JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
7 June 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark N & NF TRADING — Earlier EU figurative mark NF ENVIRONNEMENT — Relative ground for refusal — Likelihood of confusion — Lack of enhanced distinctiveness of the earlier mark — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑807/16,
MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate and R. Kaase, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Association française de normalisation (AFNOR), established in La Plaine Saint-Denis (France), represented by B. Fontaine, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 July 2016 (Case R 1109/2015-1), relating to opposition proceedings between AFNOR and MIP Metro Group Intellectual Property,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni (Rapporteur), President, L. Madise and R. da Silva Passos, Judges,
Registrar: M. Marescaux, Administrator,
having regard to the application lodged at the Court Registry on 17 November 2016,
having regard to the response of EUIPO lodged at the Court Registry on 6 April 2017,
having regard to the response of the intervener lodged at the Court Registry on 24 March 2017,
further to the hearing on 24 January 2018,
gives the following
Judgment
Background to the dispute
1 On 25 August 2011, the applicant, MIP Metro Group Intellectual Property GmbH & Co. KG, designated the European Union for international registration No 1 086 884 covering the word mark N & NF TRADING.
2 The services in respect of which registration was sought are in Classes 35 and 39 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 35: ‘Advertisement; business management; import-export agencies; bookkeeping; import and export trading services in the field of chemical products, coatings (paints), drugstore articles, cosmetics, household goods, fuels and motor fuels, goods for the health sector, machines, tools and metal goods, construction articles, DIY articles and garden supplies, hobby and craft supplies, electrical and electronic goods, kitchen utensils, sound recording carriers and data carriers, apparatus for sanitary purposes, vehicles and vehicle accessories, fireworks, clocks, watches and jewellery, musical instruments, printed matters, stationery, office requisites, bags and saddlery, furnishings and decoration items, tents, tarpaulins, clothing, shoes and textile goods, toys, sporting goods, foodstuffs and beverages, agricultural products, horticultural products and forestry products, tobacco products and other luxury foods, organisational and business consultancy regarding merchandising, arranging commercial transactions for others, also in the context of e-commerce, auctioneering’;
– Class 39: ‘Transport; transport brokerage; wrapping of goods, physical storage of electronically stored data and documents; storage; transporting furniture; rental of transport vehicles; freight (shipping of goods); packaging of goods; delivery of goods; parcel delivery; delivery of goods by mail order; rental of storage containers; carting; forwarding freight brokerage’.
3 On 25 May 2012, the intervener, the Association française de normalisation (AFNOR) filed a notice of opposition to the international application designating the European Union in respect of all the services referred to in paragraph 2 above.
4 The opposition was based on several earlier rights, in particular the EU figurative mark filed on 10 February 2011 and registered on 3 November 2011 under No 10 420 677, as reproduced below:
5 The earlier mark was registered, inter alia, for services in Classes 35 and 39 corresponding, for each of those classes, to the following description:
– Class 35: ‘Advertising; Business management; Business administration; Office functions; Distribution of leaflets and samples; Rental of advertising material; Assistance to commercial or industrial firms in the conduct of their business; Business consultancy, information or enquiries; Statistical, data processing and stenotyping work; Accounting; Document reproduction; Employment agencies; Rental of typewriters and office equipment, Arranging newspaper subscriptions for others; Computerised file management; Organisation of exhibitions for commercial advertising purposes, Rental of vending machines, Authorised management centres; Market studies, opinion polling; Recruitment consultancy; Reception services, Namely customer call centres, hostesses, Switchboard operators; Providing facilities for exhibitions; Record management and keeping’;
– Class 39: ‘Transport; Packaging and storage of goods; Travel arrangement, Transport of persons or goods; Water supplying; Water supply and electricity distribution, Newspaper delivery, Supply of drinking water; Removal services, furniture removal services; Transshipment services; Marine towing, unloading cargo, refloating of ships; Packaging of goods; Travel information (tourist offices or travel agencies, reservation of seats); Horse rental, rental of transport vehicles; Warehousing, storage of goods in a warehouse for their protection or safekeeping; Storage, safekeeping of clothing; Garaging of vehicles; Refrigerator rental; Rental of garages, Booking of seats (travel), Travel information services, Tourist offices, Tourism bureaus, Reception services and information provided by tourist offices; Towing, repair of vehicles; Transport to and from airports; School bus services; Courier services; Boat rental’.
6 The ground relied on in support of the opposition was that laid down in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) of 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)).
7 On 5 June 2015, the Opposition Division of the European Union Intellectual Property Office (EUIPO) upheld the opposition filed by AFNOR on the basis that there was a likelihood of confusion between the mark applied for and the earlier mark.
8 On 9 June 2015, 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.
9 By decision of 14 July 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the applicant’s appeal. After defining the relevant public and stating that the services covered by the mark applied for were identical to the services covered by the earlier mark in Classes 35 and 39, the Board of Appeal found that the components ‘nf’ and ‘n & nf’ were the distinctive and dominant components of the signs at issue. It held that the earlier mark had enhanced distinctiveness in France and then went on to find that the earlier mark and the mark applied for had visual and phonetic similarities which no conceptual difference could counteract. Lastly, after carrying out a global assessment of the likelihood of confusion and finding that the component ‘nf’ retained an independent distinctive role in the mark applied for, the Board of Appeal found that there was a likelihood of confusion between the marks at issue, in particular for the French public.
Procedure and forms of order sought
10 By application drafted in German and lodged at the Court Registry on 17 November 2016, the applicant brought the present action.
11 Since the intervener objected to German being chosen as the language of the case, English, being the language in which the contested decision had been drafted, became the language of the case in accordance with Article 45(4)(c) of the Rules of Procedure of the General Court.
12 The applicant claims that the Court should:
– annul the contested decision;
– 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 The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15 In support of that plea in law, the applicant essentially puts forward the following arguments. It criticises the Board of Appeal for finding that the component ‘nf’ was the sole dominant component of the earlier mark and for failing to take into account the component ‘environnement’ in the remainder of its assessment. It disputes the enhanced distinctiveness of the earlier mark, that mark having been used as a label of quality and not as a mark for the services in respect of which it was registered. Lastly, it criticises the contested decision inasmuch as that decision attributed an independent distinctive role to the component ‘nf’ in the sign at issue and inferred that there is a likelihood of confusion that precluded registration of the mark applied for.
16 EUIPO and the intervener dispute the applicant’s arguments.
17 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 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. Furthermore, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in one or more Member States and trade marks registered under international arrangements which have effect in several Member States with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
18 According to settled case-law, the risk that the public might 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 of the 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).
19 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
20 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 (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).
21 In the present case, the Board of Appeal correctly found that, since the earlier mark is an EU trade mark, the territory to be taken into account in order to assess the likelihood of confusion is that of the European Union (paragraph 26 of the contested decision). Furthermore, it stated, appropriately, that certain services in Class 39 might interest the general public, while the remainder of the services mainly interest undertakings and companies with a high level of attention (paragraph 31 of the contested decision). Moreover, the parties do not dispute those findings.
The similarity of the services
22 It should be noted that the Board of Appeal correctly found that the services covered by the mark applied for are identical to the services protected by the earlier mark in Classes 35 and 39 (paragraph 32 of the contested decision). Moreover, the parties do not call that finding into question.
Comparison of the signs
23 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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 that 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).
24 The 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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 component (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). 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 (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
25 It should also be noted that where some components of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those components are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 22 June 2010, CM Capital Markets v OHIM — Carbon Capital Markets (CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance), T‑490/08, EU:T:2010:250, paragraphs 39 and 40 and the case-law cited). Owing to their weak, or even very weak, distinctive character, descriptive components 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 be remembered by them (see, to that effect, judgments of 12 November 2008, Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, EU:T:2008:481, paragraph 44 and the case-law cited, and of 22 June 2010, CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance, T‑490/08, EU:T:2010:250, paragraph 39 and the case-law cited).
The distinctive and dominant components of the marks at issue
26 In the first place, as regards the earlier mark, the Board of Appeal noted that it is unlikely that the public will devote much attention to the word ‘environnement’, which is descriptive. According to the Board of Appeal, the combination of letters ‘nf’ is clearly the most ‘striking’ feature of the earlier mark and is the component of that mark which a large part of the relevant public will keep in mind (paragraph 42 of the contested decision).
27 The applicant disputes that finding. It takes the view, first, that the Board of Appeal infringed its obligation to carry out a global assessment of the earlier mark and, second, that the Board of Appeal was wrong to dismiss the component ‘environnement’ in such a way that only the component ‘nf’ alone is retained as the distinctive and dominant component of the earlier mark.
28 That argument cannot be accepted.
29 First of all, it is apparent from the contested decision that the Board of Appeal carried out a global assessment of the likelihood of confusion and did not restrict its assessment solely to one part of the earlier mark.
30 As EUIPO and the intervener rightly point out, the Board of Appeal proceeded to take account of the marks at issue as a whole. It recalled that the assessment of the similarity between two marks means more than taking ‘just one component’ of a composite mark and comparing it with another mark. It noted that the comparison must be made by examining each of the marks at issue ‘as a whole’, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark might not, in certain circumstances, be dominated by one or more of that mark’s components (paragraph 34 of the contested decision).
31 The Board of Appeal identified each of the components of the earlier mark. It took note of all of the word and figurative components of the mark, stating that ‘the word elements “nf environnement” are set out in white against a principally blue oval background with a leaf-like device in green in the inner part of the upper border’ (paragraph 38 of the contested decision).
32 The Board of Appeal proceeded to describe and assess each of the components identified in the earlier mark (paragraphs 39 to 42 of the contested decision). It is in view of that assessment, from which it is apparent in particular that the word ‘environnement’ is, according to the Board of Appeal, descriptive and is only slightly capable of holding the attention of the public, that the Board of Appeal found that the combination of letters ‘nf’ is the distinctive and dominant component of the earlier mark.
33 Consequently, the applicant is not justified in arguing that the Board of Appeal, which identified each of the figurative and word elements of the earlier mark and assessed the overall impression conveyed by the sign to the relevant public, infringed its obligation to carry out an assessment of the earlier mark taken as a whole.
34 Furthermore, the applicant submits that the component ‘environnement’ is not descriptive of the services covered by Classes 35 and 39 since those services are in no way linked with the protection of the environment and since the component ‘environnement’ could be associated with the services in question only following several mental steps. Taking account of the term ‘environnement’ would be particularly necessary as the length of that word is greater than that of the letters ‘nf’.
35 In that regard, it is appropriate to recall the case-law under which a sign is descriptive if there is a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods or services in question (see judgment of 19 November 2009, Torresan v OHIM — Klosterbrauerei Weissenohe (CANNABIS), T‑234/06, EU:T:2009:448, paragraph 25 and the case-law cited).
36 As regards the services covered by the earlier mark and in Classes 35 and 39, the component ‘environnement’ describes the protection of the environment in the context of the provision of the services at issue, as was correctly observed by the Board of Appeal in paragraph 42 of the contested decision. Although it does not describe the services in Classes 35 and 39 in themselves, it makes reference to their ecological quality and will likely be perceived by the relevant public as an essential characteristic of the services in question. That perception will be even more instant as undertakings and consumers currently have a marked interest in the protection of the environment. In those circumstances, the term ‘environnement’, which has a sufficiently direct and specific link with the services in question, will be perceived as descriptive by the relevant public.
37 The component ‘nf’ has, for its part, no apparent meaning in connection with the services in question. Located in the centre of the earlier mark, that component is represented with letters of a significantly larger size and thickness than those of the letters composing the term ‘environnement’. Contrary to what the applicant submits, the greater length of the word ‘environnement’ does not offset its smaller size in the earlier mark. Located at the bottom edge of the mark, in a smaller size, the word ‘environnement’ is unlikely to be the component which the relevant public will remember the most.
38 Accordingly, the Board of Appeal correctly found that the combination of letters ‘nf’ is the most ‘striking’ component of the earlier mark and the component which a large part of the public in the European Union will remember.
39 In second place, as regards the mark applied for, the Board of Appeal correctly found that the term ‘trading’ will not be particularly distinctive for consumers who understand English, given that that word refers to ‘the activity of buying and selling goods and services’ and that, accordingly, the component ‘n & nf’ will be the most distinctive and dominant component of the mark applied for (paragraph 41 of the contested decision). Moreover, that decision is not disputed by the parties.
40 The Board of Appeal also took the view that the ampersand (&) is generally used as a typographical sign to replace the word ‘and’ and that the relevant public with a basic understanding of English will regard the component ‘n & nf’ as a reference to two separate entities, namely, ‘n’ and ‘nf’ (paragraph 41 of the contested decision).
41 In that regard, the applicant submits that the component ‘n & nf’ suggests that the services covered by the mark applied for come from a single entity composed, at most, of two separate associations. It also takes the view that the relevant public will pay less attention to the letters ‘nf’ than to the characters ‘n &’.
42 However, the Board of Appeal was not mistaken in its interpretation of the ampersand, a common typographical sign which generally corresponds to the conjunction ‘and’ when placed, as in the present case, between two words or letters. It is thus likely that the relevant public will interpret the component ‘n & nf’ as an association between two separate entities, ‘n’ and ‘nf’, which have decided to cooperate in order to provide the services in question.
43 The fact that the graphic design of the components ‘n’ and ‘nf’ is identical and that ‘nf’ is positioned after ‘n &’ does not imply that the public will attach less value to the letters ‘nf’, having regard to the greater length of the latter compared to the letter ‘n’ and to the presence of the ampersand which suggests that there is an association between two separate economic operators.
44 The Board of Appeal therefore correctly held that the relevant public will understand the distinctive and dominant component ‘n & nf’ of the mark applied for as referring to two separate entities, namely ‘n’ and ‘nf’.
45 It follows from the foregoing that the Board of Appeal’s analysis relating to the identification of the distinctive and dominant components of the marks at issue must be upheld.
Visual, phonetic and conceptual similarity
46 In paragraph 56 of the contested decision, the Board of Appeal found that the general impression produced by the marks at issue was that those marks were visually and phonetically similar, which is not disputed by the applicant.
47 Visually, the mark applied for contains the same component ‘nf’ as the earlier mark, as a distinctive component. It follows, as the Board of Appeal correctly found, that there is a certain visual similarity between the signs which is not removed by the presence, in the earlier mark and the mark applied for, of the descriptive terms ‘environnement’ and ‘trading’ respectively and by the presence of the additional letter ‘n’ in the mark applied for.
48 Phonetically, the Board of Appeal correctly found that the signs were similar given, first, that it is likely that the secondary terms in each of those signs will not be pronounced and, second, that the component ‘nf’ will be pronounced both in the earlier mark and in the mark applied for.
49 Lastly, conceptually, it is not in dispute between the parties that the components ‘nf’ and ‘n & nf’ do not convey any specific concept. Furthermore, it is apparent from paragraphs 36 and 39 above that the components ‘trading’ and ‘environnement’ are descriptive. Consequently, there is no conceptual difference which makes it possible to offset the visual and phonetic similarity between the marks at issue.
50 That finding is confirmed by the parties’ replies to the questions put to them by the Court at the hearing.
51 The Court asked the parties during the hearing whether, as regards the French public, the letters ‘nf’ could be understood as meaning ‘norme française’ (‘French standard’).
52 The intervener indicated to the Court that, although the expression ‘norme française’ was the basis of the sign NF, used by AFNOR in the certification of goods in France since the 1940s, recent surveys do not lead to the conclusion that the French public currently attributes the meaning of ‘norme française’ to the letters ‘nf’. The applicant indicated to the Court that it did not know whether the French public perceived the letters ‘nf’ as having such a meaning, while EUIPO did not express a view on that point. Accordingly, it is not apparent from the documents before the Court that the French public attributes the meaning of ‘norme française’ to the component ‘nf’ or that that meaning is a well-known fact.
53 It should be added that, even if the component ‘nf’ could be understood by the French public as meaning ‘norme française’, that interpretation would apply to both the mark applied for and the earlier mark, with the result that there would be no conceptual difference capable of counteracting the visual and phonetic similarity between the signs at issue. Moreover, the conceptual comparison between the signs would, in any event, be impossible for the non-French-speaking public.
54 The Board of Appeal’s assessment of the visual, phonetic and conceptual similarity of the marks at issue must therefore be upheld.
The distinctive character of the earlier mark
55 According to the case-law, as is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous components, in particular the public’s recognition of the trade mark on the market in question. Since the more distinctive the earlier mark is, the greater will be the likelihood of confusion, marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with a 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).
56 In paragraph 51 of the contested decision, the Board of Appeal found that, having regard to its longstanding presence, its widespread use throughout the industry and service sectors, the legal recognition of the mark in the framework pursuant to Article L. 115-24 of the code de la consommation (French Consumer Code) and its recognition among businesses and other consumers, the earlier mark has an enhanced distinctiveness in France.
57 The applicant argues that the sign NF is used in France as a label of quality and not as a mark for services in Classes 35 and 39 and that the reputation of that label applies at most to certification activities but not to services in those classes, with the result that the earlier mark cannot be regarded as having enhanced distinctiveness. It takes the view that the evidence submitted by the intervener before the Board of Appeal is not sufficient to characterise an intensive and prolonged use of the sign NF, since its conditions, nature and duration of use have not been precisely established.
58 EUIPO submits that the earlier mark’s enhanced distinctiveness is not in dispute.
59 The intervener states that, for the French public, the sign NF refers to AFNOR and indicates that the services in question adhere to certain characteristics. It explains that every use of that sign by a third party is deemed to have been made in cooperation with AFNOR. The sign NF consequently performs the essential function of a mark, namely as an indicator of origin, and its use could confer an enhanced distinctive character on that mark in France.
60 In the first place, it should be noted that the applicant calls into question, by the arguments it puts forward in paragraphs 37 to 41 of the application, the enhanced distinctiveness of the earlier mark. EUIPO’s claim that the enhanced distinctiveness of the earlier mark is not in dispute must therefore be rejected as being incorrect on the facts. It is therefore necessary to assess whether or not the earlier mark has enhanced distinctiveness in France.
61 In the second place, in order to determine the distinctiveness of a mark and, accordingly, to assess whether it has enhanced distinctiveness, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been 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 mark, including the fact that it does or does not contain a component descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. It follows that it is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraphs 22 to 24).
62 In the present case, it is apparent from the documents in the case file submitted to the Board of Appeal, in particular from the book on the history of AFNOR, the press articles and magazines from 2001 and 2009 and the extracts from the AFNOR’s website, that the sign NF has a long history of use by AFNOR to certify goods and services. In 2009, that sign was used in relation to several thousand goods distributed in France by thousands of French and foreign companies. The services for which the sign NF is used for the purposes of certification include services in Classes 35 and 39. The sign NF, which was the subject matter of advertisements promoting it in major financial publications in the French press, is widely recognised by the French public, as indicated in particular by a study carried out in 1995 according to which 95% of consumers recognised the sign NF compared to 79% three years before. That sign therefore enjoys, among the French public, a certain reputation as a sign of certification of goods and services.
63 However, as regards the services in Classes 35 and 39, it is clear from the documents in the case file before the Board of Appeal that AFNOR does not provide the services in question itself. That point was confirmed by the intervener at the hearing in response to a measure of organisation of procedure and to a question posed by the Court. The sign NF has thus been used in France, as regards the services in Classes 35 and 39, for the sole purposes of the certification of services provided by undertakings which are separate from AFNOR.
64 Where the use of an individual mark, despite certifying the composition or quality of the goods or services, does not guarantee to consumers that the goods or services come from a single undertaking under the control of which they are manufactured or supplied and which, consequently, is responsible for the quality of those goods or services, such use is not made in accordance with the essential function of indicating origin which a mark fulfils (see, to that effect, judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraphs 43 to 45).
65 It follows that, although the intervener has grounds to argue, having regard to the length of time for which and the intensity with which the sign NF has been used in the field of the certification of goods and services, that a large part of the relevant French public will perceive the earlier mark as signifying that the services in question adhere to certain characteristics certified by AFNOR, it does not show, by the evidence which it has submitted, how the earlier mark has a high capacity to identify the services in question as coming from a particular undertaking.
66 Accordingly, it cannot be found, in the light of the documents in the case file, and despite the reputation of the sign NF for the certification of goods and services, that the earlier mark has, among the French public, an enhanced ability to identify the services in Classes 35 and 39 as coming from a particular undertaking and therefore to distinguish those goods or services from those coming from other undertakings.
67 The intervener’s other arguments do not call that conclusion into question.
68 The intervener argues, first, that the use of the sign NF by a third party is regarded as having been made in cooperation with AFNOR. However, the intervener does not argue that the details of that cooperation are such that those third-party undertakings in question are not, in reality, separate from AFNOR. The existence of that cooperation therefore does not allow the conclusion that the earlier mark has an ability to identify the services in respect of which it was registered as coming from a particular undertaking.
69 The intervener argues, second, that the sign NF satisfies the essential function of a mark, namely as an indicator of origin as regards the services in question. However, it has not been shown in the present case that the use of that sign was consistent with the essential function of the mark. It is apparent from the documents put forward by the intervener that the placing of the sign NF on the goods had the sole function of serving as a label of quality for those goods and not of also guaranteeing that the goods come from a single undertaking under the control of which they are manufactured and which is responsible for their quality (see, to that effect, judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 46).
70 Consequently, the applicant is justified in submitting that the Board of Appeal incorrectly attributed an enhanced level of distinctiveness to the earlier mark in respect of the French public.
The likelihood of confusion
71 The Board of Appeal found that, taking account of all the circumstances of the present case, the component ‘nf’ retained an independent distinctive role in the mark applied for and that there was a likelihood of confusion between the marks at issue, in particular for the French public (paragraphs 58 to 62 of the contested decision).
72 In the first place, the applicant submits that the component ‘nf’ does not retain an independent distinctive role in the mark applied for. It states that, pursuant to the case-law, the component ‘nf’ cannot acquire an independent distinctive role in the mark applied for since it does not correspond to either the trade name or to the mark identifying the company of the proprietor of the earlier mark, or to a series of marks of the latter. It also submits that the component ‘nf’ does not constitute the earlier mark by itself and that the component ‘n & nf’ suggests that the services offered come from a single entity.
73 EUIPO and the intervener dispute the applicant’s arguments.
74 The Court of Justice has held, as regards marks with a common component where that component is identical to one of the marks at issue, that, even if that component cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those marks in so far as it constitutes, in itself, the earlier mark and retains an independent distinctive role in the mark composed of, inter alia, that component and in respect of which registration is sought. Where a common component 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 undertakings which are economically linked, in which case the likelihood of confusion must be held to be established (see, to that effect, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 30 and 36, and order of 22 January 2010, ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria, C‑23/09 P, not published, EU:C:2010:35, paragraph 45).
75 The Court of Justice has also stated that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, taken as a whole, that component forms a unit having a different meaning as compared to the meaning of those components taken separately (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25).
76 In principle, even a component which has only a weak distinctive character may dominate the overall impression of a composite mark or have an independent distinctive role in that mark within the meaning of the case-law resulting from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594) where it may, because of, inter alia, its position in the sign or its size, make an impression on consumers and be remembered by them (judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 40).
77 Contrary to the applicant’s submissions, it does not follow from the case-law which has just been cited that the component common to the marks at issue could retain an independent distinctive position only if the earlier mark is also the name of the undertaking which holds it or if the later mark contains a component recognised as belonging to a series of marks of the proprietor of the earlier mark (see, to that effect, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 34, and Opinion of Advocate General Mengozzi in Bimbo v OHIM, C‑591/12 P, EU:C:2014:34, points 18 and 19).
78 Furthermore, where the earlier mark is not reproduced identically in the later mark, it is still possible that the signs at issue are similar on account of the similarity between the earlier mark and one component of the later mark which has an independent distinctive role (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 60). It is necessary to ascertain the overall impression made on the relevant public by the later mark, by means of, inter alia, an analysis of the components of that mark and of their relative weight in that public’s perception, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 34).
79 Thus, the fact that the component ‘nf’ does not constitute, by itself, the earlier mark does not prevent it from retaining an independent distinctive role in the mark applied for.
80 Lastly, as is apparent from paragraphs 40 to 43 above, the component ‘nf’, which is common to both signs at issue, does not form a unit with the other components of the contested sign, taken as a whole, having a different meaning from the meaning of those components taken separately. A large part of the relevant public will regard the component ‘n & nf’ as referring to two separate entities.
81 The applicant’s argument challenging the independent distinctive role of the component ‘nf’ in the contested sign must therefore be rejected.
82 The component ‘nf’ retains, taking into account all the foregoing considerations and even in the absence of enhanced distinctiveness of the earlier mark in France, an independent distinctive role in the mark applied for.
83 In the second place, 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 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. The more distinctive the earlier mark, the greater will be the likelihood of confusion and therefore marks with highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).
84 Having regard to the similarity of the services in question, the distinctive and dominant components of the marks at issue as they have been assessed, the visual and phonetic similarity of the marks and the principle of interdependence between factors, there is a likelihood that the relevant public, which includes people with a high level of attention, may believe that the services provided under the marks at issue come from economically linked undertakings, as the Board of Appeal correctly found.
85 As EUIPO and the intervener pointed out at the hearing, that finding is not called into question by the fact that the earlier mark does not have enhanced distinctiveness in France for the services in Classes 35 and 39. Although it is not possible to find that the likelihood of confusion is higher for the French public, the fact remains that the very existence of a likelihood of confusion is established in the present case due to the similarity of the services and of the marks at issue, both for the average consumer and for the public which has a high level of attention.
86 It follows from all the foregoing that the Board of Appeal correctly found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
87 Since the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is unfounded, the head of claim seeking annulment of the contested decision must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
88 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.
89 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 (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders MIP Metro Group Intellectual Property GmbH & Co. KG to pay the costs.
Gervasoni | Madise | Da Silva Passos |
Delivered in open court in Luxembourg on 7 June 2018.