JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
13 March 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark K — Earlier Benelux figurative mark K — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑824/16,
Kiosked Oy Ab, established in Espoo (Finland), represented by L. Laaksonen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
De Vlaamse Radio- en Televisieomroeporganisatie (VRT), established in Brussels (Belgium), represented by P.-Y. Thoumsin and E. Van Melkebeke, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 September 2016 (Case R 279/2016-4), relating to opposition proceedings between VRT and Kiosked,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 21 November 2016,
having regard to the response of EUIPO lodged at the Court Registry on 16 February 2017,
having regard to the response of the intervener lodged at the Court Registry on 10 February 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 27 February 2012, the applicant, Kiosked Oy Ab, obtained international registration No 1112969 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO).
2 International registration No 1112969 designating the European Union was obtained in respect of the following figurative sign:
3 The goods and services in respect of which registration was obtained are in Classes 9, 35 and 42 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 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus’;
– Class 35: ‘Advertising; business management; business administration; office functions’;
– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’.
4 International registration No 1112969 designating the European Union was notified on 3 May 2012 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)). It was published in Community Trade Marks Bulletin No 2012/085 of 7 May 2012. On 7 February 2013, the intervener, De Vlaamse Radio- en Televisieomroeporganisatie (VRT), filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods and services covered by that mark.
5 The opposition was based on four earlier trade marks, including the figurative mark reproduced below, which was registered on 10 August 2010 with the Benelux Office for Intellectual Property (BOIP) under the number 882400:
6 The earlier Benelux trade mark No 882400 was registered for goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 43 and, inter alia, for the following goods and services:
– Class 9: ‘Photography, cinematographic, optical and signalling devices and instruments; apparatus for recording, transmission or reproduction of sound of images; magnetic data carriers; sound and image recording discs; videotapes, CDs, CDIs, CD-ROMs and DVDs; magnetic or coded club and membership cards; video-, audio- and computing devices; apparatus for games adapted for use with television receivers only’;
– Class 35: ‘Advertising; business management, business administration and office functions’;
– Class 41: ‘Education, instruction services, training and courses’;
– Class 42: ‘Computer programming; the design and web site development services, not all featuring moving statues; designs and development for software for multimedia applications’.
7 The three other earlier marks on which the opposition was based are the following:
– the figurative mark reproduced below, which was registered on 10 August 2010 with BOIP under the number 882402 in respect of goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 43:
– the figurative mark reproduced below, which was registered on 7 June 2006 with BOIP under the number 796522 in respect of goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 43:
– the figurative mark reproduced below, which was registered on 7 June 2006 with BOIP under the number 796523 in respect of goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 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). The opposition concerned all the goods and services covered by the mark applied for and was based on all the goods and services covered by the earlier marks.
9 By decision of 10 December 2015, on the basis of Article 8(1)(b) of Regulation No 207/2009, the Opposition Division partially upheld the opposition in respect, inter alia, of the following services:
– Class 35: ‘Advertising; business management, business administration; office functions’;
– Class 42: ‘Design and development of computer software’.
10 On 9 February 2016 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.
11 By decision of 19 September 2016 (the contested decision), the Board of Appeal of EUIPO dismissed the appeal as regards the services referred to in paragraph 9 above.
12 Taking into account, first, the lower than average degree of visual similarity between the marks, the impossibility of comparing them phonetically and the ‘neutral’ nature of the conceptual comparison and, secondly, having regard to the ‘normal’, or even ‘no more than average’, degree of inherent distinctiveness of the earlier Benelux trade mark No 882400, the Board of Appeal found, in essence, that there was, so far as concerns the services in Classes 35 and 42 which it had found to be identical, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation (EC) No 207/2009 between the mark applied for and that earlier Benelux trade mark.
13 Furthermore, the Board of Appeal took the view that there was also a likelihood of confusion as regards the goods in Class 9 covered by the mark applied for and by the earlier Benelux trade mark No 882400 which could be held to be identical.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision in so far as the Board of Appeal dismissed its appeal as regards the services ‘advertising; business management; business administration; office functions’ in Class 35 and the services ‘design and development of computer software’ in Class 42;
– allow the mark applied for to proceed to registration in respect of those services;
– order the intervener to pay all the costs incurred by the applicant in the opposition proceedings, including the costs of legal representation, in accordance with the breakdown of costs to be submitted by the applicant within the deadline referred to in Article 85 of Regulation No 207/2009 (now Article 109 of Regulation 2017/1001), and, should such a breakdown fail to be submitted, in accordance with the relevant legislation;
– order the intervener to pay the costs incurred by the applicant in the course of the present proceedings, in accordance with Article 85 of Regulation No 207/2009.
15 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
16 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay all the costs incurred by the intervener in the opposition proceedings and in the present proceedings, including the costs of legal representation, in accordance with the breakdown of costs to be submitted by the intervener within the deadline referred to in Article 85 of Regulation No 207/2009, and, should such a breakdown fail to be submitted, in accordance with the relevant legislation.
17 The second subparagraph of paragraph 37 of the intervener’s response reads as follows:
‘For these reasons, the action should be dismissed and the Intervener’s opposition upheld in its entirety. Furthermore, the Appellant should bear all costs incurred to the Intervener in the course of these proceedings in accordance with Article 85 of [Regulation No 207/2009].’
Law
The form of order sought by the intervener
18 The intervener has claimed that the action should be dismissed and that the applicant should be ordered to pay certain costs.
19 However, it is not immediately apparent whether the phrase ‘the Intervener’s opposition [should be] upheld in its entirety’, as referred to in paragraph 17 above, is to be regarded as being a head of claim. Even if that phrase were to be considered to be a head of claim, it would, in any event, be inadmissible.
20 That phrase would constitute a head of claim by which the intervener would be requesting that the Court uphold the intervener’s opposition as put forward initially before the Opposition Division or, at the very least, reinstate the decision of the Opposition Division. As is apparent from the case-law, inasmuch as it seeks the annulment of the contested decision on a matter which is not raised in the application, such a head of claim must be regarded as a cross-claim (see, to that effect, judgment of 6 October 2017, NRJ Group v EUIPO — Sky International (SKY ENERGY), T‑184/16, not published, EU:T:2017:703, paragraph 31).
21 In that regard, it must be borne in mind that it is apparent from Article 182(1) and (2) of the Rules of Procedure of the General Court that a cross-claim must be submitted within the same time limit as that prescribed for the submission of a response and that it must be submitted by a document separate from the response. Even if that phrase constituted a head of claim, it would not have been put forward by a separate document and would not therefore satisfy the requirements laid down in Article 182(1) and (2) of the Rules of Procedure. Consequently, such a head of claim would have to be rejected as inadmissible (see, to that effect, judgment of 6 October 2017, SKY ENERGY, T‑184/16, not published, EU:T:2017:703, paragraph 32).
The subject matter of the proceedings
22 On account of the different operative parts of the decisions of the Opposition Division, on the one hand, and the Board of Appeal, on the other hand, and given that the intervener refers in its response to all the goods and services on which the opposition was based, whereas the applicant refers, in the form of order which it seeks, only to some of the services covered by the mark applied for, it is necessary to specify at the outset which goods and services are covered by the present proceedings.
23 As is clear from the applicant’s first head of claim and from the information which it has provided in the application, it is requesting the annulment of the contested decision only with regard to the following services:
– Class 35: ‘Advertising; business management; business administration; office functions’;
– Class 42: ‘Design and development of computer software’.
24 In the light of the restriction made in the form of order sought by the applicant, the applicant’s single plea in law can be examined only with regard to the services referred to in paragraph 23 above.
25 By contrast, owing to the inadmissibility of any cross-claim which the intervener may be making (see paragraphs 18 to 21 above), the intervener’s arguments regarding goods and services other than those referred to in paragraph 23 above, which goods and services are not covered by the action in the present case, do not fall to be examined.
The single plea in law put forward by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
26 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 inasmuch as it erroneously found that there was a likelihood of confusion between the mark applied for and the earlier Benelux trade mark No 882400 as regards the services at issue. In particular, it calls into question the Board of Appeal’s assessments relating to the composition and level of attention of the relevant public, the degree of visual similarity between the marks and the inherent distinctiveness of the earlier Benelux trade mark No 882400. The applicant therefore, in essence, takes the view that there is no likelihood of confusion between the marks at issue as regards the services in question.
27 The intervener submits, in essence, that the Board of Appeal should have found that there was a likelihood of confusion between the signs at issue with regard to all the services covered by the mark applied for. It maintains that the services at issue are aimed at the general public, which has an average level of attention, and that the marks at issue are identical or, at least, highly similar. Furthermore, it submits that the distinctiveness of the earlier Benelux trade mark No 882400 is average.
28 EUIPO takes the view, in essence, that the Board of Appeal was right in finding that there was a likelihood of confusion.
29 As a preliminary point, it must be noted that, under Article 151(1) of Regulation No 207/2009 (now Article 189(1) of Regulation 2017/1001), an international registration designating the European Union is, from the date of its registration pursuant to Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), to have the same effect as an application for an EU trade mark. Article 156(1) of Regulation No 207/2009 (now Article 196(1) of Regulation 2017/1001) provides that international registrations designating the European Union are to be subject to opposition in the same way as published EU trade mark applications.
30 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, 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.
31 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).
32 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).
The relevant public and its level of attention
33 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
34 It may be deduced, in essence, from paragraph 15 of the contested decision that, according to the Board of Appeal, having regard to the fact that the earlier Benelux trade mark No 882400 is a trade mark which was registered by BOIP in Benelux, the relevant territory with regard to which the likelihood of confusion in the present case must be assessed is that of Belgium, Luxembourg and the Netherlands. Since that assessment is not flawed, it must be upheld.
35 As regards the relevant public, the Board of Appeal found in paragraph 44 of the contested decision that ‘[p]art of the conflicting goods and services address[ed] the public at large and another part the professional public’.
36 The applicant submits that the services at issue are aimed at professionals. It takes the view that that is in particular true of the advertising services as those services are meant for advertising a product or another service. It maintains that no consumer would have a need for advertising services.
37 As has already been pointed out in paragraph 27 above, the intervener takes the view that the services at issue are aimed at the general public.
38 According to the case-law, the relevant public consists of persons likely to use both the services covered by the earlier mark and those covered by the mark applied for (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 In that regard, it must be pointed out that the services at issue are used by a large number of professionals and not by the general public, a point which EUIPO itself, moreover, concedes in its response. That is true, in particular, of the ‘advertising’ services in Class 35, which have been referred to by the applicant (see paragraph 36 above).
40 In paragraph 44 of the contested decision, the Board of Appeal also pointed out the level of attention of the relevant public varied from average to high.
41 The applicant submits that, in the present case, the level of attention of the relevant public, which consists of professionals, is high.
42 In the intervener’s opinion, the level of attention should be held to be average.
43 In the present case, in the light of the fact that, as has been pointed out in paragraph 39 above, the relevant public is, as far as the services at issue are concerned, made up of professionals, a high level of attention must be taken into account.
The comparison of the services
44 The Board of Appeal, in paragraph 39 of the contested decision, endorsed the Opposition Division’s finding that the services referred to in paragraph 23 above were identical to some of the services covered by the earlier marks.
45 The applicant submits, in essence, that the mark applied for and the earlier Benelux trade mark No 882400 cover goods or services which are similar to some extent, but that the latter mark does not cover all the goods or services covered by the mark applied for. It takes the view that the ‘services in question’ should therefore be ‘considered to be similar’.
46 The intervener is of the opinion that most of the services covered by the earlier marks are identical or, at least, highly similar to those covered by the mark applied for.
47 In that regard, it must be stated that the services in Class 35 relied on by the applicant in support of the plea in law put forward are in the list of services covered by the mark applied for as well as in the list of services covered by the earlier Benelux trade mark No 882400. The wording of the descriptions of those services is identical.
48 As regards the services in Class 42, it must be stated that the services relating to the ‘design and development of software’ covered by the mark applied for are included in the broader category of the services relating to ‘computer programming’ covered by the earlier Benelux trade mark No 882400. Consequently, it must be held that those services in Class 42 are identical.
49 In those circumstances, the assessment of the Board of Appeal, which found that the services covered by the mark applied for and the services covered by the earlier Benelux trade mark No 882400 were identical (see paragraph 44 above), must be upheld.
The comparison of the signs
50 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
– The visual similarity
51 The Board of Appeal compared the mark applied for with the earlier Benelux trade mark No 882400 from a visual standpoint.
52 In that regard, the Board of Appeal found in paragraph 20 of the contested decision that the signs at issue, which were both, in its view, ‘purely figurative’ marks (see paragraphs 18, 19 and 21 of the contested decision) were similar to a lower than average degree. It found, in particular, that those signs had in common a white figurative element on a black background and that each consisted of a differently shaped vertical part with a differently shaped element on the right-hand side, an element which was connected to the vertical element in the mark applied for and had an independent position in the earlier Benelux trade mark No 882400.
53 In the alternative, the Board of Appeal found, in paragraph 23 of the contested decision, that the relevant public might, after careful consideration and with a little imagination, recognise, in both marks, a shape which might resemble the capital letter ‘K’.
54 The applicant submits that there is no visual similarity between the mark applied for and the earlier Benelux trade mark No 882400, but admits that the graphic representation of those signs refers to the capital letter ‘K’.
55 The intervener submits, on the basis of the premiss that the signs at issue consist of a capital letter ‘K’ represented in black and white, that the mark applied for and the earlier Benelux trade mark No 882400 must be considered to be identical from a visual perspective. In any event, it maintains that, if the differences between those marks could not be found to be ‘insignificant’ differences, then it should at least be held that those marks are highly similar.
56 In response to those arguments, it must be stated that, according to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 41).
57 In contrast to the concept of similarity, the concept of identity implies, in principle, that the two elements compared should be the same in all respects. However, since, first, the perception of identity must be assessed with regard to an average, reasonably well informed and reasonably observant and circumspect consumer and, secondly, the perception of identity is not the result of a direct comparison of all the characteristics of the elements compared, insignificant differences which may go unnoticed by an average consumer do not mean that the signs under comparison are not identical. Consequently, according to the case-law, a sign is identical to a trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer (see, by analogy and to that effect, judgment of 20 March 2003, LTJ Diffusion, C‑291/00, EU:C:2003:169, paragraphs 50 to 54).
58 In the present case, the mark applied for consists of an element which may be perceived as a white capital letter ‘K’ written in bold, with ends which are, in part, rounded. That letter is placed in the centre of a larger black rectangular figurative element, the two upper corners and the lower right-hand corner of which are also rounded. The earlier Benelux trade mark No 882400 may be perceived as a white capital letter ‘K’ in which all the constituent lines, namely the vertical line and the convergent diagonal lines placed at the right-hand side of the vertical line, are rounded. That letter is placed on a black background which follows the outline of the letter, without, however, forming a geometric shape which is capable of being described precisely.
59 It is true that, inasmuch as they may be perceived as the capital letter ‘K’, the two signs at issue contain an identical element. Furthermore, those signs are in the same colours, white and black. However, the graphic representation of the capital letter ‘K’ in the two marks is not the same. In the mark applied for, the vertical line and the two diagonal lines that open towards the right, which are characteristics of the capital letter ‘K’, are closely linked. In the earlier Benelux trade mark No 882400, the vertical line constituting the left-hand part of the capital letter ‘K’ is slightly set apart from the diagonal lines on the right-hand side of that letter. The rounded shapes of the lines making up the capital letter ‘K’ differ. The ends of the capital letter ‘K’, as represented in the mark applied for, are partially rounded, whereas those of the capital letter ‘K’ in the earlier Benelux trade mark No 882400 are totally rounded. As is apparent from the findings set out in paragraph 58 above, the shape of the black background in the two marks also differs. The background in the mark applied for somewhat resembles a speech bubble with a capital letter ‘K’ in the centre, whereas the background in the earlier Benelux trade mark No 882400 does not have a specific geometric form.
60 Those differences are not so insignificant that they could go unnoticed by professionals, who have a high level of attention.
61 Accordingly, in view of the overall impression created by the mark applied for and the earlier Benelux trade mark No 882400, those two marks cannot be held to be identical.
62 In the light of the foregoing, it also cannot be held, contrary to what the Board of Appeal stated in paragraphs 20 and 23 of the contested decision, that the degree of visual similarity is lower than average. In actual fact, the degree of visual similarity must be held to be at least average.
– The phonetic similarity
63 In paragraph 21 of the contested decision, the Board of Appeal stated that a phonetic comparison between the mark applied for and the earlier Benelux trade mark No 882400 was not possible. In that regard, the Board of Appeal took as its starting point the premiss that those marks were purely figurative. The applicant submits that those marks can both be pronounced as the letter ‘k’. The intervener takes the view that those marks are identical from a phonetic point of view.
64 In the present case, it must be pointed out that, since the relevant public may be led to recognise a letter ‘k’ in the mark applied for and in the earlier Benelux trade mark No 882400, those two marks are likely to be pronounced in the same way. Consequently, it must be held that, contrary to what the Board of Appeal pointed out in that regard, the marks at issue are phonetically identical.
– The conceptual similarity
65 The Board of Appeal found in paragraph 22 of the contested decision that neither the mark applied for nor the earlier Benelux trade mark No 882400 conveyed a concept. It therefore concluded that the conceptual comparison between those two marks was ‘neutral’. The applicant takes the view that those marks do not have any conceptual meaning. The intervener submits that the reference to the letter ‘k’ makes those signs identical from a conceptual perspective.
66 As regards the conceptual comparison of two marks which consist of the same single letter, it must be stated that the graphic representation of a letter is likely to evoke a very distinct entity in the mind of the relevant public, namely a particular phoneme. In that sense, a letter refers to a concept.
67 It follows that there may be conceptual identity between signs where those signs refer to the same letter of the alphabet (see, to that effect, judgments of 10 May 2011, Emram v OHIM — Guccio Gucci (G), T‑187/10, not published, EU:T:2011:202, paragraphs 60 and 61; of 10 November 2011, Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraph 99; and of 8 May 2012, Mizuno v OHIM — Golfino (G), T‑101/11, not published, EU:T:2012:223, paragraph 56).
68 In the present case, since the letter ‘k’ is present in both the mark applied for and the earlier Benelux trade mark No 882400, it must be held that the signs are conceptually identical.
The global assessment of the likelihood of confusion
69 It must be borne in mind that 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 (judgment of 28 September 2016, The Art Company B & S v EUIPO — G‑Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 37).
70 It is apparent from the findings set out above that the overall impression created by the mark applied for, on the one hand, and by the earlier Benelux trade mark No 882400, on the other hand, is that of two marks which are visually similar to an average degree (see paragraph 62 above), but are phonetically and conceptually identical (see paragraphs 64 and 68 above).
71 In view of those factors and since the services at issue are identical (see paragraphs 47 and 48 above), it must be held that there is a likelihood of confusion between the two marks at issue on the part of the relevant public, namely professionals, notwithstanding the high level of attention which those professionals display.
72 In that regard, it must be pointed out that it is true that the level of attention of the relevant public is an element which has to be taken into consideration in assessing whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. However, it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion and therefore any possibility of applying that provision can, a priori, be ruled out (judgment of 21 November 2013, Equinix (Germany) v OHIM — Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraphs 52 and 53).
73 It must also be stated that what is concerned is the level of attention which the relevant public will display when examining the commercial origin of the goods or services at issue. The fact that the public in question will pay more attention to the identity of the producer or provider of the goods or services which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the members of the relevant public only rarely have the chance to compare the various marks directly and must therefore rely on their imperfect recollection of them (see, to that effect, judgment of 21 November 2013, ancotel., T‑443/12, not published, EU:T:2013:605, paragraph 54 and the case-law cited).
74 In the present case, it is only from a visual standpoint that the mark applied for and the earlier Benelux trade mark No 882400 are not identical. There are differences between the figurative elements in those marks. It cannot, however, be ruled out that a significant number of members of the relevant public will have only an imperfect recollection of the earlier mark. In those circumstances, it is possible, in the light of the fact that the signs are phonetically and conceptually identical, that, faced with the image of the mark applied for, the relevant public will perceive that mark as an updated and modernised version of the earlier mark, rather than as a separate trade mark with a different commercial origin. It follows that the visual differences between the figurative elements of the two marks at issue are not sufficient to rule out a likelihood of confusion.
75 The finding in paragraph 71 above is not called into question by the applicant’s other arguments.
76 The applicant submits that the earlier Benelux trade mark No 882400 has only a low degree of inherent distinctiveness and should therefore enjoy a very limited scope of protection. It takes the view that that is the case because that mark consists of a very ordinary and common sign, namely a capital letter ‘K’ or a form that could be regarded as a capital letter ‘K’ surrounded merely by a black outline. It maintains that, as a general rule, a single letter of the alphabet is an inherently weakly distinctive element of a sign since it will neither attract the attention of consumers nor can it be considered to be imaginative. The applicant submits that, according to the case-law, trade marks consisting of one letter must be regarded as having a weak distinctive character which cannot be increased by the fact that that letter does not usually have a meaning within a certain sector. It takes the view that the very unimaginative design of the earlier mark cannot increase the distinctiveness of that mark. Furthermore, it submits that the use of black outlines for letters is fairly common in figurative marks.
77 In paragraph 45 of the contested decision, the Board of Appeal found that, since the earlier Benelux trade mark No 882400 did not have any meaning as regards the services in Classes 35 and 42 which are covered by the present proceedings, the inherent distinctiveness of that mark was ‘normal’. It is apparent, in essence, from paragraph 47 of the contested decision that, in the view of the Board of Appeal, the word ‘normal’ is, in that context, equivalent to the words ‘no more than average’.
78 According to the intervener, it should be held that the inherent distinctiveness of the earlier Benelux trade mark No 882400 is average.
79 The distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion (judgment of 28 September 2016, THE ART OF RAW, T‑593/15, not published, EU:T:2016:572, paragraph 39). However, even if the degree of inherent distinctive character of an earlier mark were lower than average, such a weak distinctive character would not, in itself, preclude a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45).
80 Furthermore, it must be borne in mind that according to the case-law, for the purposes of assessing the distinctive character of a trade mark or of a constituent element of a mark, it is necessary to examine the greater or lesser ability of that trade mark or that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the trade mark or element in question with regard to whether they are at all descriptive of the goods or services for which the mark has been registered (see, to that effect, judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).
81 In that regard, it is sufficient, in the present case, to point out the following, without it being necessary to rule on whether, and in which circumstances, a letter of the alphabet must generally be regarded as having inherent distinctiveness.
82 The rounded ends of the white lines in the capital letter ‘K’ are elements which cannot be considered to be banal or ordinary. In addition, the white vertical line and the element resembling a chevron are separate. As a general rule, that is not the case in an ordinary graphic representation of the capital letter ‘K’. Furthermore, even if it is conceded that the use of black outlines for letters is fairly common in figurative marks, the shape of the black background used in the earlier Benelux trade mark No 882400 must be borne in mind. In that regard, it must be pointed out that it is not a common geometric element, but an unusual graphic representation. Lastly, as the intervener submits regarding the visual similarity of the signs, the impression created by the earlier Benelux trade mark No 882400 is dynamic and playful. Those factors support the view that that mark has an average degree of inherent distinctiveness.
83 In those circumstances, the Board of Appeal’s assessment in paragraphs 45 and 47 of the contested decision as regards the distinctiveness of the earlier Benelux trade mark No 882400 (see paragraph 77 above) appears to be well founded, whereas all of the applicant’s arguments referred to in paragraph 76 above must be rejected.
84 In any event, 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 and services covered (judgments of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70).
85 In conclusion, it is apparent from all of the foregoing considerations that the single plea in law put forward by the applicant in support of its action must be rejected as unfounded and that its action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility of the second head of claim requesting that the Court allow the mark applied for to proceed to registration in respect of the services referred to in paragraph 23 above.
Costs
86 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
87 In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings.
88 Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay the costs incurred by EUIPO and the intervener in the present proceedings, in accordance with the forms of order sought by those parties.
89 Furthermore, the intervener has claimed that the applicant should be ordered to pay the costs that the intervener incurred in the opposition proceedings before EUIPO.
90 In that regard, it is sufficient to point out that, since the present judgment is dismissing the action brought against the contested decision, it is point 3 of the operative part of that decision which continues to determine the costs incurred in the opposition proceedings.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Kiosked Oy Ab to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by De Vlaamse Radio- en Televisieomroeporganisatie (VRT).
Delivered in open court in Luxembourg on 13 March 2018.