the existence of a likelihood of confusion arising from the fact that the earlier mark was fully included in the mark applied for and constituted the more distinctive part of the most striking element in that mark.

95For the sake of completeness, the Board of Appeal, in paragraph65 of the contested decision, rejected, as irrelevant for the purposes of the opposition proceedings, the applicant’s argument relating to its use of the mark applied for before the date on which the application for registration of that mark was filed.

96The applicant claims that there is no likelihood of confusion in the present case. It submits, inter alia, that the contested decision is discriminatory, since the Board of Appeal did not state in what respect the assessment in the present case differs from the practice followed with regard to more than 100registered trade marks containing the element ‘step’.

97EUIPO and the intervener, by contrast, take the view that the Board of Appeal was justified in finding that there was a likelihood of confusion.

98In the present case, the goods and services covered by the mark applied for are, in part, identical and, in part, similar to a low degree to the goods covered by the earlier mark (see paragraphs38 and 39 above). Furthermore, it has been established that, taken as a whole, the marks at issue are visually similar to an average degree and phonetically and conceptually similar to at least an average degree (see paragraphs84 to 92 above).

99In that context, the Board of Appeal correctly stated that the sole element of which the earlier mark consisted, ‘step’, was contained in its entirety in the mark applied for. The Board of Appeal was also right in finding that the other elements in the mark applied for, since they had, at best, only an extremely weak distinctive character, were not capable of ruling out the existence of a likelihood of confusion.

100Furthermore, the fact that the earlier mark has a weak distinctive character with regard to some of the goods it covers (see paragraphs57 and 76 above) does not preclude the finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13December 2007, Xentral v OHIM– Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph70 and the case-law cited).

101As regards the applicant’s argument relating to the discriminatory nature of the contested decision in so far as it differs from the practice which EUIPO followed with regard to more than 100registered trade marks (see paragraph96 above), it is sufficient to point out that the applicant manifestly confuses the application of the absolute grounds for refusal set out in Article7 of Regulation 2017/1001 at the time of the registration of a mark with that of the relative ground for refusal set out in Article8(1)(b) of that regulation, which has been relied on in the present proceedings, with the result that it cannot, in any event, be held that there has been any infringement of the principle of equal treatment.

102In the light of the considerations set out in paragraphs98 to 101 above and in view of the principle of interdependence referred to in paragraph93 above, it must be held that the Board of Appeal did not err in finding that there was a likelihood of confusion on the part of the relevant public.

103It follows from all of the foregoing considerations that the first plea, in so far as it is based on the claim alleging infringement of Article8(1)(b) of Regulation 2017/1001, must be rejected.

2.The second plea, alleging infringement of Article26(2) and ofArticles34 to 36 TFEU

104The applicant claims that the contested decision is contrary to the provisions of the FEU Treaty relating to the free movement of goods, since it is based on an ‘overly biased’ interpretation of the distinctiveness test and a narrow interpretation of the absence of a likelihood of confusion. It argues that that decision is also the result of an overly broad interpretation of the derogation relating to the protection of industrial and commercial property laid down in Article36 TFEU.

105In that context, the applicant submits that the sign in respect of which registration as an EU trade mark has been applied for has, for more than 20years, been registered as a trade mark in Hungary and used with regard to goods and services in Classes27 and 37. It claims that those goods and services are marketed not only in Hungary, where they are well known, but also in other Member States. It submits that EUIPO and the intervener therefore seek to prevent goods which are legally marketed in one of the Member States from being marketed in other Member States.

106EUIPO and the intervener dispute the applicant’s claims.

107In that regard, it must be stated that the present plea is based, in essence, on the premiss that the Board of Appeal was not justified in finding that there was a likelihood of confusion in the present case and, in particular, in recognising that the element ‘step’ had some distinctiveness. However, that premiss is incorrect, as has been established in the context of the examination of the first plea.

108Since the Board of Appeal thus applied Regulation 2017/1001 correctly, it cannot in any way be held that the contested decision is based on an overly broad interpretation of Article36 TFEU, which, even if it were applicable in the present case, expressly provides that the ‘protection of industrial and commercial property’ is one of the grounds that is capable of justifying obstacles to the free movement of goods which constitute quantitative restrictions or measures having equivalent effect.

109As regards the applicant’s arguments alleging that the submission that the sign which constitutes the mark applied for has, for more than 20years, been registered as a trade mark in Hungary and used in order to market goods and services in Classes27 and 37 in that country and in other Member States, it is sufficient to state, as the Board of Appeal correctly pointed out in paragraph65 of the contested decision, that circumstances relating to the use of the mark applied for prior to the filing of the application for registration of that mark as an EU trade mark are irrelevant for the purposes of the present opposition proceedings. It is the date on which that application was filed which is, in the context of such proceedings, relevant with regard to the assessment of the likelihood of confusion.

110It follows that the second plea must be rejected and that the action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility, which EUIPO disputes, of the applicant’s second and third heads of claim, since those heads of claim are based on the premiss that the first head of claim has been upheld (see, to that effect, judgment of 13May 2020, adp Gauselmann v EUIPO– Gameloft (City Mania), T‑381/19, not published, EU:T:2020:190, paragraph63 and the case-law cited).