JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 October 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark H/2 CAPITAL PARTNERS – Earlier EU figurative mark HCapital – Relative ground for refusal – Relevant public – Likelihood of confusion – Similarity of the signs – Similarity of the services – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑656/21,
H/2 Credit Manager LP, established in Stamford, Connecticut (United States), represented by S. Malynicz, Barrister-at-Law, and N. Schmitz, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Hcapital Partners SCR, SA, established in Lisbon (Portugal), represented by V. Stilwell de Andrade, lawyer,
THE GENERAL COURT (Third Chamber),
composed, at the time of the deliberations, of G. De Baere, President, G. Steinfatt and K. Kecsmár (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 based on Article 263 TFEU, the applicant, H/2 Credit Manager LP, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 July 2021 (Case R 1954/2019-5) (‘the contested decision’).
Background to the dispute
2 On 15 December 2017, the applicant filed an application for registration of an EU trade mark with EUIPO for the word sign H/2 CAPITAL PARTNERS.
3 The mark applied for covered services in Class 36 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, corresponding to the following description: ‘Financial services; financial affairs; corporate finance services; private equity services; capital, fund and trust investment services; investment services; investment management services; asset management services; financial research services; information, advisory and consultancy services relating to all the aforesaid.’
4 On 11 April 2018, the intervener, Hcapital Partners SCR, SA, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5 The opposition was based, inter alia, on the earlier EU figurative mark, filed on 1 August 2014 and registered on 30 January 2016 under number 13135231, reproduced below:
6 The services covered by the earlier mark are in Classes 35 and 36 and correspond, for the services in Class 36, to the following description: ‘Financial risk assessment services; Investment analysis; Financial investment analysis and stock research; Financial analyses; Preparation of financial reports; Planning of finances relating to taxation; Pension planning; Pension consultancy; Financial and monetary services, and banking; Financial information management and analysis services; Financial valuations; Financial consultancy and advisory services; Financial consultancy and insurance consultancy; Consultancy in relation to the granting of loans; Investment banking services; Financial planning; Provision of information relating to rates of exchange; Derivatives trading services; Interest rate risk management; Swaps of interest rates; Financial transaction services relating to interest rate; Computerised information services relating to investments; Provision of investment information; Portfolio investment management; Provision of financial information for professionals in the field of portfolio management, for portfolio management; Fund management; Financial fund management; Capital fund management; Fund investment management; Fund management services; Pension fund management; Corporate funds management; Management of a capital investment fund; Capital investment consultation; Capital investment; Provision of investment capital; Capital investment advisory services; Administration of capital investment services; Private placement and venture capital investment services; Arranging investments, in particular capital investments, financing services and insurance; Advisory services relating to (financial) risk management; Financial risk management services; Risk management consultancy (financial); Consultancy services relating to personal finance; Financial risk management services; Risk management consultancy (financial); Consultancy services relating to personal finance.’
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) 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 3 July 2019, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
9 On 3 September 2019, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001 in relation to all services covered by the mark applied for, included in Class 36, for a significant part of the public of the European Union. As regards the relevant public, the Board of Appeal found that it consisted of professionals in the financial sector and the public at large of the European Union. In addition, it found that the general public would be highly attentive with respect to the services at issue, since they generally involve substantial sums or have a direct impact on the economic and financial assets of consumers. As regards the comparison of the services at issue, it found that all the financial services covered by the mark applied for were identical to the services covered by the earlier mark, either clearly or because the term specified in the mark applied for fell under a broader category designated by the earlier mark. As regards the comparison of the marks, the Board of Appeal found that, visually, the two marks contained the letter ‘h’, which was placed at the beginning of each of them, rendering its impact greater, and which had no meaning in relation to the relevant services and was thus distinctive. The signs also shared the descriptive element ‘capital’, which would not be totally ignored in view of its length. The figurative element, present in the earlier mark and absent from the mark applied for, was not significant because the word elements of complex marks usually have a stronger impact, and in any event, it had an essentially ornamental function. Consequently, the marks at issue were visually similar to a ‘below-average’ degree. Phonetically, the Board of Appeal found that the signs were similar to an average degree. Lastly, from a conceptual point of view, the Board of Appeal found that the impact of the conceptual similarity would be very low in the absence of a determining conceptual difference. Furthermore, the earlier mark as a whole had an inherently normal degree of distinctive character. As regards the global assessment of the likelihood of confusion, the Board of Appeal stated that, in view of the abovementioned factors, and in particular the possibility of imperfect recollection, there was a likelihood of confusion on the part of the relevant public.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener 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 incurred in the present proceedings and in the proceedings before EUIPO.
Law
14 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea comprises, in essence, two parts.
15 The applicant complains that the Board of Appeal, first, erred in its definition of the relevant public for some of the services and, second, erred in failing to examine the signs at issue as respective wholes.
16 EUIPO and the intervener contend that both parts of the single plea should be rejected.
17 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
18 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).
19 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
20 It is in the light of the abovementioned principles that the present action must be examined.
The first part of the single plea in law, alleging an error in the definition of the relevant public for some of the services
21 In the first place, the applicant submits that the corporate finance services, private equity services, capital investment services and asset management services in Class 36, covered by the mark applied for, are not provided to the public at large but only to a professional public, typically large corporations, institutions and other business entities. Consequently, by conflating the perception of the general public, even one exercising more care and attention than usual, with that of the professional public that is targeted by the corporate finance, private equity, and capital investments services, the Board of Appeal erred as to the characteristics of the relevant consumer and the circumstances in which that consumer is typically exposed to the mark applied for.
22 In the second place, the applicant submits that the Board of Appeal, in finding that the services at issue were aimed at both a professional public and the general public, adopted the point of view of the least careful and attentive consumer, namely, that of the general public, which, even if it displays a high level of attentiveness, is not deemed to be as knowledgeable or careful as the professional public. The applicant submits that that approach is vitiated by error because, as regards the services referred to in paragraph 21 above, the Board of Appeal failed to take account of the attributes of the professional public alone, namely, the fact that it is likely to have specific knowledge of the services at issue and display a high level of attentiveness.
23 In the third place, the applicant claims that, for a professional public, as regards the services referred to in paragraph 21 above, the Board of Appeal was not entitled to rely on that public’s imperfect recollection of the marks at issue in order to conclude that there was a likelihood of confusion.
24 EUIPO and the intervener dispute the applicant’s arguments.
25 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
26 In that regard, it should also be borne in mind that, in accordance with settled case-law, for the purposes of the global assessment of the likelihood of confusion, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect image of them that he or she has retained in his or her mind (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 28).
27 Account must be taken of the fact that a restricted and specialist public is likely to have specific knowledge of the goods or services covered by the marks at issue or to display, in that regard, a higher level of attentiveness than the public at large. Those factors may play a decisive role in determining whether or not there is a likelihood of confusion between those marks (see judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 30 and the case-law cited).
28 In a situation where the services covered by the two marks at issue are intended for the same relevant public, which comprises both the general public and professionals, the public with the lowest attention level must be taken into consideration (see judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 27 and 28 and the case-law cited).
29 As a preliminary point, it must be noted that the Board of Appeal found, in paragraphs 35 to 38 of the contested decision, that the services covered by the mark applied for and those covered by the earlier mark were identical. That finding is not disputed by the applicant.
30 It is also apparent from the contested decision that the Board of Appeal found that the relevant financial services in Class 36 targeted the public at large and professionals in the financial sector. By contrast, the Board of Appeal did not specifically rule as to whether, among those services, there were services aimed solely at a professional public.
31 In that regard, as EUIPO correctly states, it must be noted that, contrary to what the applicant claims, the private equity services, capital investment services and asset management services in Class 36 may be offered also to the general public. Those services may be offered to private investors who do not necessarily have the status of professionals.
32 By contrast, the applicant is correct in claiming that the Board of Appeal erred in failing to find that the corporate finance services in Class 36 were aimed solely at the professional public.
33 However, it must be held that, even if the Board of Appeal had determined the relevant public and its level of attention in respect of the corporate finance services, taking that public into account would not have led the Board of Appeal to a different assessment of the likelihood of confusion.
34 It should be observed that, in paragraph 87 of the contested decision, the Board of Appeal considered the fact that, even for a professional public, account had to be taken of the fact that it only rarely has the chance to make a direct comparison between the marks at issue but has to place its trust in the imperfect picture of them that it has kept in mind. The Board of Appeal found that even a highly attentive public might believe, without directly confusing the signs, that the mark applied for concerned a sub-brand of the earlier mark designating another line of financial services.
35 In that regard, it must be borne in mind that, in accordance with Article 8(1)(b) of Regulation 2017/1001, the likelihood of confusion includes the likelihood of association with the earlier trade mark.
36 It is apparent from this that the Board of Appeal took into account the scenario of a highly attentive professional public in its assessment of whether there was a likelihood of confusion and that that reasoning applies also to the corporate finance services.
37 In that regard, the applicant submits that it is in the nature of, inter alia, the corporate finance services that details are checked and verified and that careful consideration over a prolonged period is such that a likelihood of confusion is most unlikely to occur. It disputes that, for a professional public, the Board of Appeal may rely on that public’s imperfect recollection of the marks at issue in order to conclude that there was a likelihood of confusion.
38 First, it should be noted that settled case-law, as cited in paragraph 26 above, applies to all the average consumers of the category of goods or services concerned and, in particular, to the professional public.
39 Moreover, it must be stated that what is concerned is the level of attention which the relevant public will display when examining the commercial origin of the goods or services at issue. The fact that the public in question will pay more attention to the identity of the producer or provider of the goods or services which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the average consumer only rarely has the chance to compare the various marks directly and must therefore rely on his or her imperfect recollection of them (see judgment of 13 March 2018, Kiosked v EUIPO – VRT (K), T‑824/16, EU:T:2018:133, paragraph 73 and the case-law cited).
40 Second, it should be noted that, as regards the highly attentive professional public, the Board of Appeal concluded that there was a risk that the mark applied for would be perceived as a sub-brand of the earlier mark. As has been stated in paragraph 35 above, the likelihood of confusion includes the likelihood of association with the earlier trade mark.
41 It suffices to observe that the applicant has not put forward any argument capable of calling into question that conclusion of the Board of Appeal.
42 It follows from the foregoing that the first part of the single plea in law must be rejected.
The second part of the single plea in law, alleging errors of assessment in the examination of the signs at issue
43 By the second part, the applicant claims, in essence, that, in the comparison of the marks at issue, the Board of Appeal failed to take into consideration those marks as respective wholes. The Board of Appeal engaged in an artificial and arbitrary exercise of excision, removing some parts of the marks at issue from their context and ignoring others. It made a distinction between what it called ‘elements’ which were not components with independent distinctiveness but at most ‘sub-components’, and it failed to accord significance to the figurative element of the earlier mark. That overly analytical and unrealistic approach led the Board of Appeal to make a large number of errors of assessment.
44 As a preliminary point, it should be borne in mind that 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).
45 Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
The distinctive and dominant elements of the signs at issue
46 The Board of Appeal found that the earlier mark was a figurative mark composed of the word element ‘hcapital’, depicted in lower-case letters, with the exception of the initial letter ‘h’ and the second letter ‘c’, in a rather standard bold typeface in the colour light blue. It also displayed, on the left side, a figurative element consisting of two geometric figures – which, joined together, would form a rectangle – one in light blue and the other in dark blue, separated by a zigzag diagonal line in white. It noted that the mark applied for consisted of the word element ‘h/2 capital partners’.
47 As regards the earlier mark, the Board of Appeal also found that the figurative element would be perceived mainly as a decorative element and that it was not liable majorly to attract the attention of the relevant public. It stated that the fact that that figurative element could be perceived as the representation of a stylised chart displaying a growing trend was not particularly relevant since otherwise it would be perceived as a mere combination of simple geometric figures. According to the Board of Appeal, that representation of a stylised chart did not preclude the earlier mark from being perceived as principally ‘hcapital’. It added that, although the colour combination of blue and white might not go completely unnoticed, it is only a simple variant of numerous combinations of colours used in trade.
48 The Board of Appeal found that the word element of the earlier mark would be perceived by the relevant public as the combination of the letter ‘h’ and the word ‘capital’. First, it found that, even though the word ‘capital’ was descriptive of the services at issue, it was nevertheless relevant for the purposes of the comparison of the signs on account of its length in relation to the element ‘h’. Second, it found that since the letter ‘h’ had no meaning and did not appear to be commonly used for the services in question, it was the most distinctive element of the earlier mark.
49 As regards the mark applied for, the Board of Appeal found that the words ‘capital’ and ‘partners’ had a descriptive meaning for the services at issue and that the word element ‘h/2’ had no apparent meaning in relation to the services at issue and was distinctive. It concluded that the element ‘h/2’ was the most distinctive element of the mark applied for, but that the elements ‘capital’ and ‘partners’, since they took up the major part of that mark and despite their obviously weak distinctiveness, made a significant contribution to the overall impression produced by that mark.
50 As a preliminary point, it must be noted that the applicant does not dispute the Board of Appeal’s assessment that the element ‘h/2’ is the most distinctive element of the mark applied for.
51 In the first place, the applicant submits that the figurative element of the earlier mark dominates the first impression, given that it is much bigger that the word element, is seen first, is not a secondary element, and is designed to be at the centre of the earlier mark. Furthermore, given that the words ‘hcapital’, ‘capital’ and ‘partners’ indicate a link with the financial sector, there would be no reason for the attention of consumers to be drawn by those elements.
52 By that argument, the applicant complains, in essence, that the Board of Appeal failed to find that the figurative element of the earlier mark was the dominant element of that mark.
53 First, it must be stated that the Board of Appeal did not find that, in the earlier mark, one element was more dominant than the others. Second, that argument is not capable of calling into question the Board of Appeal’s assessment that the figurative element of the earlier mark would be perceived mainly as a decorative element and therefore as being less distinctive than the word element of that mark.
54 Furthermore, the fact that the Board of Appeal did not consider the figurative element of the earlier mark to be the dominant element of that mark does not mean that it failed to take account of it in the comparison of the signs, in particular from a visual point of view.
55 Lastly, it must be borne in mind that 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).
56 Although the applicant refers to the descriptive nature of the word ‘capital’, inasmuch as it implies a link with the financial sector, it does not claim that it is a negligible element in the overall impression created by the earlier mark.
57 In that regard, it is apparent from the case-law cited by the applicant itself that, where certain elements of a mark are descriptive of the goods and services for which the mark is registered 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. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark (see judgment of 22 June 2010, CM Capital Markets v OHIM – Carbon Capital Markets (CARBON CAPITAL MARKETS), T‑563/08, EU:T:2010:251, paragraph 39 and the case-law cited).
58 In the second place, the applicant asserts that the Board of Appeal artificially dissected the letter ‘h’ from the word ‘capital’ in the earlier mark, in making the finding that the letter ‘h’ was the most distinctive element of that mark, and that the Board of Appeal should have regarded the element ‘hcapital’ as a single element and not as two separate elements.
59 In that regard, the applicant submits that the word element ‘hcapital’ in the earlier mark does not consist of two word elements but rather of a single letter which is not a common prefix or abbreviation combined with an English word. According to the applicant, the two elements would not have a concrete meaning for the average consumer such that he or she would break ‘hcapital’ down into two separate elements; rather, that consumer would regard it as a single element with no meaning. It adds that, when the letter ‘h’, which has almost no independent significance, is conjoined with the word ‘capital’, it forms ‘hcapital’, an unusual sign and a neologism that is difficult to pronounce.
60 According to the case-law, for the purpose of determining the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods 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, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easySTEP), T‑21/19, EU:T:2020:310, paragraph 65 (not published) and the case-law cited).
61 First of all, it should be noted that the applicant does not dispute that the word ‘capital’ is a basic English word, which exists also in other languages, and that it is descriptive of the services in question.
62 Next, it is apparent form the case-law that, when perceiving a word sign, the average consumer will break it down into word elements which, for him or her, suggest a concrete meaning (see judgment of 12 November 2008, ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 30 and the case-law cited).
63 Contrary to what the applicant claims, that case-law does not imply that each single element of a word element must have a concrete meaning.
64 In the present case, the relevant public of financial services that understands the meaning of the word ‘capital’ will perceive that that word is present in the element ‘hcapital’.
65 Furthermore, as EUIPO correctly submits, when seeing the figurative mark ‘hcapital’, the relevant public will notice the unusual presence of two upper-case letters at the beginning of the element ‘hcapital’, suggesting that the letter ‘h’ could be the initial letter of another word.
66 The Board of Appeal therefore correctly found, in paragraph 52 of the contested decision, that the vast majority of the relevant public would perceive the word element ‘hcapital’ of the earlier mark as the combination of the letter ‘h’ and the word ‘capital’.
67 In that regard, the applicant’s argument that the public that recognises the presence of the word ‘capital’ in the word element ‘hcapital’ will tend to perceive that element as an original neologism, even though the applicant admits that it has no meaning, cannot be upheld.
68 Accordingly, taking into account the weak distinctiveness of the figurative element on account of its essentially decorative function, the descriptive meaning of the word ‘capital’ and the fact that the letter ‘h’ has no meaning, in particular with regard to the services at issue, the Board of Appeal was fully entitled to find that the letter ‘h’ was the most distinctive element of the earlier mark.
69 Therefore, the applicant has not shown that the Board of Appeal erred in the identification of the distinctive and dominant elements of the mark applied for.
The comparison of the signs at issue
70 The applicant submits that the Board of Appeal did not carry out a comparison of the marks at issue by examining each of the marks as a whole. The Board of Appeal took into consideration a separate ‘h’ element, whereas there is no such separate element in the marks at issue and ‘h’ is one letter in the elements ‘hcapital’ and ‘h/2’. The applicant submits that the Board of Appeal erred in its assessment of the role and weight to be given to the letter ‘h’ in the comparison of the signs at issue.
– The visual comparison of the signs
71 In paragraphs 65 to 71 of the contested decision, the Board of Appeal found that the signs at issue had the letter ‘h’ in common, which was distinctive in both signs and which was, moreover, in the same initial position, bearing in mind that the initial part of a mark normally has a greater impact than the final part of that mark. The Board of Appeal also pointed out that the signs shared also the descriptive element ‘capital’, which would not be totally ignored in view of its length. By contrast, it found that the signs differed in the element ‘/2’, in the descriptive word ‘partners’ in the mark applied for and in the figurative element of the earlier mark. In addition, it found that, even though the character ‘/’ in the mark applied for did not constitute a considerable difference and could go unnoticed by a part, or even the majority, of the relevant public, it did have a certain visual impact, inasmuch as it separated the letter ‘h’ from the numeral ‘2’. Lastly, it stated that the figurative element of the earlier mark was not likely to make a significant impression on the consumers and that, given the essentially ornamental function of that element, the fact that it was not reproduced in the mark applied for was not sufficient to rule out any visual similarity between the signs at issue. Accordingly, the Board of Appeal concluded that the signs at issue were visually similar to a below-average degree.
72 As regards the earlier mark, the applicant criticises the Board of Appeal, first, for dissecting the letter ‘h’ from the word ‘capital’ and for failing to take account of the element ‘hcapital’ as a single element and, second, for failing to give any weight, or sufficient weight, to the figurative element of that mark, even though, in the applicant’s submission, from a visual perspective, that figurative element, due to its size and colour, occupies a significant position in the mark and is not overshadowed by the subsequent word element. The applicant claims that the Board of Appeal was not entitled to regard the letter ‘h’ as the initial part of that mark.
73 Furthermore, as regards the mark applied for, the applicant submits that the Board of Appeal failed to take account of the fact that ‘h/2’ was an element separate from the element ‘capital’, as opposed to the fact that the letter ‘h’ was conjoined with the word ‘capital’ in the earlier mark. According to the applicant, in the mark applied for, the letter ‘h’ is not an individual element but the first letter of a standalone element, ‘h/2’, which the relevant consumer would not break down. Lastly, the applicant complains that the Board of Appeal failed to take sufficient account of the word ‘partners’.
74 The applicant submits that the Board of Appeal failed to take account of the fact that the word elements of the signs at issue are different in their length and structure. It concludes that the Board of Appeal should have found that the visual similarity was not sufficient to influence the overall assessment of the similarity of the signs.
75 EUIPO and the intervener dispute the applicant’s arguments. It should be noted that the applicant does not claim that the signs at issue were visually different and that its arguments are not such as to call into question the Board of Appeal’s conclusion that the degree of similarity between the signs at issue was below average.
76 In any event, it should be noted that the applicant does not dispute that the word elements of the signs at issue begin with the letter ‘h’ written in upper case and contain the word ‘capital’. Those common points are sufficient to conclude that there is some visual similarity.
77 In that regard, the applicant does not explain the reasons why the fact that the element ‘hcapital’, in the earlier mark, ought to be regarded as a single element and that the element ‘h/2’ in the mark applied for is an element separate from the element ‘capital’ is capable of altering that assessment, which is the result of the presence, in the signs at issue, of the shared letters ‘h’ and ‘c’ ‘a’ ‘p’ ‘i’ ‘t’ ‘a’ and ‘l’.
78 Contrary to what the applicant claims, in paragraph 70 of the contested decision, the Board of Appeal took into consideration the differing elements of the signs at issue and found that they were insufficient to counterbalance the visual similarity created by the letters that those signs have in common. In that regard, it is sufficient to observe, as EUIPO submits, that, if the Board of Appeal had not taken into account the differences between the signs at issue resulting, first, from the presence of the figurative element in the earlier mark and, second, from the element ‘/2’ and the word ‘partners’ in the mark applied for, it would have found that there was a higher level of visual similarity.
– The phonetic comparison of the signs
79 In paragraph 73 of the contested decision, the Board of Appeal found that the pronunciation of the signs concurred in their initial letter ‘h’, which was the most distinctive element of the earlier mark and the beginning of the most distinctive element ‘h/2’ of the mark applied for. It stated that the signs also shared the sound of the descriptive element ‘capital’, in so far as it would be pronounced by a part of the public. By contrast, it found that the signs differed in the sound of the numeral ‘2’ and in the descriptive element ‘partners’. According to the Board of Appeal, even though the different elements would be noticed and would create differences in sound, intonation, length and the number of syllables, those differences were not sufficient to differentiate the signs decisively in the overall phonetic impression that they produced, given that at least part of the relevant public would regard ‘h’ and ‘capital’ as an element of phonetic similarity. It concluded that the signs were phonetically similar to an average degree.
80 The applicant claims that for financial services the phonetic impression is less important than the visual impression. It criticises the Board of Appeal for failing to carry out an analysis by phonetically comparing the sound and sequence of the syllables of the two marks. According to that analysis, in the applicant’s submission, there is only one syllable which sounds the same and is in the same position in the sequence, whereas the mark applied for has six syllables. The applicant thus claims that the Board of Appeal should have found that there was a low degree of phonetic similarity.
81 EUIPO and the intervener dispute the applicant’s arguments.
82 First, it should be observed that the applicant’s argument that the phonetic similarity is less important than the visual similarity is irrelevant as regards the question whether the Board of Appeal erred in the phonetic comparison of the signs at issue.
83 Furthermore, contrary to what the applicant claims, the fact that the Board of Appeal found that the signs at issue were visually similar to a below-average degree and phonetically similar to an average degree does not mean that it gave greater weight to the phonetic similarity in its global assessment of the likelihood of confusion. In that regard, it is not apparent from the contested decision that the Board of Appeal gave greater weight to the phonetic similarity than to the visual similarity in its assessment of the likelihood of confusion.
84 In any event, as EUIPO submits, that argument of the applicant is not substantiated and, given that the public will discuss the different service providers before contacting them, the phonetic factor is of at least the same importance as the visual factor.
85 Second, although the Board of Appeal did not compare the phonetic sequence according to the method proposed by the applicant, it does not follow that the Board of Appeal’s reasoning and assessment are incorrect. In that regard, it is sufficient to observe that the differences in the pronunciation of the signs at issue referred to by the Board of Appeal, resulting from the presence of the numeral 2 and the word ‘partners’ in the mark applied for, are not capable of calling into question the similarities resulting from the fact that the letter ‘h’ and the word ‘capital’ will be pronounced in the same way in the signs at issue and that, therefore, the four syllables forming the earlier mark are identical to four of the seven syllables of the mark applied for.
86 In the light of the foregoing considerations, the Board of Appeal did not make an error of assessment in finding that there was an average degree of phonetic similarity.
– The conceptual comparison of the signs
87 Conceptually, first, the Board of Appeal found, in paragraph 77 of the contested decision, that neither the element ‘h’ nor the element ‘h/2’ had any meaning. Second, it found, in paragraph 78 of the contested decision, that the signs at issue would be associated with the same weak concept related to the element ‘capital’. According to the Board of Appeal, the public would perceive the earlier mark’s figurative elements essentially as being embellishing secondary elements, whether or not they are perceived as a chart displaying a growing trend. Consequently, the Board of Appeal concluded that the signs shared the same weak notion and that there was a conceptual similarity which could not, however, be given too much weight given its very low impact. Lastly, the Board of Appeal added, in paragraph 79 of the contested decision, that the signs differed in the concept attached to the descriptive notion conveyed by the element ‘partners’, which, however, would not be such as to give rise to a determining conceptual difference.
88 The applicant submits that the Board of Appeal should have held that there was no conceptual similarity between the signs at issue. The Board of Appeal artificially dissected the signs at issue, in particular in so far as it took into account the letter ‘h’ and the word ‘capital’ in the earlier mark as though they were separate elements as opposed to a single element. According to the applicant, the Board of Appeal should have found that the element ‘hcapital’ had no meaning. In addition, it submits that the Board of Appeal erred in its analysis by failing to consider that, in the mark applied for, the word ‘partners’ qualified the word ‘capital’ in a manner which would be well understood by the highly attentive average consumer of the services at issue and by failing to take into account the conceptual difference imbued by the inclusion of the word ‘partners’. In the applicant’s submission, the expression ‘h/2 capital partners’ does not convey a semantic content analogous to that of the earlier mark.
89 EUIPO and the intervener dispute the applicant’s arguments.
90 First, for the reasons set out in paragraphs 61 to 66 above, the Board of Appeal was fully entitled to find that the vast majority of the relevant public would perceive the word element of the earlier mark as the combination of the letter ‘h’ and the word ‘capital’. Furthermore, the applicant does not dispute that the element ‘h’ has no meaning and that the word ‘capital’ will be understood by the relevant public as being descriptive of financial services. Thus, the Board of Appeal was entitled to find that the signs at issue had a certain conceptual similarity on account of the presence of the word ‘capital’.
91 Second, the Board of Appeal found that the presence of the word ‘partners’ in the mark applied for, which describes relationships of association or partnership by suggesting positive connotations of reliability and continuity in that regard, in particular in the financial sector, and which is also descriptive of financial services, did not create any significant conceptual difference which could make it possible to distinguish between the signs at issue. Contrary to what the applicant claims, it is apparent from this, first, that the Board of Appeal took into consideration the presence of the word ‘partners’ in the mark applied for and, second, that, by explaining that that word associated with the word ‘capital’ was not sufficient to create a determining conceptual difference from the word ‘capital’, it found that the word ‘partners’ qualified the word ‘capital’.
92 In that regard, it must be observed that the applicant fails to explain what difference there is between the word ‘capital’ and the expression ‘capital partners’ that would lead to the conclusion that there was no conceptual similarity, in so far as both of those concepts refer to financial services.
93 Therefore, the Board of Appeal did not err in finding that there were no determining conceptual differences which would make it possible to distinguish between the signs at issue.
The global assessment of the likelihood of confusion
94 It is apparent from settled case-law that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (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).
95 In paragraphs 86 to 89 of the contested decision, in view of the principles of interdependence and imperfect recollection, the identity of the services at issue, the similarities between the signs that clearly outweighed their differences, and the earlier mark’s normal degree of distinctiveness, the Board of Appeal concluded that it was likely that a significant part of the relevant public could indeed be led to believe that the services came from the same undertaking or from economically linked undertakings. It added that even a highly attentive public might believe, without directly confusing the signs at issue, that the mark applied for concerned a sub-brand of the earlier mark designating another line of financial services. Accordingly, the Board of Appeal concluded that there was a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001 in relation to all contested services covered, included in Class 36, for a significant part of the public of the European Union.
96 It suffices to observe that the applicant does not put forward any new argument of such a nature as to call that conclusion into question.
97 It follows that the second part of the single plea in law must be rejected as unfounded and, consequently, that the action must be dismissed in its entirety.
Costs
98 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.
99 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.
100 In addition, the intervener has claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In that regard, it suffices to note that, since this judgment dismisses the action brought against the contested decision, paragraph 4 of the operative part of that decision continues to govern the costs incurred in the course of the opposition proceedings and in 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 (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders H/2 Credit Manager LP to pay the costs.
Delivered in open court in Luxembourg on 12 October 2022.