JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
1 March 2023 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark HE&ME – Earlier Benelux word mark ME – Relative ground for refusal – Similarity of the signs – Weak distinctive character of the earlier mark – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑25/22,
Canai Technology Co. Ltd, established in Guangzhou (China), represented by J.F. Gallego Jiménez, E. Sanz Valls, P. Bauzá Martínez, Y. Hernández Viñes and C. Marí Aguilar, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Trend Fin BV, established in Utrecht (Netherlands), represented by F. Folmer, L. Bekke and T. de Haan, lawyers,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, K. Kecsmár and S. Kingston (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
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
1 By its action under Article 263 TFEU, the applicant, Canai Technology Co. Ltd, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 November 2021 (Case R 1390/2020-1) (‘the contested decision’).
Background to the dispute
2 On 24 April 2018, the applicant obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration designating the European Union, under number 1426777, of the figurative sign represented below, which was notified to EUIPO on 4 October 2018:
3 The goods in respect of which registration was sought are in, inter alia, Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Clothing; underwear; underpants; special functional dress (magnetism, infrared); shoes; hats; hosiery; gloves [clothing]; neckties; strap; bodices [lingerie]; corsets; teddies [undergarments]; combinations [clothing]; ultra-red clothes; eyeshades (sleep-); wimples; scarfs’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 190/2018 of 5 October 2018.
5 On 18 December 2018, WE Brand Sàrl, the predecessor in law to the intervener, Trend Fin BV, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based, following the limitation adopted by the intervener during the proceedings before EUIPO, on the earlier Benelux word mark ME, registered on 30 March 2015 under number 968809, covering, inter alia, goods in Class 25 corresponding to the following description: ‘Clothing, namely, pants, shorts, skirts, dresses, sweaters, pullovers, jackets, coats, jackets, vests, blouses, shirts, t-shirts, scarves, scarves, mittens, socks, stockings, tights, swimsuits, belts; footwear, namely, sandals, boots, shoes, slippers, shoes; headgear, namely hats, hats and caps’.
7 The ground relied on in support of the opposition was that set out in 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).
8 On 8 May 2020, the Opposition Division rejected the opposition on the ground that, even if the goods in question were identical, there was no likelihood of confusion on the part of the public on account, in particular, of the low degree of visual, phonetic and conceptual similarity between the marks at issue and the below average distinctiveness of the earlier mark.
9 On 7 July 2020, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 66 to 71 of Regulation 2017/1001.
10 By the contested decision, the Board of Appeal upheld the appeal on the ground, inter alia, first, that the distinctive character of the earlier mark, reproduced in full in the mark applied for, was below average, whereas the additional elements ‘he’ and ‘&’ of the mark applied for had an even weaker distinctive character, if any at all, secondly, that the signs at issue had an average degree of visual, phonetic and conceptual similarity overall and, thirdly, that there was therefore a likelihood of confusion with regard to the identical and similar goods.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order the intervener and EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those of its predecessor in law relating to the proceedings before EUIPO.
Law
14 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, which it divides into three complaints, alleging, first, failure to assess the earlier mark and the mark applied for as a whole, second, failure to take sufficient account of the conceptual differences between the earlier mark and the mark applied for, as well as an incorrect assessment of the distinctive character of the respective elements of the marks at issue, and, third, failure to assess the length of the signs and the positioning of the common element ‘me’.
15 EUIPO, supported by the intervener, disputes the applicant’s arguments.
16 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 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. 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).
18 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see, to that effect, 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).
19 It is in the light of those considerations that the present plea must be examined.
The relevant territory and the relevant public
20 In paragraphs 36 and 37 of the contested decision, the Board of Appeal concluded that the goods in question were directed at the general public, that the level of attention of the relevant public was average and that the relevant territory was that of the Benelux, where the official languages are French, German, Dutch and Luxembourgish.
21 The applicant, EUIPO and the intervener do not dispute those assessments.
The comparison of the goods
22 In paragraphs 27 to 35 of the contested decision, the Board of Appeal found that the goods in question were in part identical and in part similar to an average degree.
23 That finding is not disputed by the parties.
The comparison of the signs
24 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).
25 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 element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, 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).
The distinctive and dominant elements of the marks at issue
26 According to case-law, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of 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 element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38 and the case-law cited).
27 With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
28 It is in the light of those considerations that the possible existence of distinctive and dominant elements in the marks at issue must be assessed.
29 As regards the earlier mark, the Board of Appeal stated that the term ‘me’, which was also present in the mark applied for, was a basic English word which would be perceived by the relevant public as the personal pronoun of the first person singular, which meant ‘myself’. It therefore found that it did not describe the characteristics of the goods concerned. Nevertheless, according to the Board of Appeal, the term ‘me’ alluded to fashion articles with personality to suit the personal aesthetics of the person wearing them. Consequently, it concluded that the element ‘me’ had a below average distinctive character, in so far as it could evoke characteristics of the goods in question.
30 As regards the mark applied for, the Board of Appeal found, at the outset, that the relevant public was likely to break down the mark into the elements ‘he’, ‘&’ and ‘me’. In respect of the term ‘he’, the Board of Appeal concluded that it was devoid of distinctive character because, being a basic English word which would be perceived by the relevant public as the personal pronoun of the third person singular used to designate a person of male gender, it was descriptive of a characteristic of the goods in question, namely the gender of the target group of customers. With regard to the ampersand ‘&’, used between the terms ‘he’ and ‘me’, the Board of Appeal found that, even though it did not go unnoticed by the relevant public, since it was the symbol used internationally to refer to the word ‘plus’ or ‘and’, it had a weak distinctive character. In respect of the term ‘me’, the Board of Appeal took the view that, even though the same findings applied as those expressed in respect of the earlier mark ME, that term would be perceived in the mark applied for as a separate element with its own distinctive role.
31 As for the identification of any dominant elements, the Board of Appeal concluded that none of the constitutive elements of the mark applied for dominated the overall impression of that mark. As regards the earlier mark, which is made up of a single word element, the Board of Appeal found that it did not contain any dominant element either.
32 The applicant claims, first, that the Board of Appeal made an error of assessment by arbitrarily attributing a more distinctive character to the element ‘me’ than to the element ‘he’. In particular, if, as the Board of Appeal concluded, the pronoun ‘he’ may refer to consumers who purchase the relevant goods, according to the applicant, the same applies to the pronoun ‘me’, which may identify any man, woman or non-binary person purchasing the goods in question. Consequently, in the applicant’s view, the findings in the contested decision relating to the meaning of the term ‘he’ are inconsistent with the findings relating to the meaning of the term ‘me’.
33 Secondly, as regards the ampersand ‘&’, the applicant submits that that element is not linked to the goods in question and therefore must be regarded as the most distinctive element of the mark applied for with no equivalent in the earlier mark, even if one were to follow the Board of Appeal’s findings concerning the word element ‘me’.
34 EUIPO and the intervener dispute the applicant’s arguments.
35 In the first place, it should be noted that, in the mark applied for, the distinctive character of the element ‘he’ is, at most, weak and, in any event, not higher than that of the element ‘me’.
36 First of all, it should be recalled that, where some elements of a mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (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 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as having a distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the relevant public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression created by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (judgment of 20 September 2016, Excalibur City v EUIPO – Ferrero (MERLIN’S KINDERWELT), T‑566/15, not published, EU:T:2016:517, paragraph 28).
37 In the present case, as the Board of Appeal found in paragraph 42 of the contested decision, the element ‘he’ is descriptive of a characteristic of the goods in question, in so far as it seeks to identify the gender of the group of target customers, namely male customers. Given the differences which usually exist between men’s and women’s clothing, the conveying of the information that the clothing is intended for male customers represents an essential characteristic of the goods in question which is taken into account by the public targeted. It follows that the word ‘he’ enables the public targeted to establish immediately, and without further thought, a specific and direct relationship between that element and the clothing for male customers (see, to that effect, judgment of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraphs 34 and 35). The element ‘he’ in the mark applied for must therefore be regarded as having, at most, a weak distinctive character.
38 As regards the element ‘me’, it cannot be regarded as descriptive of the goods in question. As the applicant states, it may refer to any person purchasing the goods in question. It thus does not create a sufficiently direct and specific link with the goods in Class 25. Therefore, in the absence of any descriptive character, the common element ‘me’ has some distinctive value, even though it could be held to be weak in particular in the case where, as in the contested decision, that term is regarded as highly allusive to the personality of the user of the goods in question.
39 In the present case, it is not necessary to take a position on whether, in the mark applied for, the element ‘me’ is more distinctive than the element ‘he’. In that regard, it is sufficient to note that the element ‘he’ is not more distinctive than the element ‘me’.
40 Even if one were to assume that the two elements have the same degree of distinctiveness, this could not call the Board of Appeal’s finding that there is a likelihood of confusion into question. According to the case-law referred to in paragraphs 17, 24 and 25 above, 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 principle of interdependence between the similarity of the signs and that of the goods or services covered. In that context, in order to establish a likelihood of confusion, it is not necessary for the common element of the marks at issue to be more distinctive than the other elements of the mark applied for.
41 In the present case, the Board of Appeal sufficiently established the likelihood of confusion by relying on the presence of other relevant factors, namely, first, the fact that the common element ‘me’, as the only element of the earlier mark, was fully contained in the sign applied for, with the result that it was sufficiently recognisable within the mark applied for, secondly, the fact that the additional elements ‘he’ and ‘&’ in the mark applied for had, at most, a weak distinctive character, and, thirdly, the similarities between the marks at issue and between the goods covered by those marks (see also paragraphs 78 and 79 below). The applicant’s argument that the contested decision incorrectly held that the element ‘me’ was more distinctive than the element ‘he’ cannot, therefore, affect the legality of that decision.
42 In the second place, as regards the ampersand ‘&’, as the Board of Appeal found in paragraph 42 of the contested decision, that element will be perceived as the symbol used internationally to refer to the word ‘plus’ or ‘and’. Since it is not very striking in the present case, the ampersand ‘&’ will not attract the attention of consumers when the word elements are present. Its distinctive character is, therefore, at most, weak and, in any event, it is not more distinctive than that of the element ‘me’.
43 In the light of the foregoing, the Board of Appeal was correct in finding that the additional elements ‘he’ and ‘&’ in the mark applied for had, at most, a weak distinctive character and, in any event, were not more distinctive than that of the common element ‘me’.
The visual, phonetic and conceptual similarity
44 First of all, it should be noted that, according to case-law, where the word which constitutes the earlier mark is fully contained in the mark applied for, this is an indication that the two marks are similar (judgment of 21 March 2011, Visti Beheer v OHIM – Meister (GOLD MEISTER), T‑372/09, not published, EU:T:2011:97, paragraph 27; see also, to that effect, judgments of 20 April 2018, holyGhost v EUIPO – CBM (holyGhost), T‑439/16, not published, EU:T:2018:197, paragraph 33, and of 11 November 2009, REWE-Zentral v OHIM – Aldi Einkauf (Clina), T‑150/08, not published, EU:T:2009:431, paragraph 38).
45 In the present case, the Board of Appeal found that the signs at issue were overall visually, phonetically and conceptually similar to an average degree. The visual similarity was average, given that the signs coincided in the element ‘me’, namely the single element of the earlier mark which was fully contained in the mark applied for, and differed only in the additional element ‘he’, at the beginning of the mark applied for, and in the symbol ‘&’, placed after that additional element. The slight stylisation of the mark applied for was rather common and minimal to be able to play an important role in the comparison of the signs at issue. The phonetic similarity was average, since the pronunciation of the signs coincided having regard to the sound of the letters ‘me’, fully contained in the mark applied for and pronounced in the same way, and differed only in the sound of the additional elements ‘he’ and ‘&’. The conceptual similarity was average on account of the fact that both of the marks referred to pronouns, the earlier mark to a single person, ‘me’, and the mark applied for to two persons, ‘me’ and ‘him’.
46 The applicant submits, in essence, that five errors were made in the comparison of the signs at issue. First, the applicant criticises the Board of Appeal for having completely disregarded two elements of the mark applied for, ‘he’ and ‘&’, and, more generally, for not having carried out an assessment of the signs at issue as a whole. Secondly, visually, the Board of Appeal did not take into account the stylisation of the mark applied for, which highlights the differences between the marks at issue. Thirdly, phonetically, the Board of Appeal did not take sufficient account of the different pronunciation of the marks at issue, in one and three syllables respectively, which, according to the applicant, leads to a different rhythm and intonation. Fourthly, conceptually, the Board of Appeal disregarded the fact that the earlier mark referred to a single person, whereas the mark applied for refers to a number of different persons. Fifthly, according to the applicant, the Board of Appeal did not assess the difference in length of the signs at issue and in the positioning of the common element.
47 EUIPO and the intervener dispute the applicant’s arguments.
48 In the first place, it is apparent from the contested decision that the Board of Appeal duly took into consideration the elements ‘he’ and ‘&’ on several occasions, namely in paragraphs 42, 44 to 46, 58 and 59 of the contested decision, in its assessment of the similarities of the signs at issue.
49 The Board of Appeal noted that the two marks differed, in essence, as a result of the existence of those two elements in the mark applied for. However, it took the view that, even if the additional elements ‘he’ and ‘&’ of the mark applied for would not go entirely unnoticed by the relevant public, those elements would not have prevented the relevant public from perceiving the presence of the common element ‘me’, since they both had, at most, a limited distinctive character. The presence of those elements therefore did not outweigh the similarities found.
50 It follows that the applicant cannot criticise the Board of Appeal for having disregarded the elements ‘he’ and ‘&’.
51 Likewise, contrary to the applicant’s claims, and as is apparent from paragraphs 52 to 65 below, the Board of Appeal took sufficient account of the other relevant factors in order to carry out an assessment of the signs at issue as a whole, such as the differences in terms of stylisation, number of syllables, length, positioning of the common element and designation of one or two persons.
52 In the second place, as regards visual similarity, the applicant’s arguments do not call into question the Board of Appeal’s finding that the marks at issue are similar to an average degree.
53 It should be noted that, as is apparent from paragraph 44 of the contested decision, the slight stylisation of the mark applied for is rather common and minimal. It therefore plays, at most, a secondary role in the comparison.
54 Furthermore, while it is true that the additional elements ‘he’ and ‘&’ of the mark applied for appear at the beginning of the sign applied for and render it longer than the earlier mark, in the present case, those factors are not capable of outweighing the similarities between the two marks at issue, in particular on account of the common and identical element ‘me’.
55 The applicant’s argument that a small difference between two short marks is more likely to create a different general impression compared with long marks, in respect of which the public perceives those differences to a lesser extent, cannot call into question the similarities between the marks at issue, given, in particular, that, in the present case, the earlier mark is reproduced in full in the mark applied for.
56 As regards the position of the common element ‘me’ at the end of the mark applied for and the additional elements ‘he’ and ‘&’ respectively at the beginning and in the middle of that mark, it is true that, generally, consumers pay greater attention to the beginning of a word sign than to its ending. Nevertheless, that finding cannot apply in all cases and it cannot, in any event, call into question the general principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO – Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 48 and the case-law cited). Therefore, the Court must not take as its starting point the premiss that the consumer pays greater attention to the beginning of a compound word sign than to its end. It may hold that the end of signs which are the subject of opposition proceedings is more distinctive or dominant than the beginning of those signs or even that one of the elements in those signs is not more distinctive or dominant than the other (see, to that effect, order of 28 June 2012, TofuTown.com v Meica, C‑599/11 P, not published, EU:C:2012:403, paragraph 31).
57 In the present case, the first part of the sign applied for is not more likely to attract the attention of the relevant public than the subsequent parts. In that regard, it should be borne in mind that the elements ‘he’ and ‘&’ at the beginning and in the middle of the sign applied for are, at most, weakly distinctive, with the result that, irrespective of their positioning, they are not particularly likely to attract the attention of the relevant public and to outweigh the impact of the common and identical element ‘me’.
58 Furthermore, the fact that the element ‘me’ appears at the end of the sign applied for does not mean that the relevant public will attach less weight to it, especially when the sign applied for is relatively short and the element at the end is easily identifiable on account of the ampersand.
59 In the third place, as regards phonetic similarity, the Board of Appeal’s finding that the marks at issue are phonetically similar to an average degree, notwithstanding the additional elements ‘he’ and ‘&’ of the mark applied for, must be upheld.
60 It is true, as the applicant submits, that the number of syllables associated with the pronunciation of the marks at issue is different. However, in the present case, where the mark applied for reproduces in full the only word element of the earlier mark, namely the word ‘me’, which is identical to that of the mark applied for, clearly audible and pronounced in the same way, that difference is not capable of outweighing the phonetic similarities in the identical pronunciation of the common element ‘me’.
61 As for the applicant’s argument that consumers generally pay more attention to the beginning of a mark than to the end, suffice it to state that the findings set out in paragraphs 54 to 58 above are also valid as regards the phonetic comparison of the signs at issue.
62 In the fourth place, in respect of conceptual similarity, as the Board of Appeal found, it should be noted that the marks at issue both refer to personal pronouns and have the pronoun ‘me’ in common, which conveys the same concept in both marks.
63 However, as the Board of Appeal held, the term ‘me’ in the earlier mark means ‘myself’ and thus refers to a single person, whose gender is not specified, whereas the mark applied for refers to two persons, one of whom is male. The mark applied for can therefore be understood as alluding to a couple or to a group of two persons. Contrary to what is argued by EUIPO and the intervener, as a result of that difference, the marks at issue may be perceived as referring to concepts that are partly different, which is likely to reduce the conceptual similarity between them.
64 Accordingly, the view must be taken that the marks at issue are conceptually similar to a low degree, and not to an average degree, as the Board of Appeal found.
65 In those circumstances, it must be held that the applicant’s arguments do not establish that the Board of Appeal made an error of assessment in finding that the marks at issue were visually and phonetically similar to an average degree. However, conceptually, the marks at issue are similar to a low degree.
The distinctive character of the earlier mark
66 In paragraphs 48 to 50 of the contested decision, the Board of Appeal took the view that the inherent distinctive character of the earlier mark was below average, since it was highly allusive to fashion items which reflect the personality of the person wearing them.
67 The intervener disputes that assessment. According to the intervener, the term ‘me’ has no meaning for the relevant public of the Benelux countries in relation to the goods in Class 25. Not only does the word ‘me’ not describe the goods but, contrary to the Board of Appeal’s finding, it also does not allude to them. In addition, even if ‘me’ could allude to the personality of the user, this would not automatically result in a weaker distinctive character in respect of the goods concerned. In the present case, to the extent that the term ‘me’ may somehow allude to the personality of the user, that link is insufficiently direct to render the mark descriptive or even distinctive to a low degree for the goods in Class 25. Consequently, the applicant claims, since the earlier mark is neither descriptive nor allusive, it is distinctive to at least an average degree.
68 In that regard, it must be stated that, in the present case, the intervener’s complaint has no bearing on the legality of the contested decision. The Board of Appeal’s finding as to the existence of a likelihood of confusion must be upheld, irrespective of the degree of distinctiveness of the earlier mark (see also paragraph 41 above and paragraphs 78 and 79 below). In those circumstances, the question whether the earlier mark ME is allusive and therefore distinctive to a below average degree, as the Board of Appeal found, or is distinctive to an average degree, as the intervener asserts, does not in any way affect the legality of the contested decision.
69 In any event, the intervener’s line of argument does not contain any element from which it may be concluded that the earlier mark is distinctive to at least an average degree. In this respect, it must be held, as the Board of Appeal found, that that mark has a weak distinctive character, given that the term ‘me’ may be regarded as allusive to fashion items which reflect the personality of the user.
The global assessment of the likelihood of confusion
70 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, 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).
71 Applying the principle of interdependence, the Board of Appeal found that, taking into account all the relevant factors, in particular the similarity of the goods in question and the similarity of the signs at issue, and notwithstanding the below average degree of distinctiveness of the earlier mark, there was a likelihood of confusion at least for part of the relevant public. The fact that the common element of the marks, namely the term ‘me’, which was the only element of the earlier mark, was fully contained in the mark applied for and would be remembered by the relevant public as an independent element, was also a relevant factor in the Board of Appeal’s assessment. According to the Board of Appeal, in view of those factors, in so far as the relevant public would remember the word element ‘me’ of the earlier mark when faced with goods of the same type as those covered by the mark applied for, in which it would clearly identify the common element ‘me’, that public would likely believe that those goods have the same commercial origin. In addition, having regard to the fashion sector in which undertakings use secondary marks to distinguish one product range from another or the ampersand ‘&’ to designate co-branding arrangements, the Board of Appeal could not rule out the possibility that the relevant consumers would perceive the mark applied for to be a variant or a sub-brand of the earlier sign associated with a specific product range, or to be the result of a co-branding initiative in which that mark is involved.
72 The applicant submits, in essence, that, since the common element ‘me’ of the marks at issue has a weak distinctive character, the similarity between them resulting from that element is insufficient to mean that there is a likelihood of confusion.
73 Moreover, the applicant claims that the Board of Appeal failed to take into account other cases, in particular concerning the earlier mark ME and marks similar to the one applied for in the present case, in which EUIPO did not find any likelihood of confusion.
74 EUIPO and the intervener dispute the applicant’s arguments.
75 In the first place, contrary to what is argued by the applicant, the fact that the element ‘me’ is regarded as weakly distinctive is insufficient to rule out a likelihood of confusion.
76 In that regard, it should be noted that the finding of a weak distinctive character of the earlier mark does not prevent a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited; see also, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 55).
77 Conversely, to give priority to the weak distinctive character of a mark in the assessment of the likelihood of confusion would lead to the conclusion that, where a mark has only a weak distinctive character, a likelihood of confusion would exist only where the mark applied for reproduced that mark entirely, whatever the degree of similarity between the marks at issue. Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation 2017/1001 (judgment of 25 April 2018, Perfumes y Aromas Artesanales v EUIPO – Aromas Selective (Aa AROMAS artesanales), T‑426/16, not published, EU:T:2018:223, paragraph 108; see also, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 41 and the case-law cited).
78 In the present case, the Board of Appeal, while acknowledging the weak distinctive character of the earlier mark, correctly relied on relevant and sufficient grounds in concluding that there was a likelihood of confusion, namely, in particular, the fact that the common element ‘me’, which is the only element of the earlier mark, is fully contained in the sign applied for. Indeed, the earlier mark included in its entirety in the mark applied for will not be concealed, or diminished, but will be sufficiently recognisable in that mark (see, to that effect and by analogy, judgment of 14 June 2017, Aydin v EUIPO – Kaporal Groupe (ROYAL & CAPORAL), T‑95/16, not published, EU:T:2017:388, paragraph 74 and the case-law cited). The presence of the ampersand ‘&’, which separates and therefore highlights the two word elements of the mark applied for, reinforces that impression. Furthermore, the additional elements ‘he’ and ‘&’ in the mark applied for are, at most, weakly distinctive and, in any event, not more distinctive than the common element ‘me’.
79 The Board of Appeal was also right to take into account the similarities between the marks at issue and between the goods covered by them. The marks at issue are similar overall, because they are visually and phonetically similar to an average degree, even though it should be noted that they are conceptually similar only to a low degree. The goods covered by the marks at issue are partly identical and partly similar to an average degree.
80 Accordingly, those relevant factors, taken as a whole, support the finding that there is a likelihood of confusion.
81 In the second place, as regards the previous decisions of EUIPO to which the applicant refers, it is sufficient to note that EUIPO is required to decide on the basis of the circumstances of each particular case and that it is not bound by previous decisions taken in other cases. The legality of the decisions of the Board of Appeal must be assessed solely on the basis of Regulation 2017/1001 and not on the basis of a previous decision-making practice. Furthermore, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65; see also, to that effect, judgment of 22 April 2008, Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 48).
82 Consequently, it must be held that, following a global assessment, the Board of Appeal was right to find that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
83 In the light of all of the foregoing considerations, since the single plea in law raised by the applicant cannot be upheld, the action must be dismissed.
Costs
84 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.
85 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.
86 The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener for the purposes of the proceedings before the Board of Appeal. In that regard, it suffices to state that, since this judgment dismisses the action brought against the contested decision, point 2 of the operative part of that decision continues to govern the costs incurred in the course of the appeal proceedings before EUIPO (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Canai Technology Co. Ltd to pay the costs.
Delivered in open court in Luxembourg on 1 March 2023.