JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
15 November 2018 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Leshare — Earlier international word mark LEXWARE — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Similarity of the signs)
In Case T‑546/17,
Haufe-Lexware GmbH & Co. Kg, established in Freiburg im Breisgau (Germany), represented by N. Hebeis, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Le Shi Holdings (Beijing) Ltd, established in Beijing (China),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 15 June 2017 (Case R 1691/2016-4) relating to opposition proceedings between Haufe-Lexware and Le Shi Holdings (Beijing),
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 11 August 2017,
having regard to the response lodged at the Court Registry on 7 November 2017,
having regard to the decision of 9 February 2018 authorising the placing on the file of the applicant’s letter of 23 January 2018,
further to the hearing on 11 July 2018,
gives the following
Judgment
Background to the dispute
1 On 27 March 2015, the company Le Shi Holdings (Beijing) Ltd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a trade mark was sought for the word sign Leshare.
3 The goods in respect of which registration was sought are in, inter alia, Classes 9 and 35 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: ‘Computer software [recorded]; Electronic publications [downloadable]; Computer operating programs, recorded’;
– Class 35: ‘Rental of Advertising space; On-line advertising on a computer network; Rental of advertising time on communication media; Production of advertising films; Advertising and marketing services, namely, promoting the goods and services of others; Systematisation of information into Computer databases.’
4 The EU trade mark application was published in the European Union Trade Marks Bulletin No 100/2015 of 2 June 2015.
5 On 25 June 2015, the applicant, Haufe-Lexware GmbH & Co. KG, filed a notice of opposition to registration of the trade mark applied for in respect of some of the goods and services concerned, namely those in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).
6 The opposition was based on the international registration designating the European Union No 1141375 for the word mark LEXWARE, registered on 8 June 2012 and invoked for some of the goods in Classes 9 and 35, corresponding, for each of those classes, to the following description:
– Class 9: ‘Electronic publications; software; database software; data storage media; hardware; computer networks, namely networks of several independent systems consisting of computers, servers, routers, printers and/or database software for the purpose of data communications’.
– Class 35: ‘Advertising; rental of advertising space on the Internet; IT and EDP outsourcing services; data collection, data systemizing, data management; collection, systemizing, updating and maintenance of data in databases and searchable online databases’.
7 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).
8 By decision of 1 August 2016, the Opposition Division rejected the opposition in its entirety. It considered that, despite the identical nature of the goods and services in question, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, given that the differences between the signs at issue were sufficient to outweigh their similarities in the perception of the relevant public.
9 On 22 August 2016, the applicant filed an appeal against that decision.
10 By decision of 15 June 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It found, in essence, that, despite the identity of the goods and services at issue and the visual and phonetic similarities between the signs at issue, the differences, in particular on a conceptual level, were sufficient to rule out a likelihood of confusion on the part of the relevant public, as referred to in Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. This plea is divided into three limbs, by which the applicant contests the assessment of the relevant public’s level of attention, the assessment of the similarity of the signs at issue and, finally, the global assessment of the likelihood of confusion carried out by the Board of Appeal.
Preliminary observations
14 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trademarks, 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.
15 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).
16 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).
17 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
The relevant public and its level of attention
18 With regard to the relevant public and its level of attention, the Board of Appeal found, on the one hand, in paragraphs 7 and 8 of the contested decision, that since the opposition was based on an earlier international registration designating the European Union, the relevant territory for the purposes of analysing the likelihood of confusion consisted of all the Member States of the European Union. On the other hand, it found that the goods and services at issue were aimed at the general public and professionals with specific professional knowledge or expertise in the field of information technology (‘IT’). According to the Board of Appeal, the level of attention of that public varies from average to high.
19 The applicant disputes that finding and submits that some of the goods concerned, namely computer hardware and software, in Class 9, are everyday consumer goods distributed at affordable prices. According to the case-law, those goods are purchased by average consumers whose level of attention is, at most, average.
20 EUIPO disputes the applicant’s argument.
21 In that regard, it must be recalled at the outset that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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).
22 The applicant’s argument is not such as to establish that the Board of Appeal made an error of assessment as regards the level of attention of the relevant public.
23 First, it should be observed that, even assuming that the level of attention of the relevant public at whom the goods in Class 9 are directed is average, it cannot be ruled out, and the applicant does not contest this, that the services concerned in Class 35, such as the rental of advertising space, the rental of advertising time on communication media, or advertising film production, are directed at professionals and that the latter demonstrate a higher level of attention than average.
24 Secondly, the applicant’s argument derived from the judgment of 17 February 2017, Construlink v EUIPO — Wit-Software (GATEWIT) (T‑351/14, not published, EU:T:2017:101) is based on a misreading of that judgment.
25 In paragraph 52 of the judgment of 17 February 2017, Construlink v EUIPO — Wit-Software (GATEWIT) (T‑351/14, not published, EU:T:2017:101), the Court held that within the European Union, computer hardware (computers, tablets, smartphones, and so on) and computer products (software and so on) correspond, for the most part, to standardised goods that are easy to use, are not highly technical, and are widely distributed in all types of stores at affordable prices and that, to that extent, they are everyday consumer goods intended for the general public.
26 As EUIPO correctly points out, the Court’s conclusion that computer hardware and computer products are everyday consumer goods intended for the general public does not apply in respect of all computer hardware and computer products but only in respect of those which are standardised, easy to use, not highly technical, and which are widely distributed in all types of stores at affordable prices. The concepts of computer hardware and computer products are, however, wider and may extend to components and equipment of computers which are directed at professionals (motherboards, computer servers, processors) or elaborate software for specific occupational groups.
27 Thus, contrary to what the applicant claims, it cannot be inferred from the judgment of 17 February 2017, GATEWIT (T‑351/14, not published, EU:T:2017:101), that computer hardware and software will in all cases be everyday consumer goods and that the level of attention of the average consumer of such products and services will always be average.
28 Nevertheless, according to the case-law, where the goods and services are directed at a public whose level of attention is varied, the global assessment of the likelihood of confusion must be carried out having regard to the average consumer who has the lowest level of attention (judgment of 17 February 2017, GATEWIT, T‑351/14, not published, EU:T:2017:101, paragraph 47; see also, to that effect, judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraphs 18 to 21 and the case-law cited).
29 Therefore, when the merits of the global assessment of the likelihood of confusion carried out by the Board of Appeal are examined below, account will be taken of the relevant public whose level of attention is average.
30 Furthermore, it should be noted that the goods and services covered by the signs at issue fall within the area of electronics and information technology and that, according to the case-law, in these areas the use of English is very common (judgment of 20 May 2009, CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 35). Accordingly, the relevant public to be taken into account in the global assessment of the likelihood of confusion is, principally, the English-speaking public and the public with a basic knowledge of English.
31 Without prejudging the outcome of that examination, it must be concluded that the Board of Appeal correctly defined the level of attention of the relevant public as varying from average to high.
32 Consequently, the first limb of the present plea must be rejected.
Comparison of the signs at issue
33 As regards the comparison of the signs at issue, first, the Board of Appeal found, in paragraph 13 of the contested decision, that there was a degree of visual similarity which was, at most, average. It pointed out in this regard that the signs began and ended with the same groups of letters — ‘le’ and ‘are’ –– and that they differed so far as the middle letters were concerned. It considered that that difference was perceptible by the relevant public since the signs were relatively short and it was likely that it was precisely the two letters in the middle which would enable the relevant public to perceive that the signs were composed of two different elements.
34 Secondly, in paragraph 14 of the contested decision, the Board of Appeal considered that the degree of phonetic similarity of the signs at issue was also, at most, average. In that regard, it stated that it was extremely likely that the relevant public, including that in Germany, would pronounce the sign applied for and the earlier sign as a combination of two word elements, that is to say, respectively, ‘le share’ and ‘lex ware’.
35 Thirdly, in paragraph 17 of the contested decision, the Board of Appeal concluded that the signs at issue were conceptually dissimilar. It pointed out in that regard, first, that it will be immediately obvious, at least for the relevant English-speaking public, that the sign applied for contains the element ‘share’, understood as a verb meaning ‘use or enjoy with others’ or as a noun meaning ‘one’s own part of a larger property’, preceded by the letters ‘le’, commonly known as the definite article in French. Second, the word ‘ware’, meaning ‘product’, as in the words ‘software’, ‘hardware’ or ‘freeware’, will immediately be grasped, at least by the relevant English-speaking public, irrespective of whether the word ‘lex’ is understood by the relevant public as meaning ‘law’. According to the Board of Appeal, the relevant public will be all the more likely to understand the meaning of the word elements making up the signs at issue in view of the fact that the goods and services in question are closely connected with computing and information technology. Consequently, the meaning of those word elements will, according to the Board of Appeal, be immediately obvious for the vast majority — if not all — of the relevant public in the European Union, irrespective of whether the overall conceptual meanings of ‘lexware’ or ‘leshare’ may not exist or may not be clear to the public.
36 The applicant disputes all of those conclusions and submits, first, that the overall visual similarity of the signs at issue is high, since those signs share the same initial and final letters, whereas the difference between the middle letters is of only minor importance for the overall visual similarity, since those letters are hidden in the middle of the signs at issue.
37 Secondly, the applicant considers that the phonetic similarity of the signs at issue is high. The applicant states that those signs are composed of the same number of syllables, whether they are pronounced in English or in German. The applicant also submits that the vowel sequence and the beginnings and endings of the signs are identical, whilst the phonetic difference is hidden in the middle of the words. According to the applicant, the differing pairs of consonants ‘xw’ and ‘sh’ also share phonetic similarities due to the similar sounds that they create.
38 Thirdly, the applicant submits that the Board of Appeal erred in finding that the signs at issue were conceptually different. The applicant first of all maintains that the signs LEXWARE and Leshare do not convey any clear conceptual meaning, so that a conceptual comparison between them is not possible. A conceptual difference could only arise from the differences between the word elements making up the signs at issue (‘le’, ‘share’, and ‘ware’). Such a dissection of the signs into different elements is nevertheless possible only as an exception to the rule that the average consumer perceives a trade mark as a whole. The applicant adds that the relevant public will break a unitary sign down into various elements only where the word contained in the sign and its meaning are immediately apparent and, in cases where the sign is not expressed in the relevant public’s mother tongue, where it may be translated intuitively and without effort.
39 Next, the applicant submits that the assumption that the average EU consumer will immediately break the contested sign up into the elements ‘le’ and ‘share’ is manifestly incorrect, even taking into account consumers with a good command of French and English. For the non-English-speaking public, the term ‘leshare’ is a purely fictitious notion, without any conceptual meaning. Furthermore, the fact that the relevant public can understand basic IT terms is of no importance, since the word ‘share’ is not a basic IT term and has several meanings. Even if it could be understood, that word is concealed in the mark Leshare, and there is no visual element or special character, such as a hyphen, that would break the mark up visually.
40 Finally, the applicant submits that it is inconceivable that average consumers would recognise, immediately and without further thought, the term ‘ware’ in the sign LEXWARE, since that term has no particular meaning in the field of information technology and is hidden in the second part of the sign.
41 Moreover, in a letter dated 23 January 2018, the applicant invokes the judgment of 7 November 2017, Mundipharma v EUIPO (T‑144/16, not published, EU:T:2017:783), and argues that the application in the present case of the principles which the Court applied in that judgment should lead to the conclusion, first, that the visual and phonetic similarity of the signs at issue is high and, secondly, that it is not possible to compare the signs conceptually and that the hidden meanings do not affect the visual and phonetic similarity of the signs, because they are not sufficiently obvious to offset the high degree of visual and phonetic similarity.
42 EUIPO, asked at the hearing to respond specifically to the applicant’s arguments based on the judgment of 7 November 2017, MULTIPHARMA (T‑144/16, not published, EU:T:2017:783), disputes the applicant’s arguments.
43 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 23 October 2002, Matratzen Condord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30).
44 The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the 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).
45 Nevertheless, 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 identify the elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57; and of 19 September 2012, TeamBank v OHIM — Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444).
46 The applicant’s arguments must be examined in the light of those principles established in the case-law.
47 In the first place, as regards visual similarity, it is true that the case-law has recognised that the initial part of word marks may be more likely to attract the attention of the consumer than the following parts (judgment of 13 May 2015, Harper Hygienics v OHIM — Clinique Laboratories (CLEANIC Kindii), T‑364/12, not published, EU:T:2015:277, paragraph 54 and the case-law cited; see, to that effect, judgment of 11 May 2010, Werke Wührmann v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 46 and the case-law cited). However, the fact remains that, in accordance with the case-law cited in paragraphs 43 and 45 above, the assessment of the similarity of the marks must be based on the overall impression produced by the marks and that, in certain cases, the average consumer may perceive a word sign as consisting of distinct word elements which have a concrete meaning for him.
48 This is the case here. As EUIPO correctly observes, it is likely that the relevant public will immediately split the mark applied for into the familiar elements ‘le’ and ‘share’, whereas the earlier mark will be intuitively divided into ‘lex’ and ‘ware’. This visual splitting up will lessen the effect of the coincidence between both the first and the last letters of the signs at issue.
49 In that regard, it should be noted that the signs at issue are all the more likely to be broken up because the goods and services in question are in the field of information technology and information services in which the use of English is very common (see paragraph 30 above). For the relevant public that is English speaking or has even a basic knowledge of English, the elements resulting from breaking down the signs at issue, in particular the terms ‘ware’ and ‘share’ will have only an average, or even low, degree of visual similarity.
50 Next, the signs at issue are relatively short, which highlights the middle letters. Contrary to what the applicant claims, the importance of these letters for the overall visual similarity is not negligible. Indeed, as the Board of Appeal correctly pointed out, it is precisely those letters which will enable the relevant public to perceive that the signs at issue are made up of two different elements.
51 Finally, the applicant’s argument based on the judgment of 7 November 2017, ‘MULTIPHARMA’ (T‑144/16, not published, EU:T:2017:783), must be rejected. In that judgment, the Court compared two word signs, ‘multipharma’ and ‘mundipharma’, and concluded, in paragraphs 42 and 43, that the visual differences which existed between them, because of the presence of the letter sequences ‘lt’ and ‘nd’ were not sufficient to counteract the high degree of visual similarity which derived from the word elements common to those signs, in particular from the word ‘pharma’, which, according to the Court, could not be overlooked, despite the fact that it is descriptive of the goods covered by those signs.
52 In the present case, the word elements common to the signs at issue cannot be grouped in a word which is common to those signs and which has its own meaning closely linked to the goods in question, as is the case with the word ‘pharma’ and the signs ‘multipharma’ and ‘mundipharma’. On the contrary, as noted in paragraphs 48 and 49 above, the signs at issue can be broken up into, first, ‘le’ and ‘lex’ and, second, ‘share’ and ‘ware’, whose similarity is average, or even low, taking into account the perception which the relevant English-speaking public, or one with a basic knowledge of English, will have of those signs. Therefore, contrary to what the applicant claims, there is no analogy between the situation examined in the judgment of 7 November 2017, ‘MULTIPHARMA’ (T‑144/16, not published, EU:T:2017:783), and the present case.
53 In the light of the foregoing, it must be held that the Board of Appeal correctly concluded that the signs at issue had a degree of visual similarity which is, at most, average.
54 In the second place, with regard to phonetic similarity, it must be held that, despite some similarity between the signs at issue resulting from the same number of syllables and the identity of their beginnings and endings, the difference between the middle letters ‘xw’ and ‘sh’ is readily perceptible when the signs at issue are spoken.
55 In addition, the signs at issue are shorter than the signs compared in the judgment of 7 November 2017, MULTIPHARMA (T‑144/16, not published, EU:T:2017:783), and they do not contain a common element comparable to the word ‘pharma’. Thus, contrary to what the applicant claims, there is no analogy between the situation examined in that judgment and the present case.
56 It follows from the foregoing that the Board of Appeal correctly concluded that the signs at issue showed a degree of phonetic similarity that is at most average.
57 In the third place, with regard to conceptual similarity, it should first be stated –– concerning the exceptional nature of the possibility of breaking the signs at issue down for the purpose of comparing them and assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 –– that it follows from paragraphs 48 and 49 above, that in the present case such a breaking down is permissible, particularly in view of the widespread use of the English language in the computer and information technology fields.
58 Next, it should be observed that although the English word ‘ware’ has a general meaning which may be understood as ‘product’, ‘material’ or ‘article’, it is rarely used as it stands and, in general, forms part of compound words. This is especially the case in the computer and information technology fields, in which it is used, in particular, in two common expressions, namely, (i) ‘hardware’, which describes the physical components of computing devices, such as processors, motherboards or other devices forming part of a computer as well as peripheral devices, such as printers or screens, and (ii) ‘software’, which describes computer programmes and operating systems in general. In that context, it must be noted that the word ‘ware’ is commonly used with various prefixes which refer to the nature or type of software, such as ‘freeware’ to describe software distributed free of charge, ‘shareware’ to describe a type of software that can be distributed free of charge but requires a fee after a period of use, ‘malware’ to describe a computer virus, and ‘adware’ to describe software that runs due to the advertisements which are displayed during its use. This terminology, based on the flexibility of the English language, is especially well known because that language and the expressions that derive from it are commonly used in the computer and information technology fields (see paragraph 30 above).
59 It follows that the sign LEXWARE, when used to describe the goods and services at issue, will have a meaning that is immediately apparent to the relevant public, in particular the English-speaking public or the public that has a basic knowledge of English, although that sign is to a certain extent descriptive of those goods and services. In addition, the presence of a prefix before the word ‘ware’ will be perceived as natural, or even intentional, although the relevant public may not understand the precise meaning of the word ‘lex’.
60 Therefore, the Board of Appeal was correct in holding that the meaning of the word ‘ware’ will be immediately apparent, at the very least to the English-speaking relevant public which, owing to the common use of English in the computer field, forms the majority of the relevant public of the European Union for the goods and services at issue. The meaning of this word will be immediately apparent despite the fact that, in the present case, it is connected to another word and irrespective of whether the public recognises the meaning of that other word and connects it conceptually with legal terminology.
61 As regards the sign Leshare, the Court notes that it does not have a specific meaning and that it is composed of two terms, the joining together of which is neither natural, nor usual, given that they come from different languages, namely English and French. Furthermore, although the term ‘share’ may be encountered in the computer and information technology field (see paragraph 58 above), the fact remains that, unlike ‘ware’, it has no significant specific meaning in this field and, as the applicant has rightly stated, it is often translated into the languages of the users of IT products and services. The applicant is therefore correct in criticising the Board of Appeal for having found that the words ‘le’ and ‘share’, where they are taken separately, could have a conceptual meaning for the relevant public.
62 Since the sign LEXWARE, analysed in the context of the goods and services at issue, conveys a meaning for the relevant public, whilst the sign Leshare is not only meaningless but will also, at first sight, appear strange and unusual for the relevant public, those signs must be considered conceptually dissimilar.
63 Lastly, as regards the applicant’s argument derived from the judgment of 7 November 2017, MULTIPHARMA (T‑144/16, not published, EU:T:2017:783), it must be held that the assessment made by the Court with regard to the question as to whether a sign or a word mark has a clear and specific meaning is a factual consideration, limited to the circumstances specific to a particular dispute. It cannot, therefore, be applied in the framework of another dispute, or be binding on the Court when it carries out, in the context of that dispute, its review of the legality of the decisions of the Boards of Appeal.
64 It follows from the foregoing that the Board of Appeal correctly concluded that the signs at issue were conceptually dissimilar.
65 It follows that the second limb of the single plea in law must be rejected.
Global assessment of the likelihood of confusion
66 In paragraphs 19 and 20 of the contested decision, the Board of Appeal found that, although the goods and services covered by the signs at issue were identical, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. It observed in that regard that the general public would show an average to high level of attention with regard to those goods and services and that the general public as well as the specialised public were overwhelmingly likely to recognise English information technology terms such as ‘share’ and ‘ware’ and the French definite article ‘le’. It concluded that, assessed globally, the signs had a low degree of visual and phonetic similarity, despite the overlap in the initial part ‘le’ and the ending ‘are’ and that they were not similar conceptually.
67 The applicant submits, first of all, that the global assessment of the likelihood of confusion must be carried out in the present case by taking into consideration an average consumer with an average degree of attention. In the case at hand there is, in its submission, no conceptual similarity between the signs to be compared, so that only visual and phonetic similarity is subject to examination. The ‘counteraction theory’, which allows the importance of the visual and phonetic similarity to be reduced on the basis of a conceptual difference, cannot be applied in this case and it is appropriate to apply the general rule that similarity in only one respect (visual, phonetic or conceptual) is sufficient to establish a likelihood of confusion. Finally, it submits that the Board of Appeal wrongly introduced a concept of relevant visual and phonetic similarities and thereby narrowed the scope of the comparison of the signs at issue.
68 According to the case-law, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trademarks 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 29 September 1998, Canon, C-39/97, EU:C:1998:442, paragraph 17, and 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 74).
69 Furthermore, the global assessment of the likelihood of confusion must be carried out having regard to the case-law cited in paragraph 28 above.
70 First of all, it should be noted that one of the signs at issue has a clear meaning for the relevant public, while the other does not.
71 Next, with regard to the visual and phonetic similarities between the signs at issue, it is true that the Board of Appeal used the expression ‘overall relevant phonetic and visual similarity’ in its analysis but, contrary to the applicant’s contention, it does not follow from the contested decision that, in so doing, the Board of Appeal used a new concept, with the aim of narrowing the scope of comparison of the signs at issue. Rather, the Board of Appeal noted that the first and the last letters of those signs coincided. The fact remains that the Board of Appeal’s conclusion that the visual and phonetic similarities of the signs were low, or at most average, is correct, as is apparent from paragraphs 49, 50, 53 and 56 above.
72 Finally, in view of the case-law cited in paragraph 28 above, it should be observed that the conceptual difference between the signs can be grasped not only by the relevant public whose level of attention is high, but also by the public whose attention is average. This difference can also counteract in the eyes of that public the — low or average — visual and phonetic similarity of the signs at issue.
73 It follows from the foregoing that the Board of Appeal was right to conclude that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
74 Consequently, the third limb of the single plea must be rejected and the action must be dismissed in its entirety.
Costs
75 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Haufe-Lexware GmbH & Co. KG to pay the costs.
Gervasoni | Kowalik-Bańczyk | Mac Eochaidh |
Delivered in open court in Luxembourg on 15 November 2018.