JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 July 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark VIDEO MOOD Digital Signage, made easy – Earlier EU figurative mark MOOD:MIX – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑664/22,
Mood Media Netherlands BV, established in Naarden (Netherlands), represented by A.‑M. Pecoraro, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Tailoradio Srl, established in Milan (Italy), represented by A. Sobol and S. Bernardini, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and J. Schwarcz, Judges,
Registrar: V. Di Bucci,
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, Mood Media Netherlands BV, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 August 2022 (Case R 1852/2018-5) (‘the contested decision’).
Background to the dispute
2 On 11 December 2016, the intervener, Tailoradio Srl, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark applied for designated services in Classes 35 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
– Class 35: ‘Advertising, marketing and promotional services’;
– Class 42: ‘IT services’.
4 On 15 March 2017, the applicant 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 on the following earlier EU figurative mark:
6 The earlier mark designated, inter alia, services in Classes 35 and 42, and corresponded, for each of those classes, to the following description:
– Class 35: ‘Advertising, including on-line advertising on a computer network; Market research and market analysis; Opinion polling and Statistical studies; Rental of advertising equipment, space and media (including online on a global communications network such as the Internet); Business consultancy and information; Organisation of events, exhibitions and trade fairs for commercial or advertising purposes; Bill-posting services; Publication of publicity texts; Professional consultancy relating to advertising and promotion; Dissemination, including online, of advertising matter and direct mail advertising; Services relating to advertising by the dissemination of recorded messages, sounds and/or images and videos; Layout services for advertising purposes, Drafting and publication of publicity texts; Sales promotion (for others); Presentation of goods on communication media, for retail purposes; Public relations services; Business administration; Office functions; Business auditing; Computerised file and computerised database and data bank management; Compilation and management of on-line computer databases and on-line searchable databases; Demonstration of goods via communications networks; Business management and organisation consultancy provided via computer networks and communications networks; Business management; Advertising and marketing services, namely, promoting the goods and services of others via computer networks, wireless networks and global communication networks; Delivering advertisements and promotional materials to others via electronic mail and over computer networks, wireless networks and global communication networks; Marketing analysis and consultancy; Marketing studies; Advice relating to marketing management; Preparation of marketing plans; Provision of information relating to marketing; Advertising management’;
– Class 42: ‘Consultancy relating to space planning and technical fitting-out of these spaces for the projection of video, audio and visual content and the dissemination of olfactory content; Computer services, namely design of computer software, software packages and computer hardware; Software maintenance and updating, Computer programming and computer Systems analysis; Design, testing, research, technical support (engineering) and providing of information relating to data storage, backup Systems, computer hardware, computing Systems for storage and backup purposes, computer software, telecommunications software and wireless and mobile communications devices; Computer software Consulting, Maintenance of software; Computer programming; Application service provider services, Design (development) of computer software for the creation, downloading, transmission, reception, editing, extraction, encoding, decoding, display, storage and organising of texts, sounds, graphic illustrations, images and electronic publications; Graphic design for the compilation of web pages on the internet; Creation and management of websites and internal network sites; Hosting websites for others; Providing search engines for obtaining data via communications networks; Providing search engines for obtaining data on a global computer network; Providing of information and consultancy relating to all the aforesaid services; Creation, for others, of websites (in particular online information directories); Providing of search engines for obtaining information on a global computer network connected to the internet; digital imaging services’.
7 The ground relied on in support of the opposition was that set out 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), as amended (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)).
8 On 11 July 2018, the Opposition Division upheld the opposition and rejected the application for registration in respect of the services referred to in paragraph 3 above on the ground that there was a likelihood of confusion between the earlier mark and the mark applied for.
9 On 19 September 2018, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal annulled the decision of the Opposition Division and, on the basis of Article 8(1)(b) of Regulation No 207/2009, ruled out the existence of a likelihood of confusion on the part of the relevant public.
11 In essence, the Board of Appeal found that the relevant public was composed of both business operators and end consumers, whose level of attention varied from average to high. The Board of Appeal also decided to focus its assessment on the non-English-speaking part of the relevant public. Next, the Board of Appeal found that the services at issue were identical. As regards the comparison of the marks at issue, the Board of Appeal found that they coincided solely in the word element ‘mood’, which was understood by the relevant public and had a rather weak distinctive character in relation to the services at issue. The Board of Appeal also concluded that the marks at issue were visually, phonetically and conceptually similar to a low degree. Furthermore, the Board of Appeal noted that the earlier mark had an average or normal degree of inherent distinctiveness in relation to the services at issue. Following an overall assessment, the Board of Appeal concluded that there was no likelihood of confusion.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs of the present proceedings and of the previous stages.
Law
15 Given the date on which the application for registration at issue was filed, namely 11 December 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
16 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
17 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
18 In that regard, it is apparent from that provision 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.
19 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).
20 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).
21 In the present case, next, it should be noted that the applicant divided its plea into two parts, alleging, as regards the first, errors made in the assessment, at the stage of the comparison of the marks at issue, of the distinctive character of the word element ‘mood’ common to the mark applied for and the earlier mark and, as regards the second, alleging errors in the global assessment of the likelihood of confusion.
22 By contrast, the applicant does not dispute the assessments made by the Board of Appeal as regards the other conditions for the application of Article 8(1) (b) of Regulation No 207/2009.
23 In particular, the applicant does not call into question the Board of Appeal’s assessment relating to the definition of the relevant public. In the present case, the Board of Appeal found that the advertising and information technology services at issue were intended for a public consisting mainly of professionals, but also the general public who may from time to time make use of some of those services. The Board of Appeal also found that the level of attention of the relevant public varied from average to high (see contested decision, paragraphs 41 to 43).
24 Similarly, the applicant does not dispute the Board of Appeal’s findings concerning the comparison of the services. In that regard, the Board of Appeal found that the services in Classes 35 and 42 covered by the mark applied for were identical to the services in those classes covered by the earlier mark (see contested decision, paragraphs 45 to 49).
25 The applicant also submits that it does not criticise the Board of Appeal’s assessment of the inherent distinctiveness of the earlier mark, which was found to be, at most, average in relation to the services in Class 35 and normal as regards the services in Class 42 (see contested decision, paragraphs 80 to 82).
26 There is no need to call into question the Board of Appeal’s assessments relating to the definition of the relevant public, the comparison of the services and the assessment of the inherent distinctive character of the earlier mark, which are rightly based on the factors referred to in that regard in the contested decision and are not, moreover, disputed by the parties.
27 It is in the light of those preliminary considerations that the arguments put forward by the applicant in support of its single plea must be examined.
The comparison of the marks at issue and the assessment of the distinctive character of the common word element ‘mood’
28 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).
29 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).
30 In the present case, the applicant disputes the Board of Appeal’s assessment of the distinctive character of the common word element ‘mood’. According to the applicant, it is arbitrary and incorrect to consider that that element describes the characteristics of the services at issue and the Board of Appeal cannot rely on the solution reached in another case. No obvious and systematic link can be found between a ‘mood’ and all the services covered by the earlier mark. The applicant submits that the Board of Appeal also wrongly departed from the Opposition Division’s analysis that the common element ‘mood’ had no meaning for the relevant non-English-speaking public. Account should also be taken of the distinctive character recognised for the term ‘mood’ in a judgment of the Tribunale ordinario di Milano (District Court, Milan, Italy) of 24 February 2022 in a trade mark law case between the applicant and the intervener.
31 EUIPO and the intervener dispute those arguments.
32 Before raising the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary for the Court to recall the content of the Board of Appeal’s assessment of their distinctive and dominant elements, in so far as that assessment constitutes the starting point for the applicant’s line of argument.
The distinctive and dominant elements
33 According to the 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).
34 With regard to the assessment of the dominant character of one or more given components of a composite 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 composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
35 In the present case, it is important to set out the various stages of the Board of Appeal’s reasoning as regards the assessment of the abovementioned factors.
36 In the first place, the Board of Appeal identified the various elements of the marks at issue in order to draw certain conclusions from that initial examination.
37 As regards the mark applied for, the Board of Appeal stated that that composite mark consisted of the word elements ‘VIDEO’ and ‘MOOD’, written in uppercase letters, figurative elements and a slogan. The Board of Appeal also found that the word element ‘video’ was written in grey letters, while the word element ‘mood’ was written in bold blue letters, that there were no punctuation marks between the two words and that, below that expression, the slogan ‘Digital Signage, made easy’ was written in smaller grey letters. The Board of Appeal also found that, next to those word elements, there was a figurative element representing a slightly stylised white letter ‘v’ inside a blue circle (see contested decision, paragraph 53).
38 As regards the earlier mark, first, the Board of Appeal stated that that composite mark consisted of the word elements ‘MOOD’ and ‘MIX’, written in black uppercase letters and separated by a red colon. Second, the Board of Appeal found that the word element ‘mood’ was written in bold letters and that there were no other figurative elements (see contested decision, paragraph 52).
39 At that stage, the Board of Appeal found that the marks at issue had the word element ‘mood’ in common. The Board of Appeal also stated that, like the Opposition Division before it, it would analyse the role played by that element in the light of its perception by the non-English-speaking part of the relevant public (see contested decision, paragraphs 54 to 56).
40 Those stages of the reasoning set out by the Board of Appeal are not criticised by the applicant, whose line of argument rather disputes the specific assessment of the role played by the common word element ‘mood’, which was carried out as a second step in the reasoning set out by the Board of Appeal in the contested decision.
41 In that regard, it must be pointed out that, in order to carry out that assessment, the Board of Appeal took as its starting point the definition of the word ‘mood’ provided by the online Oxford English Dictionary, according to which that term describes ‘a temporary state of mind or feeling’ linked, for example, to music (mood music).
42 It was in view of that definition that the Board of Appeal found that it was common practice for retailers to use music in the context of advertising in an effort to create a pleasant atmosphere and prompt consumers to make a purchase. According to the Board of Appeal, it is thus well known that music affects emotions, boosts happiness and reduces anxiety (see contested decision, paragraph 57).
43 Similarly, the Board of Appeal found that it was already apparent from the decision of the First Board of Appeal of EUIPO of 24 July 2020 (Case R 1767/2019-1), which concerned the same parties and related to an application for revocation of the applicant’s EU word mark MOOD MEDIA, that the Board of Appeal was of the opinion that the word ‘mood’ had, at most, a weak distinctive character as regards music and entertainment services and marketing and advertising services, and that that reasoning had subsequently been confirmed by the Court (judgment of 2 March 2022, Mood Media Netherlands v EUIPO – Tailoradio (MOOD MEDIA), T‑615/20, not published, EU:T:2022:109, paragraphs 33 to 35).
44 According to the Board of Appeal, it was therefore possible to find, in the light, in particular, of the evidence in the file, that emotions played a major role in the music sector and that the English term ‘mood’ was often part of standard terminology to describe emotional music. Irrespective even of the use of music, the Board of Appeal stated that it could not be disputed that modern advertising methods attempted to use the emotions of consumers in order to influence their purchases (see contested decision, paragraphs 57 to 60).
45 Furthermore, the Board of Appeal found that it was unlikely that a large part of the relevant public would not understand the meaning of the English word ‘mood’ and referred in that regard to paragraph 32 of the judgment of 2 March 2022, MOOD MEDIA (T‑615/20, not published, EU:T:2022:109). For the Board of Appeal, that word was part of basic English vocabulary known to professionals and was also understood by a large part of the relevant public, which had a command of that English vocabulary, in particular in the context of advertising or information technology. The Board of Appeal also noted that various items of evidence submitted by the intervener concerning national, international and EU trade marks, which contained the word ‘mood’, as well as the presence of that word in certain online dictionaries concerning, for example, French, Italian and Spanish, made it possible to establish that the relevant public was exposed to that word. Furthermore, according to the Board of Appeal, that word was simple and alluded to the characteristics of some of the services at issue (advertising services) or was commonly used in trade for services in Classes 35 and 42 (see contested decision, paragraphs 61 to 64).
46 It is thus in consideration, first, of the knowledge of the meaning of the term ‘mood’ by the non-English-speaking part of the relevant public and, second, of the rather weak distinctive character of that term in relation to the services at issue that the Board of Appeal concluded that that term could not be regarded as the distinctive element of the marks at issue (see contested decision, paragraph 64).
47 As regards the applicant’s criticisms of the foregoing reasoning, it must be stated at the outset that that reasoning cannot be regarded as arbitrary. The Board of Appeal set out in the contested decision the various reasons which enabled it to conclude that the common word element ‘mood’ had a weak distinctive character for the relevant public in the context of the services at issue. The applicant was thus in a position to understand those reasons and to criticise them before the Court.
48 Nor can it be claimed, as the applicant does, that the reasoning set out by the Board of Appeal in the contested decision as regards the specific assessment of the role played by the common word element ‘mood’ is incorrect.
49 In the context of the services at issue, which concern advertising, marketing and promotion or information technology, the term ‘mood’, the meaning of which in English is not disputed by the applicant, may indeed be perceived by the relevant public as a reference to a ‘temporary state of mind or feeling’.
50 The Board of Appeal was also entitled to rely on the decision of the First Board of Appeal of EUIPO of 24 July 2020 (Case R 1767/2019-1), relating to revocation proceedings between the intervener and the applicant, and the judgment of 2 March 2022, MOOD MEDIA (T‑615/20, not published, EU:T:2022:109) regarding that decision, or to illustrate its reasoning by referring to the link between the term ‘mood’ and music.
51 In that regard, it should be recalled that even though the Board of Appeal is not bound by its previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65), the Court of Justice has held that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the way in which those principles are applied must be consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 61 and the case-law cited).
52 In the present case, the Board of Appeal was therefore entitled to compare the present case to the case which had given rise to the decision of the First Board of Appeal of EUIPO of 24 July 2020 (Case R 1767/2019-1) and to the judgment of 2 March 2022, MOOD MEDIA (T‑615/20, not published, EU:T:2022:109), in so far as those cases both concerned the assessment of the role played by the word element ‘mood’ in the context of a mark covering services in Classes 35 and 42. There is nothing in the file or any argument put forward in that regard by the applicant to establish that the Board of Appeal did not carry out a stringent and full examination of the individual case before it by making such a comparison.
53 It was also possible for the Board of Appeal to rely on the reference made by the dictionary definition cited in the contested decision, which referred to mood music, to indicate that it was well known that music affects emotions. A well-known fact is one that is sufficiently known to be true so that it is not necessary to prove it (judgment of 16 February 2017, Antrax It v EUIPO – Vasco Group (Thermosiphons for radiators for heating), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 90). Moreover, the applicant does not put forward any argument capable of calling such a finding into question.
54 Furthermore, first, contrary to what the applicant claims, the Board of Appeal found that the common word element ‘mood’ had a rather weak distinctive character in relation to all of the services at issue, in particular since that term was commonly used in trade for services in Classes 35 and 42 (see contested decision, paragraph 64). The Board of Appeal was therefore fully in a position to find that the relevant public could make the connection between the term ‘mood’, the meaning of which it understood, and all the services covered by the marks at issue.
55 Second, the Board of Appeal cannot be criticised for departing from the reasoning set out in the decision of the Opposition Division against which the appeal had been brought. If the Board of Appeal could not depart from the reasoning followed by the Opposition Division, such a fact would deprive the appeal brought before it of any practical effect. The applicant’s argument must therefore be rejected.
56 Third, as regards the applicant’s reference to a judgment of the Tribunale ordinario di Milano (District Court, Milan) of 24 February 2022 in a case between the applicant and the intervener in trade mark law, it must be borne in mind that the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation No 207/2009, with the result that EUIPO, or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
57 In those circumstances, the Board of Appeal was right to find that the common word element ‘mood’, given that it was known to the non-English-speaking part of the relevant public, had a rather weak distinctive character in relation to the services at issue and could not be regarded as the distinctive element of the marks at issue.
58 Furthermore, contrary to what the applicant claims, it should also be noted that the reasoning set out by the Board of Appeal in the contested decision as regards the distinctive and dominant elements of the marks at issue was not limited to the assessment of the role played by the common word element ‘mood’.
59 As regards the word element ‘mix’ of the earlier mark and the word element ‘video’ of the mark applied for, the Board of Appeal found that those elements were easily understood by the non-English-speaking public of the European Union and that they were also descriptive of the services at issue. Consequently, the Board of Appeal stated that none of the word elements in the marks at issue was particularly distinctive in itself. On the contrary, the Board of Appeal stated that it was the overall impression created by the marks that had to be taken into consideration for the assessment of their distinctive character. It stated, in that regard, that other elements of those marks, such as the red colon in the earlier mark and the figurative element representing the stylised letter ‘v’ and the slogan in the mark applied for, also had to be taken into consideration (see contested decision, paragraph 65).
60 Furthermore, as regards the dominant elements of the marks at issue and which, moreover, is not disputed as such by the applicant, the Board of Appeal was right to find that, in the earlier mark, no element was considered to be more dominant than the others, whereas, in the mark applied for, the words ‘video’ and ‘mood’ were the dominant elements on account of their size (see contested decision, paragraph 67).
The visual, phonetic and conceptual comparison
61 First of all, it should be noted that the applicant’s line of argument seeking to call into question the Board of Appeal’s assessment relating to the similarity of the marks at issue is based solely on the alleged error committed by the Board of Appeal as regards the distinctive character of the common element ‘mood’. That line of argument was rejected in paragraphs 40 to 60 above.
62 Next, first, as regards the visual comparison, the Board of Appeal found that, taking into account, inter alia, the different word and figurative elements, the use of different colours and the weak distinctive character of the common element ‘mood’, the marks at issue had a low degree of similarity. In particular, the Board of Appeal stated that, even though the marks at issue had the word element ‘mood’ in common, that element could not be regarded as the distinctive element of those marks. Although that word was written, in both signs, in bold uppercase letters, it was written in different colours and its position was not the same from one mark to another (see contested decision, paragraphs 69 to 73).
63 Second, as regards the phonetic comparison, the Board of Appeal found that the marks at issue had a low degree of similarity. In particular, the Board of Appeal found that, although those marks coincided in the sound of the word ‘mood’, they differed in the sound of the word elements ‘mix’ and ‘video’ (see contested decision, paragraphs 74 and 75).
64 Third, as regards the conceptual comparison, the Board of Appeal found that the marks at issue were similar to a low degree on account of their reference to mood and video as regards the mark applied for and to mood and a mix or a mixture as regards the earlier mark (see contested decision, paragraphs 77 to 79).
65 In the present case, there is nothing in the file to show that the Board of Appeal did not correctly assess the visual, phonetic and conceptual similarity of the marks at issue.
66 It follows from the foregoing that the applicant is not justified in claiming that the Board of Appeal erred in its assessment of the similarity of the marks at issue.
67 It follows that the first part of the applicant’s single plea must be rejected as unfounded.
The likelihood of confusion
68 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).
69 In the present case, the Board of Appeal found that there was no likelihood of confusion between the mark applied for and the earlier mark on the part of the relevant public. For the Board of Appeal, even if the marks at issue covered identical services, it could not be held, as the Opposition Division had done before it, that the common word element ‘mood’ had distinctive and dominant character since that element, understood by the relevant public, rather had to be regarded as descriptive of the services at issue. In those circumstances, the Board of Appeal recalled that, although a similarity between the marks at issue could not automatically be ruled out on account of the fact that the marks coincided only in elements that were weakly distinctive, all the relevant factors had to be taken into account when comparing the signs, including the existence of an element with weak distinctive character and the question whether that element was of secondary importance in relation to the other elements of the signs. In view of the low degree of similarity between the marks at issue, the inherent distinctiveness of the earlier mark, which is normal for the services in Class 42 and, at most, average for the services in Class 35, and the level of attention of the relevant public, the Board of Appeal concluded that there was no likelihood that consumers would be misled as to the origin of the services purchased (see contested decision, paragraphs 86 to 90).
70 The applicant submits that the global assessment of the likelihood of confusion is based almost exclusively on the lack of distinctiveness of the common element ‘mood’. According to the applicant, the Board of Appeal should also have taken into account the inherent distinctiveness of the earlier mark and the identity of the services at issue. Even if the relevant public was capable of perceiving certain differences between the marks at issue, those differences were not sufficient to rule out a likelihood of confusion.
71 In that regard, it must be pointed out that the global assessment of the likelihood of confusion was not based solely on the assessment of the distinctive character of the word element ‘mood’ common to the mark applied for and the earlier mark, which was correctly found to be weak (see contested decision, paragraph 64), but also took into consideration other relevant factors, such as the level of attention of the relevant public, the identity of the services at issue, the low degree of visual, phonetic and conceptual similarity of the marks at issue and the normal or average degree of inherent distinctiveness of the earlier mark in relation to the services at issue.
72 Furthermore, the Board of Appeal also cannot be criticised for having taken into account, in the present case, the low degree of distinctiveness of the common word element ‘mood’, the meaning of which was understood by the relevant public and would then be regarded as descriptive of the services at issue. It should be borne in mind that, where the earlier trade mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists (see judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53 and the case-law cited).
73 Similarly, in accordance with the principle of the interdependence between the factors to be taken into consideration when examining the likelihood of confusion, it must be noted, as EUIPO rightly pointed out, that the ratio legis of trade mark law is to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other (judgment of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 117; see also, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 41).
74 It follows that excessive protection of a mark consisting of an element which, as in the present case, has weak distinctive character in relation to the services at issue could adversely affect the attainment of the objectives pursued by trade mark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such an element in the marks at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case (judgment of 18 January 2023, YOGA ALLIANCE INDIA INTERNATIONAL, T‑443/21, not published, EU:T:2023:7, paragraph 118).
75 In those circumstances, the Board of Appeal cannot be criticised for having taken into consideration, in the context of a global assessment of the likelihood of confusion on the part of the relevant public, inter alia, the fact that the only similarity between the composite marks at issue was the weakly distinctive common element ‘mood’.
76 The second part of the single plea in law relied on by the applicant must therefore be rejected as unfounded.
77 In the light of all of the foregoing considerations, since the single plea in law relied on by the applicant in support of its claims must be rejected, the action must be dismissed.
Costs
78 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.
79 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, as applied for by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that an oral hearing is convened, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.
80 The intervener also claimed that the applicant should be ordered to pay the costs incurred during the appeal and opposition proceedings. In that regard, without it being necessary to refer to Article 190(2) of the Rules of Procedure, under which only the essential costs incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraphs 193 and 194 and the case-law cited).
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Mood Media Netherlands BV to bear its own costs and to pay the costs incurred by Tailoradio Srl in the proceedings before the General Court;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Marcoulli | Frimodt Nielsen | Schwarcz |
Delivered in open court in Luxembourg on 26 July 2023.