JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
19 June 2019 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark AC MILAN — Earlier EU word marks AC and AC HOTELS BY MARRIOTT and earlier EU figurative mark AC HOTELS MARRIOTT — Relative ground for refusal — No likelihood of confusion — No similarity between the signs — Lack of enhanced distinctiveness of the mark AC — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑28/18,
Marriott Worldwide Corp., established in Bethesda, Maryland (United States), represented by A. Reid, Solicitor, and S. Baran, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by E. Markakis and D. Walicka, and subsequently by E. Markakis and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Associazione Calcio Milan SpA (AC Milan), established in Milan (Italy), represented by A. Perani and G. Ghisletti, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 16 November 2017 (Case R 356/2017-2), relating to opposition proceedings between Marriott Worldwide and AC Milan,
THE GENERAL COURT (Fourth Chamber)
composed of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,
Registrar: E. Hendrix, Administrator,
having regard to the application lodged at the Court Registry on 22 January 2018,
having regard to the response of EUIPO lodged at the Court Registry on 6 April 2018,
having regard to the response of the intervener lodged at the Court Registry on 22 March 2018,
further to the hearing on 26 February 2019,
gives the following
Judgment
Background to the dispute
1 On 29 May 2013, the intervener, Associazione Calcio Milan SpA (AC Milan), obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1182615 designating the European Union in respect of the figurative sign AC MILAN (‘the international registration’).
2 On 21 November 2013, the international registration was notified to 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 sign covered by the international registration is the following figurative sign:
4 The services covered by the international registration are in, inter alia, Class 43 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: ‘[s]ervices for providing food and drink; temporary accommodation; cafés; cafeterias; tourist homes; restaurants; self-service restaurants; hotels; bar services; food and drink catering; motels; snack-bars’.
5 The international registration was published in Community Trade Marks Bulletin No 2013/223 of 22 November 2013.
6 On 21 August 2014, the applicant, Marriott Worldwide Corp., filed a notice of opposition pursuant to Article 41(1) of Regulation No 207/2009 (now Article 46(1) of Regulation 2017/1001) to the international registration, in so far as it designated the territory of the European Union, in respect of the services referred to in paragraph 4 above.
7 The opposition was based on the following earlier rights:
– the EU word mark AC, which was registered on 2 July 2013 under the number 11594281 (‘the earlier mark AC’) in respect of services in Classes 35, 41 and 43;
– the EU figurative mark reproduced below, which was registered on 22 February 2012 under the number 10026871 (‘the earlier mark AC HOTELS MARRIOTT’) in respect of services in Classes 35, 41 and 43:
– the EU word mark AC HOTELS BY MARRIOTT, which was registered on 22 February 2012 under the number 10032829 (‘the earlier mark AC HOTELS BY MARRIOTT’) in respect of services in Classes 35, 41 and 43.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9 By decision of 26 January 2017, the Opposition Division rejected the opposition in its entirety.
10 On 15 February 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. In the statement of grounds for that appeal the applicant invoked, for the first time, a ground of opposition based on Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
11 By decision of 16 November 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal. First, in paragraphs 17 to 20 of the contested decision, the Board of Appeal rejected the ground of opposition based on Article 8(5) of Regulation 2017/1001. Secondly, in paragraph 25 of the contested decision, it found that the relevant territory for the purposes of assessing whether there was a likelihood of confusion was that of the European Union. Thirdly, in paragraph 28 of the contested decision, it found, first, that the services at issue in Class 43 which related to the food and drink sector were aimed at the general public, which had a level of attention that was at most average, and, secondly, that the temporary lodging services in the same class were aimed, in essence, at the general public, which had a level of attention that was at least average. Furthermore, in paragraph 29 of the contested decision, it found that the remaining services covered by the earlier marks were aimed in part at the general public, which had a level of attention that was at least average, and in part at a professional public with specific knowledge and expertise. Fourthly, in paragraph 33 of the contested decision, the Board of Appeal assumed that all the services at issue were identical. Fifthly, in paragraphs 60, 65 and 72 of the contested decision, it concluded that the signs at issue were visually and phonetically different or, at most, similar to a very low degree and that there was no conceptual similarity between them. Sixthly, in paragraph 76 of the contested decision, it observed that the applicant had provided hardly any evidence that the earlier mark AC had acquired distinctive character through use and found that that mark had a normal degree of inherent distinctiveness. Furthermore, in paragraph 77 of the contested decision, it assumed, for reasons of procedural economy, that the earlier marks AC HOTELS BY MARRIOTT and AC HOTELS MARRIOTT had acquired enhanced distinctiveness through use. Seventhly, in paragraphs 91 and 92 of the contested decision, the Board of Appeal came to the conclusion that, whatever reputation the applicant had on the market under its trade mark, there was insufficient similarity between the signs at issue to give rise to a likelihood of confusion on the part of the relevant public, since the presumed identity of the services in question was counteracted by the fact that the signs at issue coincided only in the non-dominant combination of letters ‘a’ and ‘c’, which was hardly visible in the sign applied for. Eighthly, in paragraphs 93 to 103 of the contested decision, the Board of Appeal found, in essence, that the conditions for the existence of a family of AC HOTEL marks had not been satisfied in the present case.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision and reject the registration of the sign applied for in respect of the services at issue;
– order EUIPO to pay the costs.
13 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. The applicant submits, in essence, that the Board of Appeal erred in finding that there was no likelihood of confusion between the signs at issue.
Preliminary observations
15 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.
16 According 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).
17 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
18 It follows that, where the signs at issue are different, a necessary condition for the existence of a likelihood of confusion is not met; it must therefore be ruled out, regardless of the degree of similarity between the goods or services and the degree of distinctiveness of the earlier mark. Even if the goods or services are identical or highly similar and the earlier mark is highly distinctive, those circumstances do not make up for the fact that the essential requirement relating to the similarity of the signs is not met. On the other hand, where the signs are similar, even to a low degree, the existence of a likelihood of confusion cannot be a priori ruled out, since a low degree of similarity of the signs may be offset by the identity or strong similarity of the goods or services and by the highly distinctive character of the earlier mark (judgment of 21 February 2018, Laboratoire Nuxe v EUIPO — Camille and Tariot (NYouX), T‑179/17, not published, EU:T:2018:89, paragraphs 27 and 28).
19 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 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, 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).
20 Moreover, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the signs at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, 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 2017/1001 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).
21 In the present case, first, in paragraphs 25 to 29 of the contested decision, the Board of Appeal found that the relevant territory for the purposes of assessing whether there was a likelihood of confusion was that of the European Union and that some of the services at issue were aimed at the general public, the level of attention of which varied, in essence, from low to high, and others were aimed at professionals with specific knowledge and expertise. Those findings, which are not, moreover, disputed by the parties, are correct and can be upheld.
22 Secondly, as regards the comparison of the services at issue, it must be pointed out, first, that, in paragraph 33 of the contested decision, the Board of Appeal merely assumed that those services were identical for reasons of procedural economy, and, secondly, that there has been no challenge from the parties in that regard. That premiss must therefore be taken into account when examining the present action.
23 It is in the light of those considerations that the applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be examined.
The comparison of the signs
24 It should be noted at the outset that the signs to be compared are, on the one hand, the sign applied for AC MILAN and, on the other hand, the earlier marks AC, AC HOTELS BY MARRIOTT and AC HOTELS MARRIOTT.
25 The sign applied for is made up of a figurative element consisting of vertical, asymmetrical, slightly curved black and red lines with a golden outline, which, as a whole, form a round-shaped object. The word element ‘milan’, written in gold, stylised upper-case letters, is situated under that figurative element. The word element ‘ac’, written in very small, stylised, gold upper-case letters, is situated between the letters ‘l’ and ‘a’ of the word element ‘milan’ in a slightly raised position.
26 The earlier mark AC HOTELS MARRIOTT consists of the word elements ‘ac’, ‘hotels’ and ‘marriott’ written in white upper-case letters placed on a black rectangular background. The word element ‘ac’ is written in the upper part of the sign in bold upper-case letters above the word element ‘hotels’, which is written in smaller letters. The word element ‘marriott’, written in even smaller letters, is situated below the word element ‘hotels’ and is separated from the other two word elements by a fine white horizontal line.
The distinctive and dominant elements of the signs at issue
27 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 46 and the case-law cited).
28 For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
29 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. 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. 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. The Court of Justice has made clear that the fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 48 and the case-law cited).
30 Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited). That does not, however, mean that descriptive elements of a mark are necessarily negligible in the overall impression created by that mark. In that regard, it is necessary, in particular, to examine whether other elements of the mark are capable on their own of dominating the image of that mark which members of the relevant public retain (see paragraph 29 above).
31 Furthermore, for the purposes of assessing whether one or more given components of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark. It follows that the determination of whether an element is dominant within a composite trade mark depends on a fact-based assessment of the various elements that go to make up the sign and is therefore not dependent on the nature of the sign in question, that is to say, on whether it is a figurative sign or a word sign (see judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 35 and 36 and the case-law cited).
32 Lastly, where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant (judgment of 24 November 2005, Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 45).
33 It is in the light of those considerations that it must be assessed whether the Board of Appeal made any error in identifying the distinctive and dominant elements of the signs at issue.
– The distinctive and dominant elements of the sign applied for
34 First, in paragraphs 49 and 57 of the contested decision, the Board of Appeal found that, on account of its size, position within the sign and colour, the figurative element of the sign applied for could not be ignored and that it therefore dominated that sign visually. Secondly, in paragraphs 53, 54 and 57 of the contested decision, the Board of Appeal found, in essence, that the word element ‘ac’ was illegible or negligible in the light of its small size and its position in the overall composition of the sign, in which it was hardly noticeable. The Board of Appeal took the view that there was therefore a strong probability that that element would be disregarded by the relevant public. Thirdly, in paragraph 51 of the contested decision, it found that the relevant public would associate the word element ‘milan’ with the Italian city of Milan and consequently with the place of origin of the services at issue or the place where the headquarters of the undertaking was located. Fourthly, in paragraph 68 of the contested decision, the Board of Appeal found that the word element ‘ac’ would either not be noticed or be perceived as a meaningless combination of letters.
35 The applicant submits that the Board of Appeal made an error in its analysis inasmuch as it concentrated solely on the dominant elements of the signs at issue, at the expense of the distinctive elements of those signs. It maintains, in essence, that the word element ‘ac’ is the distinctive element of the sign applied for because it is the only element which has no meaning and is not therefore negligible. Furthermore, the applicant argues that the Board of Appeal erred in finding that the word element ‘ac’ would be disregarded by the relevant public. It submits that, contrary to what the Board of Appeal found, the word element ‘ac’ is not illegible, but is immediately noticeable in the sign applied for. It maintains that consequently the judgment of 2 July 2008, Stradivarius España v OHIM — Ricci (Stradivari 1715) (T‑340/06, not published, EU:T:2008:241), which is referred to in paragraph 53 of the contested decision, is not applicable in the present case. Lastly, at the hearing, the applicant complained, in essence, that the Board of Appeal did not take the distinctive character of the word element ‘ac’ into account in analysing the dominant elements of the sign applied for.
36 EUIPO and the intervener dispute the applicant’s arguments.
37 As regards the figurative element of the sign applied for, it must be pointed out, as observed by the Board of Appeal, that, owing to its size, position within the sign and colours, that element is the visually dominant element.
38 As regards the word element ‘milan’, in so far as it is perceived as such in the light of the stylisation of the letter ‘a’ in that element (see paragraphs 50 and 52 of the contested decision) and as the Board of Appeal correctly pointed out, it will be perceived as a reference to the Italian city of Milan and might therefore be associated with the place of origin of the services at issue or the place in which the headquarters of the undertaking that provides those services is located. Consequently, the Board of Appeal did not make an error of assessment in implicitly, but necessarily, finding that that element was at most weakly distinctive.
39 Furthermore, it must be pointed out, as observed by the Board of Appeal, that, in particular in the light of its size, the word element ‘milan’ will not be disregarded by the relevant public and that it is not therefore negligible in the overall impression created by the sign applied for.
40 As regards, lastly, the word element ‘ac’, the Board of Appeal found that that element was, in essence, negligible or illegible and that it would therefore be disregarded by the relevant public. Furthermore, if that element were perceived by the relevant public, the Board of Appeal acknowledged implicitly, but necessarily, that it had distinctive character since it found, in paragraph 68 of the contested decision, that it would be regarded as a meaningless combination of letters.
41 First, the applicant’s argument that the judgment of 2 July 2008, Stradivari 1715 (T‑340/06, not published, EU:T:2008:241), which concerns an illegible trade mark, is not relevant in the present case, since the word element ‘ac’ is immediately noticeable in the sign applied for, cannot succeed. It is clear from that judgment that not only a sign which is actually impossible to read or decipher must be regarded as illegible, but also a sign which is so difficult to decipher, understand or read that a reasonably observant and circumspect consumer cannot manage to do so without making an analysis which goes beyond what may reasonably be expected of him in a purchasing situation (judgment of 2 July 2008, Stradivari 1715, T‑340/06, not published, EU:T:2008:241, paragraph 34). That is so in the present case with respect to the word element ‘ac’ in view of its very small size and less prominent position in the sign applied for, which make it hardly noticeable at first sight. Moreover, the average consumer will have even greater difficulty reading it because he does not proceed to analyse the various details of a mark when making a purchase (judgment of 11 November 2009, Frag Comercio Internacional v OHIM — Tinkerbell Modas (GREEN by missako), T‑162/08, not published, EU:T:2009:432, paragraph 43).
42 In any event, it must be pointed out, as observed by EUIPO, that, in spite of the finding that the word element ‘ac’ was illegible or negligible for part of the relevant public, it is clear from paragraphs 60, 62, 66 and 71 of the contested decision that the Board of Appeal took all the elements of which the sign applied for consists, including the word element ‘ac’, into account in carrying out the visual, phonetic and conceptual comparison of the signs at issue.
43 Consequently, the applicant’s argument that the word element ‘ac’ is not illegible must in any event be rejected as ineffective.
44 Secondly, at the hearing, the applicant submitted, in essence, that, in the assessment as to the dominant nature of the elements of a sign, any distinctive character that those elements might have had to be taken into account and not only their size. Consequently, as far as the applicant is concerned, in the light of the distinctive character of the word element ‘ac’, the Board of Appeal erred in finding that that element was negligible and did not dominate the sign applied for.
45 It must be observed as a preliminary point that the applicant’s argument refers, implicitly, to a situation where part of the relevant public considers the word element ‘ac’ to be legible.
46 In that regard it must be pointed out that, although the distinctive character of an element of a sign must be taken into consideration in determining whether that element may be dominant (see, to that effect, judgment of 25 March 2010, Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65 and the case-law cited), the fact remains that the size and colour are also among the intrinsic qualities of the element in question which must be taken into consideration for the purposes of that assessment, as well as, accessorily, the relative position of the various components within the arrangement of the mark (see, to that effect, judgment of 20 May 2014, ARIS, T‑247/12, EU:T:2014:258, paragraphs 35 and 36 and the case-law cited). In view of its size, colour and position in the sign, the Board of Appeal could rightly find that the figurative element of the sign applied for was visually dominant, in particular in relation to the word element ‘ac’ which, in spite of its distinctive character, occupies a negligible position in the sign in comparison with the figurative element and the word element ‘milan’.
47 The applicant’s argument must therefore be rejected.
48 Thirdly, as regards the applicant’s reference to the decision of the Board of Appeal in Case R 1881/2014-2, in which it was found that, despite its smaller size, the word element ‘vivi’ of the contested figurative mark would still be perceived, it is sufficient to state that the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of those Boards of Appeal (see, to that effect, judgment of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 68 and the case-law cited; see also, to that effect, judgment of 13 June 2014, Grupo Flexi de León v OHIM (FLEXI), T‑352/12, not published, EU:T:2014:519, paragraph 32 and the case-law cited). Furthermore, although it is true that factual or legal grounds contained in an earlier decision may constitute arguments to support a plea alleging infringement of a provision of Regulation 2017/1001, it must be stated that the earlier decision on which the applicant relies concerns signs with regard to which it has not been established that the visual relationship between those signs is comparable with that in the present case (see, to that effect, judgment of 16 March 2005, FLEXI AIR, T‑112/03, EU:T:2005:102, paragraph 68).
49 Fourthly, doubt cannot be cast on the negligible nature of the element ‘ac’ in the sign applied for by the argument, put forward by the intervener at the hearing, that that sign can be used in all possible sizes and be affixed, inter alia, to the facade of a hotel or a restaurant.
50 Indeed, the comparison of the signs at issue must be made between the signs as they were registered or as they appear in the application for registration (see judgment of 9 April 2014, Pico Food v OHIM — Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11, EU:T:2014:199, paragraph 38 and the case-law cited).
51 In the light of the foregoing, the Board of Appeal’s assessment relating to the distinctive and dominant elements of the sign applied for must be upheld. In particular, the Board of Appeal did not make an error of assessment in finding, in essence, that, if the word element ‘ac’ were perceived by the relevant public, that element would not dominate the sign applied for, in spite of its distinctive character.
– The distinctive and dominant elements of the earlier marks
52 As regards the earlier mark AC, the Board of Appeal found, in paragraph 38 of the contested decision, first, that the word element ‘ac’ had no meaning and, secondly, that that mark did not contain any other element that could be considered to be visually dominant. As regards the earlier mark AC HOTELS BY MARRIOTT, the Board of Appeal found, in paragraph 41 of the contested decision, that the word element ‘hotels’ was descriptive of some of the services at issue and was not therefore the most distinctive element of that earlier mark. Furthermore, it took the view that that word element was not dominant. In paragraph 42 of the contested decision, the Board of Appeal also observed, first, that the word elements ‘ac’ and ‘by marriott’ were neither negligible nor strictly predominant in the overall impression created by that mark and, secondly, that the word element ‘by marriott’ at the end of the sign would be perceived as an indication that the AC HOTELS branded services originate from an undertaking named Marriott. It found that, consequently, the word element ‘by marriott’ contributed towards giving that mark its distinctive character. As regards the earlier mark AC HOTELS MARRIOTT, the Board of Appeal found, in paragraph 46 of the contested decision, that the figurative elements in that mark would not, in view of their aesthetic or decorative function, divert the relevant public’s attention away from the word elements. As far as the word element ‘hotels’ is concerned, the Board of Appeal found, in paragraph 47 of the contested decision, that its reasoning with regard to the earlier mark AC HOTELS BY MARRIOTT also applied. Lastly, it stated that the relevant public’s attention would focus on the word element ‘ac’, which was meaningless and, given its size and position in the sign, more visually eye-catching than the word element ‘marriott’, although the latter was distinctive and not negligible in the overall impression created by the sign.
53 The applicant submits that the lack of meaning of the word element ‘ac’ confers a high degree of inherent distinctiveness on that element. It maintains that that element, along with the word element ‘marriott’, is the distinctive element of the earlier mark AC HOTELS BY MARRIOTT and of the earlier mark AC HOTELS MARRIOTT. It argues that, in the latter mark, the word element ‘ac’ is also the dominant element.
54 First, as regards the argument that the word element ‘ac’ has a high degree of inherent distinctiveness in the light of its lack of meaning, it must be pointed out that there is no rule that establishes that the absence of any conceptual link between an element of a mark and the goods or services which it covers automatically confers on that element a high degree of inherent distinctiveness (order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraph 71). In the absence of any other arguments put forward by the applicant or included in the case file, the argument alleging that the word element ‘ac’ is highly distinctive, which is not substantiated, must therefore be rejected.
55 Secondly, it is necessary to uphold the Board of Appeal’s assessment, which has not, moreover been disputed by the applicant, that, in the earlier marks AC HOTELS BY MARRIOTT and AC HOTELS MARRIOTT, the word elements ‘ac’, ‘marriott’ and ‘by marriott’ are distinctive, unlike the word element ‘hotels’, which is descriptive.
56 Thirdly, the applicant does not dispute the Board of Appeal’s assessment as regards the dominant elements of the earlier marks AC HOTELS BY MARRIOTT and AC HOTELS MARRIOTT, which is correct and must therefore be upheld.
57 In the light of the foregoing, the Board of Appeal’s assessment relating to the distinctive and dominant elements of the signs at issue must be upheld.
The visual similarity
58 In paragraph 60 of the contested decision, the Board of Appeal found, in essence, that there was no similarity between the signs at issue if the word element ‘ac’ in the sign applied for was considered to be negligible or illegible. Furthermore, in paragraph 63 of the contested decision, it found that, in the unlikely event that part of the relevant public were to identify the word element ‘ac’ in the sign applied for, the signs at issue would be visually similar only to a very low degree.
59 The applicant claims that those findings are incorrect. It submits that there is a high degree of visual similarity between the signs at issue. It maintains that the Board of Appeal came to the opposite conclusion because it disregarded the word element ‘ac’ in the sign applied for, which is, in its submission, immediately perceivable and is the most distinctive element of that mark. Lastly, the applicant adds that the earlier mark AC is entirely subsumed within the sign applied for.
60 EUIPO, supported, in essence, by the intervener, disputes the applicant’s arguments.
61 It must be borne in mind that, in the context of the assessment as to the visual similarity between the signs at issue, in the alternative, the Board of Appeal took the word element ‘ac’ into consideration (see paragraph 42 above).
62 Furthermore, although the signs at issue have the element ‘ac’ in common, there are many visual differences between those signs. In particular, the sign applied for has a very different structure from that of the earlier marks. As is clear from paragraph 59 of the contested decision, that sign includes a dominant figurative element, representing a red- and black-striped ball, which is not without some originality, below which the word element ‘milan’ is written in gold letters. Furthermore, the word element ‘ac’, written in gold letters that are considerably smaller than those of the word element ‘milan’, is situated in the centre of that word element, slightly above the letter ‘l’. Those elements create a significant visual difference between the sign applied for and the earlier marks AC and AC HOTELS BY MARRIOTT, which do not include graphic or stylistic aspects. Furthermore, it must be stated, as observed by the Board of Appeal, that the figurative elements of the earlier mark AC HOTELS MARRIOTT reinforce the visual differences between that mark and the sign applied for.
63 In those circumstances, the fact that the earlier marks and the sign applied for include the word element ‘ac’ has only a slight impact on their visual similarity. In that regard, it must be pointed out that the visual impression given by two marks which have an element in common may be different, in particular where the comparison concerns, on the one hand, a word mark, such as the earlier marks AC and AC HOTELS BY MARRIOTT, and, on the other hand, a composite sign, such as the sign applied for, consisting of a strong figurative element and two word elements, which creates a visual impression that is distinct from the element ‘ac’ on its own (see, to that effect, judgments of 8 December 2011, Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, not published, EU:T:2011:722, paragraph 33, and of 17 May 2013, Rocket Dog Brands v OHIM — Julius-K9 (JULIUS K9), T‑231/12, not published, EU:T:2013:264, paragraph 34).
64 In the light of the foregoing, the Board of Appeal did not make an error of assessment in finding that, if the word element ‘ac’ in the sign applied for was illegible or negligible, the signs at issue were visually different. It did not, in addition, make an error of assessment in finding that, if the abovementioned word element ‘ac’ was perceived by the relevant public, the signs at issue were, at most, visually similar to a very low degree, in view of their differences, the weight of their respective elements and the fact that the word element ‘ac’ does not have a dominant position in the sign applied for.
The phonetic similarity
65 In paragraph 65 of the contested decision, the Board of Appeal found that the signs at issue were phonetically different. In paragraphs 66 and 67 of the contested decision, it, however, found that, if the word element ‘ac’ in the sign applied for was pronounced, the signs at issue would be, at most, phonetically similar to a very low degree.
66 The applicant disputes those findings, submitting that the signs at issue are phonetically similar to a high degree. Furthermore, it complains that the Board of Appeal disregarded the word element ‘ac’ in the sign applied for, which is, in its submission, immediately perceivable, is the most distinctive element of that sign and is the key element of that sign when it is pronounced out loud.
67 EUIPO, supported, in essence, by the intervener, disputes the applicant’s arguments.
68 As a preliminary point, first, it must be noted, as the Board of Appeal observed, that the figurative elements of the sign applied for have no bearing on the phonetic comparison between the signs at issue (see, to that effect, judgment of 11 September 2014, Aroa Bodegas v OHIM — Bodegas Muga (aroa), T‑536/12, not published, EU:T:2014:770, paragraph 45 and the case-law cited).
69 Secondly, even if the Board of Appeal had erred in finding that the word element ‘ac’ would not be pronounced because it is illegible or negligible, that error could not lead to the annulment of the contested decision because the Board of Appeal, in the context of the phonetic comparison of the signs at issue, also examined the situation in which that element would be identified and pronounced by the relevant public (see paragraph 65 above). That complaint is therefore ineffective.
70 In any event, contrary to what the applicant claims, if the word element ‘ac’ were perceived by the relevant public, the fact remains that the Board of Appeal did not make an error of assessment in finding that there was a low degree of phonetic similarity between the signs at issue. Those signs differ overall in their length and structure, but also in their rhythm and pronunciation. In particular, the term ‘milan’, which has an impact on the overall impression of the sign applied for in the light of its size and length, constitutes an element of phonetic differentiation between the sign applied for and the earlier mark AC, with the result that those two marks are similar only to a low degree. The other word elements of the earlier marks, such as ‘hotels’, ‘marriott’ and ‘by marriott’, also contribute towards increasing the differences between the signs at issue in terms of syllabic structure and pronunciation. Consequently, the overall phonetic impressions made by the signs at issue are similar only to a low degree.
71 Doubt cannot be cast on that finding by the applicant’s claims, first, that the earlier mark AC is entirely subsumed within the first part of the sign applied for and, secondly, that the word element ‘milan’ is not distinctive.
72 In that regard, it is apparent from the case-law that a composite trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the composite mark, unless that component constitutes the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public retains, with the result that all the other components of the mark are negligible within the overall impression created by it (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 33).
73 It is clear from paragraph 46 above that the word element ‘ac’ does not dominate the sign applied for.
74 Consequently, the fact that the earlier mark AC is included in the sign applied is not sufficient to cast doubt on the Board of Appeal’s assessment relating to the low degree of phonetic similarity between the signs at issue.
75 Furthermore, in spite of the alleged lack of distinctive character of the word element ‘milan’, that element is bound to be pronounced by the relevant public and will therefore constitute a significant element of phonetic differentiation between the signs at issue.
76 In the light of the foregoing, it is necessary to uphold the Board of Appeal’s assessment relating, first, to the lack of phonetic similarity between the signs at issue in the event that the word element ‘ac’ in the sign applied for is not pronounced by the relevant public and, secondly, to the low degree of phonetic similarity between the signs at issue in the event that that word element is pronounced.
The conceptual similarity
77 In paragraph 72 of the contested decision, the Board of Appeal found, in essence, that there was no conceptual similarity between the signs at issue. First of all, it found that the earlier mark AC had no meaning and therefore that it was not conceptually similar to the sign applied for, which refers to the well-known football club AC Milan. As regards the earlier marks AC HOTELS BY MARRIOTT and AC HOTELS MARRIOTT, it took the view that they were associated with different meanings such as, for example, hotels called ‘ac’, ‘ac marriott’ or ‘ac hotel marriott’ or hotels belonging to the undertaking Marriott and therefore that they conveyed a different concept from that conveyed by the sign applied for. For the sake of completeness, the Board of Appeal pointed out that part of the relevant public might perceive the word element ‘ac’ in the sign applied for as the acronym of ‘associazione calcio’ (football association) which, associated with the word element ‘milan’ and the figurative element in the shape of a red and black ball, that is to say the colours of the well-known football club AC Milan, refers, in essence, to that football club, thus further accentuating the dispersion of the concepts conveyed by the signs at issue.
78 The applicant criticises the Board of Appeal for finding that there was no conceptual similarity between the signs at issue. First of all, the applicant submits that the sign applied for is perceived by the relevant public, in view of the contested services, as designating the applicant’s AC hotel in Milan and is consequently conceptually similar to the earlier marks AC HOTELS BY MARRIOTT and AC HOTELS MARRIOTT. Next, the applicant complains that the Board of Appeal took the word element ‘ac’ in the sign applied for into consideration only at the stage of the conceptual comparison between the signs at issue, whereas it should, in the applicant’s submission, have referred to it at the stage of the visual, phonetic and conceptual comparisons as well as at the stage of the global assessment of the likelihood of confusion. Lastly it submits that the word element ‘ac’ in the sign applied for will not be perceived by the relevant public as referring to the football team AC Milan owing to the nature of the services in question, which are entirely unrelated to football.
79 EUIPO, supported, in essence, by the intervener, disputes the applicant’s arguments.
80 First of all, the complaint that the Board of Appeal took the word element ‘ac’ in the sign applied for into account only at the stage of the examination of the conceptual similarity between the signs at issue must be rejected. As stated, inter alia, in paragraph 42 above, after finding that that element was negligible and would not be taken into account by the relevant public, the Board of Appeal nevertheless examined whether there was any visual and phonetic similarity between the signs at issue in the event that the relevant public perceived that element.
81 Next, the applicant’s claim that the sign applied for is perceived by the relevant public, in view of the contested services, as designating its hotel called AC in Milan is not in any way substantiated and must therefore be rejected.
82 Lastly, contrary to what the applicant claims, without in any way proving that claim, even though the services in question are not directly connected with football, it cannot be ruled out that part of the relevant public will perceive the word element ‘ac’, associated with the word element ‘milan’ and the figurative element representing a ball in the colours of the famous Italian football team AC Milan, as the acronym of ‘associazione calcio’. The word element ‘ac’ thus reinforces the overall concept conveyed by the sign applied for, namely a reference to the well-known football club AC Milan.
83 Moreover, the fact that the meaning of the sign applied for does not refer to the services in respect of which its registration has been sought does not, however, prevent the relevant public from immediately grasping the meaning of that mark (see, to that effect, judgment of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 54).
84 In the light of the foregoing, the claim made by the applicant at the hearing, namely that the conceptual comparison between the signs at issue is neutral, must also be rejected, since the Board of Appeal correctly found that, except for the earlier mark AC, those signs conveyed different concepts.
The global assessment of the likelihood of confusion
85 In the contested decision, the Board of Appeal assessed the likelihood of confusion on the basis of the assumption that the element ‘ac’ was neither illegible nor negligible. In that regard, it, in essence, found that, in spite of the presumed identity of the services in question, the signs at issue were not, in view of the very low degree of visual and phonetic similarity between them and their conceptual dissimilarity, capable of creating a likelihood of confusion on the part of the relevant public.
86 The applicant submits, on the contrary, that there is a likelihood of confusion in the present case. In particular, it claims that the Board of Appeal incorrectly assessed the distinctive character of the earlier marks, both that acquired through use and that which is inherent, which it regards as high. Furthermore, it maintains, relying on the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), that the earlier mark AC and the distinctive element ‘ac’ in the earlier marks AC HOTELS MARRIOTT and AC HOTELS BY MARRIOTT ‘[retain] an independent distinctive role’ in the sign applied for. Lastly, the applicant relies on the judgment delivered by the Tribunal Superior de Justicia de Madrid (High Court of Justice, Madrid, Spain) on 9 July 2014 in case 3/2012 regarding the opposition based on its mark AC HOTELES against the application for the national trade mark JC HOTELES, in which it was, according to the applicant, held that its mark was a famous mark.
87 EUIPO, supported, in essence, by the intervener, disputes the applicant’s arguments.
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 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 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 Furthermore, according to the case-law, the average consumer of the category of goods concerned only rarely has a chance to compare the various marks directly and must therefore rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
90 In the first place, it must be borne in mind that the services at issue were assumed to be identical by the Board of Appeal.
91 In the second place, it is apparent from the case-law that conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20; of 23 March 2006, Mülhens v OHIM, C‑206/04 P, EU:C:2006:194, paragraph 35; and of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98).
92 In the present case, the Board of Appeal was right in finding that the signs at issue conveyed different concepts (see paragraph 84 above). Consequently, the finding that there is a very low degree of visual similarity and a low degree of phonetic similarity between the sign applied for and the earlier marks AC HOTELS MARRIOTT and AC HOTELS BY MARRIOTT is counteracted by the conceptual differences between those signs.
93 In the third place, it must be borne in mind that the word element ‘ac’, which is common to the signs at issue, does not dominate the sign applied for.
94 In the fourth place, the applicant errs in claiming that the earlier mark AC and the distinctive element ‘ac’ in the earlier marks AC HOTELS MARRIOTT and AC HOTELS BY MARRIOTT ‘[retain] an independent distinctive role’ in the sign applied for.
95 In that regard, it must be borne in mind that it is apparent from the case-law that, even if an element common to the signs at issue cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those signs in so far as it constitutes, in itself, the earlier mark and retains an independent distinctive role in the trade mark consisting, inter alia, of that element and in respect of 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 companies which are economically linked, in which case a likelihood of confusion must be held to be established (judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 38).
96 The purpose of examining whether any of the elements of a composite sign has an independent distinctive role is thus to determine which of those elements will be perceived by the relevant public (see judgment of 28 January 2016, Novomatic v OHIM — Simba Toys (African SIMBA), T‑687/14, not published, EU:T:2016:37, paragraph 135 and the case-law cited).
97 In that regard, the Court of Justice has 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 (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25).
98 It must also be pointed out that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, have a specific meaning or which resemble words known to him (see, to that effect, judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57, and of 13 February 2008, Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraph 58).
99 In the present case, first of all, it must be borne in mind, first, that the word element ‘ac’ in the sign applied for occupies a negligible position in that sign and, secondly, that it is the only component of the earlier mark AC.
100 Next, in paragraph 71 of the contested decision, the Board of Appeal found, in essence, first, that the word element ‘milan’ and the figurative element in the shape of a red and black ball referred to the well-known football club AC Milan and, secondly, that it could not be ruled out that, in the context of an overall assessment of the sign applied for, part of the relevant public would see the word element ‘ac’, which has a normal degree of fancifulness because it is meaningless (see paragraph 40 above), as the acronym of ‘associazione calcio’, which is part of the name of the football club AC Milan. It follows that when the word elements ‘milan’ and ‘ac’ and the figurative element are viewed together, that whole forms a logical unit referring to the football club AC Milan, whereas, in the earlier marks, the word element ‘ac’ is meaningless.
101 Consequently, bearing in mind that the consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, it must be held that, generally, the consumer will not perceive the term ‘ac’ independently or remember it in the mark applied for as that term will not sufficiently attract his attention (see, to that effect, judgment of 24 May 2012, Grupo Osborne v OHIM — Industria Licorera Quezalteca (TORO XL), T‑169/10, not published, EU:T:2012:261, paragraph 42).
102 It follows that the applicant is not justified in claiming that the earlier mark AC and the word element ‘ac’ in the earlier marks AC HOTELS MARRIOTT and AC HOTELS BY MARRIOTT retain an independent distinctive role in the sign applied for.
103 In the fifth place, according to the case-law, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
104 In the present case, in paragraph 77 of the contested decision, the Board of Appeal, after finding that the evidence provided by the applicant was limited, assumed that the earlier marks AC HOTELS BY MARRIOTT and AC HOTELS MARRIOTT had acquired distinctive character through use since that assumption would not, in any event, alter the outcome of its decision. As regards the earlier mark AC, in paragraph 76 of the contested decision the Board of Appeal found that there was hardly any evidence showing that it had acquired enhanced distinctiveness through use and that it was therefore necessary to rely on the inherent distinctiveness of that mark, which it considered to be normal.
105 The applicant claims that there is a likelihood of confusion between the signs at issue in view of the high degree of distinctiveness of the earlier marks and, in particular, of the earlier mark AC, which is, according to the applicant, subsumed within the sign applied for and is the most distinctive element of that sign. In addition, the applicant disputes the assessment that there is hardly any evidence of use of the earlier mark AC on its own and refers, in that regard, to the numerous examples of use of its other mark, the mark AC HOTELS, which are included in the evidence of enhanced distinctiveness that it provided before EUIPO. Furthermore, it submits that such use is sufficient to confer enhanced distinctive character on the word element ‘ac’ of the mark, given the non-distinctive nature of the element ‘hotels’ in the context of the services at issue. In any event, the applicant maintains that the earlier mark AC has a high degree of inherent distinctive character. Lastly, it relies on the judgment delivered by the Tribunal Superior de Justicia de Madrid (High Court of Justice, Madrid) on 9 July 2014 in case 3/2012 regarding the opposition based on its earlier mark AC HOTELES against the application for the national trade mark JC HOTELES, in which the Spanish court, according to the applicant, held that its mark was a famous mark.
106 EUIPO submits that the applicant’s reference to the evidence provided before the Board of Appeal is too vague and does not enable it to respond. When it was questioned in that regard at the hearing, EUIPO, supported by the intervener, stated that that vague reference to unidentified evidence was not admissible, which the applicant disputed. Furthermore, EUIPO submits, in essence, that the applicant has not proved that the word element ‘ac’ has distinctiveness acquired through use. Lastly, it contends that the argument that the earlier mark AC has a high degree of inherent distinctiveness because it is not descriptive must be rejected.
107 First, as regards the inherent distinctiveness of the earlier mark AC, the applicant merely submits that it has a high degree of inherent distinctiveness, without proving that submission. In so far as the applicant bases its claim on the lack of meaning of the earlier mark AC, it must be pointed out that there is no rule that the absence of any conceptual link between the mark and the goods or services covered by that mark automatically confers on that mark a high degree of inherent distinctiveness capable of providing it with broader protection (order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraph 71). It follows that the applicant’s argument must be rejected as unfounded.
108 As nothing in the case file appears to be capable of calling its assessment into question, the Board of Appeal was thus right in finding that the earlier mark AC had a normal degree of inherent distinctiveness.
109 Secondly, as regards the distinctive character acquired through use of the earlier mark AC, first of all, it must be stated that, by referring to the numerous examples of use of the mark AC HOTELS which are included in the evidence relating to the high degree of distinctiveness that was provided before the Board of Appeal, the applicant requests generally that the Court examine all the documents provided in the course of the administrative proceedings and the arguments in that regard.
110 However, it is not for the Court to place itself in the parties’ position and seek the relevant information in the annexes (judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 14 and the case-law cited).
111 In those circumstances, the argument referred to in paragraph 105 above, that, in essence, the use of the mark AC HOTELS is sufficient to confer enhanced distinctiveness through use on the earlier mark AC, must be rejected as being unsubstantiated, since it is merely supported by a general reference to evidence produced in the context of the administrative proceedings (see, to that effect, judgment of 11 September 2014, Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraph 19).
112 Next, it must be pointed out that, at the hearing, the applicant stated, for the first time, that, in the light of the judgment of 7 July 2005, Nestlé (C‑353/03, EU:C:2005:432), the Board of Appeal had erred in refusing to recognise that the earlier mark AC, which is used as part of the mark AC HOTELS, had enhanced distinctiveness through use.
113 In that regard, it must be stated that, even if the Board of Appeal had erred in not conferring enhanced distinctiveness through use on the earlier mark AC on the ground that it is part of the mark AC HOTELS, which itself, according to the applicant, has enhanced distinctiveness through use, that error would not be capable of calling into question the merits of the Board of Appeal’s finding relating to the lack of a likelihood of confusion in the present case.
114 Although the distinctive character of the earlier marks must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70).
115 In the present case, even if the earlier marks, including the earlier mark AC, have enhanced distinctiveness acquired through use and therefore enjoy broader protection, the fact remains that, in view of the low degree of visual and phonetic similarity between the signs at issue and, above all, their conceptual dissimilarity, which have been established in paragraphs 64, 76 and 84 above, the Board of Appeal was right in finding that there was no likelihood of confusion (see, to that effect, judgment of 8 October 2014, Laboratoires Polive v OHIM — Arbora & Ausonia (dodie), T‑122/13 and T‑123/13, not published, EU:T:2014:863, paragraph 63 and the case-law cited).
116 In the light of the foregoing, in the context of an overall assessment of the signs at issue, the elements which differentiate those signs visually, phonetically and conceptually, namely the predominance of the figurative element of the sign applied for, the structure of that sign and the logical unit formed by its word and figurative elements considered as a whole, are sufficient for it to be found that, when faced with the signs at issue, the relevant public will not make a connection between them, since those factors as a whole create a genuine dichotomy visually, phonetically and conceptually between the signs at issue. In those circumstances, despite the presumed identity of the services in question, consumers will not regard those services as coming from the undertaking which is the proprietor of the earlier marks or from an undertaking that is economically linked to that undertaking (see, to that effect, judgment of 18 December 2008, Torres v OHIM — Bodegas Peñalba López (Torre Albéniz), T‑287/06, EU:T:2008:602, paragraph 74).
117 That finding cannot be called into question by the judgment delivered by the Tribunal Superior de Justicia de Madrid (High Court of Justice, Madrid) on 9 July 2014, which is relied on by the applicant. First, the factual circumstances in question in the case which gave rise to the abovementioned judgment are not similar to those in the present case and, secondly, the likelihood of confusion must be assessed on the basis of the relevant EU legislation alone. Consequently, EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or indeed a third country. That is so even if such a decision was adopted under national legislation harmonised with EU law or in a country belonging to the language area in which the word mark in question originated (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47, and of 21 January 2009, giropay v OHIM (GIROPAY), T‑399/06, not published, EU:T:2009:11, paragraph 46).
118 In the light of all of the foregoing, the present action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the head of claim seeking the rejection of the registration of the sign applied for as an EU trade mark in respect of the services at issue.
Costs
119 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.
120 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber),
hereby:
1. Dismisses the action;
2. Orders Marriott Worldwide Corp. to pay the costs.
Kanninen | Schwarcz | Iliopoulos |
Delivered in open court in Luxembourg on 19 June 2019.
Table of contents
Background to the dispute
Forms of order sought
Law
Preliminary observations
The comparison of the signs
The distinctive and dominant elements of the signs at issue
– The distinctive and dominant elements of the sign applied for
– The distinctive and dominant elements of the earlier marks
The visual similarity
The phonetic similarity
The conceptual similarity
The global assessment of the likelihood of confusion
Costs