JUDGMENT OF THE GENERAL COURT (First Chamber)
21 November 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark tec.nicum — Earlier national figurative mark TECNIUM — Relative ground for refusal — Likelihood of confusion — Similarity of the services — Similarity of the signs — Article 8(1)(b) of Regulation (EU) 2017/1001 — Genuine use of the earlier mark — Point (a) of the second subparagraph of Article 18(1) and Article 47(2) and (3) of Regulation 2017/1001 — Form differing in elements which do not alter the distinctive character — Evidence submitted for the first time before the General Court)
In Case T‑527/18,
K.A. Schmersal Holding GmbH & Co. KG, established in Wuppertal (Germany), represented by A. Haudan, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Tecnium, SL, established in Manresa (Spain), represented by E. Sugrañes Coca, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 June 2018 (Case R 2427/2017‑5), relating to opposition proceedings between Tecnium and K.A. Schmersal Holding,
THE GENERAL COURT (First Chamber),
composed of V. Valančius (Rapporteur), acting as President, J. Svenningsen and U. Öberg, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 6 September 2018,
having regard to the response of EUIPO lodged at the Court Registry on 30 January 2019,
having regard to the response of the intervener lodged at the Court Registry on 17 January 2019,
further to the hearing on 10 September 2019,
gives the following
Judgment
I. Background to the dispute
1 On 9 January 2015, the applicant, K.A. Schmersal Holding GmbH & Co. KG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was applied for are in, inter alia, Class 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 correspond to the following description: ‘Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software’.
4 The trade mark application was published in Community Trade Marks Bulletin No 12/2015 of 20 January 2015.
5 On 16 April 2015, the intervener, Tecnium, SL, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based on the following earlier Spanish figurative mark:
7 That mark, lodged on 6 March 2000 and registered on 22 January 2001 under No 2297058, covers services in Class 42 corresponding to the following description: ‘Engineering services; scientific and industrial research; graphic design and industrial drawing; computer programming’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9 On 30 November 2016, the applicant made a request under Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) that the intervener be required to furnish proof of genuine use of the earlier mark.
10 By decision of 26 September 2017, the Opposition Division upheld the opposition.
11 On 14 November 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
12 By decision of 21 June 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, after having determined that the period in respect of which genuine use of the earlier mark had to be demonstrated ran from 20 January 2010 to 19 January 2015 (‘the relevant period’), the Board of Appeal assessed the proof of genuine use of that mark furnished by the intervener, and found that such use of the mark during the relevant period had been established, but solely in respect of some of the services in Class 42 covered by that mark, namely those corresponding to the following description: ‘Engineering services; industrial drawing’. In the second place, the Board of Appeal held, in essence, that the relevant public is composed of both professional consumers and the general public, that the services at issue are in part identical and in part similar and that the signs at issue are visually, phonetically and conceptually similar. It concluded that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
II. Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
A. Documents presented for the first time before the Court
15 The applicant attached, as an annex to the application, a set of documents consisting of extracts from internet sites designed, in essence, to support its claims that, first, the Board of Appeal’s definition of the relevant public in the contested decision is incorrect and, second, there is no similarity between the signs at issue.
16 EUIPO contends that those documents must be declared inadmissible as they were not submitted during the proceedings before it. Furthermore, EUIPO submits that some of those documents must also be disregarded since they are not accompanied by translations into the language of the case.
17 In the present case, it must be noted that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 72(2) of Regulation 2017/1001, according to which ‘the action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the TFEU, infringement of this Regulation or of any rule of law relating to their application or misuse of power’. It is apparent from that provision that facts not submitted by the parties before the departments of EUIPO cannot be submitted at the stage of the action brought before the Court. The Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of EU law made by that Board of Appeal, particularly in the light of facts which were submitted to the latter. By contrast, the Court cannot carry out such a review by taking into account matters of fact newly produced before it (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 54). It is not the Court’s function, therefore, to review the facts in the light of evidence produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
18 In so far as the documents referred to in paragraph 15 above were submitted for the first time before the Court, a fact which the applicant acknowledged at the hearing, they cannot be taken into consideration for the purposes of reviewing the legality of the contested decision and must therefore be disregarded without any need to determine whether a translation of some of those documents would have been necessary for the proper conduct of the proceedings.
B. Substance
19 In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, and, second, infringement of Article 8(1)(b) of Regulation 2017/1001.
1. The first plea in law, alleging infringement of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001
20 In the context of its first plea, the applicant claims that the Board of Appeal erred in finding that the earlier mark had been put to genuine use in respect of the services in Class 42 corresponding to the description ‘engineering services; industrial drawing’. According to the applicant, the forms in which the intervener used the earlier mark were very different from the earlier mark in the form in which it was registered, with the result that that mark was used in a form which altered its distinctive character within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.
21 EUIPO and the intervener dispute the applicant’s arguments.
22 In accordance with settled case-law, it is apparent from Article 47(2) and (3) of Regulation 2017/1001, read in the light of recital 24 of Regulation 2017/1001, and from Article 10(3) of Delegated Regulation (EU) 2017/1430 supplementing Regulation No 207/2009 and repealing Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1) that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. By contrast, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see, to that effect, judgment of 17 January 2013, Reber v OHIM — Wedi & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
23 Under the combined provisions of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 and of Article 47(2) and (3) of Regulation 2017/1001, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition to an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see, by analogy, judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).
24 The purpose of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 is to avoid imposing strict conformity between the used form of the trade mark and the form in which that mark was registered and to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect and by analogy, judgment of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50).
25 A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and on the relative position of the different elements within the arrangement of the trade mark (see judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited; judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 30).
26 In the present case, it is necessary to examine whether, in the light of the rules set out in paragraphs 22 to 25 above, the differences between the sign in the form in which it was registered and the sign in the forms used on the market by the intervener are such as to alter the distinctive character of the earlier mark in the form in which it was registered.
27 In the first place, it must be held that the earlier mark, as registered and reproduced in paragraph 6 above, is a composite mark composed of a word element and a figurative element. The word element ‘tecnium’ is depicted in white capital letters on a black background in the shape of a square and positioned in the lower part of that square. The figurative element consists of that black square, within which there is also a white circle which takes up its central and upper parts. In that white circle an Erlenmeyer flask is depicted on which the capital letter ‘t’ is positioned. That letter ‘t’ is located in the centre of the figurative element.
28 In the second place, with a view to proving genuine use of the earlier mark, the intervener submitted various sets of documents in the proceedings before EUIPO.
29 A first annex submitted by the intervener contains invoices, the majority of which were issued during the relevant period, on which the earlier trade mark, as registered, is reproduced in the upper left corner.
30 A second annex submitted by the intervener, which is intended to establish its participation in the 2011 and 2014 exhibitions of the international chemical trade fair ‘Expoquimia’ which takes places every three years in Barcelona (Spain), contains, inter alia, documents which include the following figurative sign:
31 A third annex submitted by the intervener contains various brochures which present its activities, one of which is dated from the relevant period and contains the following figurative sign:
32 In the third place, it must be borne in mind that, in the case where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer in the relevant public will more easily refer to the goods in question by citing the word elements rather than by describing the figurative elements of the mark (see judgment of 12 March 2014, PALMA MULATA, T‑381/12, not published, EU:T:2014:119, paragraph 38 and the case-law cited). As regards the earlier mark, it will be referred to using the word element ‘tecnium’.
33 In the present case, it must be held that the earlier mark draws its distinctiveness primarily from its word element. However, it should also be considered that it cannot be excluded that the representation of an Erlenmeyer flask, positioned at the centre of the sign on which the capital letter ‘t’ is written, may be capable of distinguishing the services covered by the earlier mark from those of other undertakings and, therefore, of also contributing to the distinctiveness of that mark. Thus, the view must be taken that the other components of the figurative element of that mark, namely a black square, within which there is a white circle, essentially serve as a framework to highlight both the presence of the word element ‘tecnium’ and that of the representation of an Erlenmeyer flask on which the capital letter ‘t’ is written.
34 As regards the sign used on the documents contained in the first annex submitted by the intervener, it must be noted that, contrary to what the applicant claims, the fact that the company name or the trade name of the proprietor of the earlier mark is also depicted to the right of the representation of that mark is not such as to alter the distinctive character since the earlier mark may clearly be perceived independently in a form which does not differ from that in which it is registered.
35 In respect of the sign used on the documents contained in the second and third annexes submitted by the intervener, it must be observed, as noted by the Board of Appeal, that the differences between the forms in which the earlier mark is used and that in which it was registered do not alter the distinctive character of that mark.
36 It must be observed that the only difference between the sign used in the documents contained in the second annex submitted by the intervener and the earlier mark is the use of the dark blue colour instead of the colour black. That minor change, which is principally ornamental and is in no way distinguished by its originality, is not such as to alter the distinctive character of the earlier mark as registered.
37 As regards the differences between the sign used in the documents contained in the third annex submitted by the intervener and the earlier mark, which more specifically arise from a change in position of the word element ‘tecnium’, passing from the inside of the square to its exterior, from the use of the same typeface but of a larger size and from the use of the colour blue instead of the colour black, it must also be held that those changes are minor, being principally ornamental, that they are in no way distinguished by their originality and that, therefore, they do not change in any significant way the overall impression conveyed by the earlier mark as registered.
38 It follows from all of the foregoing that the Board of Appeal did not err in its assessment when it took the view that use of the earlier mark in the different forms used by the intervener should be regarded as use of the mark as registered, within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.
39 Consequently, the first plea in law must be rejected.
2. The second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
40 The applicant claims, in essence, that the Board of Appeal erred in concluding that there is a likelihood of confusion in so far as, first, the level of attention of the relevant public, composed solely of professional consumers, is higher than it was considered to be during the proceedings before EUIPO, second, the services covered by the marks at issue are not similar and, third, there is a low degree of similarity between the signs.
41 EUIPO and the intervener dispute the arguments put forward by the applicant.
42 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the 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 mark. Furthermore, pursuant to Article 8(2)(a)(ii) of Regulation 2017/1001, the term ‘earlier trade mark’ should be understood as referring to trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
43 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
44 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).
(a) The relevant public
45 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 or services 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).
46 The Board of Appeal took the view, in the contested decision, that, given the nature of the services concerned, the relevant public is composed both of professional consumers and of the general public with a high level of attention. It stated that, since the earlier mark was registered solely in Spain, the relevant public is Spanish.
47 The applicant criticises the Board of Appeal for having found that some of the services covered by the earlier mark could be targeted at the general public, whereas, according to the applicant, those services are directed exclusively at professional consumers, whose level of attention is, therefore, very high.
48 In the present case, it must be held that, even though the services in Class 42 covered by the earlier mark and corresponding to the description ‘engineering services; industrial drawing’ are indeed targeted at a limited and well informed public, consisting of, in particular, professionals, it cannot, however, be ruled out that the general public may also form part of the relevant public. In this respect, it must be noted that the wording of the services covered by the earlier mark is sufficiently widely phrased to include any kind of engineering service, such as, for example, the design and construction of individual houses aimed at the general public.
49 As regards the applicant’s argument relating to the intervener’s use of the earlier mark, which, according to the applicant, demonstrates an intention to address the services marketed by the intervener to professional consumers only, it must be observed that that argument is irrelevant. The relevant public must be defined on the basis of the list of goods and services as covered by the marks at issue and not on the basis of the commercial choices made by the proprietors of those marks.
50 In that regard, it is clear from settled case-law that the rights conferred or capable of being conferred by the marks at issue extend to each category of goods or services in respect of which those marks are protected or to each category of goods or services covered by the application for registration. The commercial choices made or which may be made by the proprietors of the marks at issue are factors which must be distinguished from the rights derived from those marks and may change, since they depend solely on the will of the proprietors of those marks. So long as the list of the goods covered by the marks at issue has not been amended, such factors cannot affect the relevant public to be taken into account in the assessment as to whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 (see judgment of 20 October 2011, Poloplast v OHIM — Polypipe (P), T‑189/09, not published, EU:T:2011:611, paragraph 32 and the case-law cited). Thus, even if the intervener intended to direct its activity towards professional consumers alone, that fact is irrelevant.
51 Consequently, the Board of Appeal was correct in finding that the relevant public could be composed of both professional consumers and the general public.
52 Regarding the level of attention of the relevant public, it must be noted that it is apparent from the case-law that the relevant public’s level of attention is likely to vary according to the category of goods or services in question, with the result that, in the case of everyday consumer goods, the average consumer’s level of attention is less than that paid to durable goods or, simply, goods of a higher value or intended for more exceptional use (see, to that effect, judgment of 10 October 2007, Bang & Olufsen v OHIM (Shape of a loudspeaker), T‑460/05, EU:T:2007:304, paragraph 33).
53 Thus, account should be taken of the fact that, in the light of the nature of the services concerned and, inter alia, their expensive nature and significant technical aspect, the average consumer will display a high level of attention when having recourse to such services. The objective characteristics of the services in question, which are, in essence, services relating to the research, analysis, design and production of various technical or industrial works and installations, mean that the average consumer has recourse to them only on a relatively exceptional basis, after careful examination and following precise, informed choices. However, since the services in question cannot be regarded as being high-tech services which the general public never uses, they cannot be regarded as being services aimed at a public with a very high level of attention.
54 Thus, the Board of Appeal did not make an error of assessment in finding that the relevant public demonstrates a high level of attention in respect of the services covered by the marks at issue.
(b) The comparison of the services
55 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
56 The Board of Appeal took the view that the ‘scientific and technological services and research and design relating thereto’ covered by the mark applied for include the ‘engineering services’ covered by the earlier mark, with the result that those services should be regarded as being identical. As regards the ‘industrial analysis and research services’ and the services consisting in ‘design and development of computer hardware and software’ covered by the mark applied for, the Board of Appeal held, in essence, that they are similar to the ‘engineering services’ covered by the earlier mark, since those two kinds of services are aimed at the same public, display a certain functional complementarity and can be offered by the same service providers and obtained through the same distribution channels.
57 The applicant disputes the Board of Appeal’s analysis as regards the similarity between the services covered by the mark applied for and the ‘engineering services’ designated by the earlier mark. According to the applicant, the ‘engineering services’ covered by the earlier mark are services which consist in the provision of technical solutions to specific problems, whereas the ‘scientific and technological services and research and design relating thereto’ and ‘industrial analysis and research services’ covered by the mark applied for consist in scientific research services which relate to abstract questions and are not intended to provide technical solutions to specific problems. As regards the services consisting in ‘design and development of computer hardware and software’ covered by the mark applied for, the applicant maintains that the provision of ‘engineering services’ does not entail the development of new computer programs. It concludes that the services respectively covered by the marks at issue are not similar.
58 First, it must be observed that ‘engineering services’ such as those covered by the earlier mark may be defined as being analysis, design and planning services, necessary for and prior to the completion of various works and developments or for the manufacture of various systems, equipment or goods. ‘Scientific and technological services and research and design relating thereto’ may, for their part, be defined as being services intended, more broadly, to conceptualise various projects in a technically in-depth manner. Thus, it must be held that, in view of the descriptions of the services concerned, the category of ‘scientific and technological services and research and design relating thereto’ covered by the mark applied for includes the narrower category of ‘engineering services’ covered by the earlier mark. In this respect, it must be noted that it follows from the case-law that services can be regarded as being identical when the services designated by the earlier mark are included in a more general category designated by the mark applied for (see, to that effect, judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
59 Thus, it must be held that the Board of Appeal did not err in finding that the ‘scientific and technological services and research and design relating thereto’ covered by the mark applied for and the ‘engineering services’ covered by the earlier mark are identical.
60 Second, the ‘industrial analysis and research services’ covered by the mark applied for may be defined as being services intended for the acquisition of new knowledge and skills with a view to developing new products, processes or services or to lead to a significant improvement of existing products, processes or services. Those services are generally provided by engineering firms or companies, whose activity may also consist in providing ‘engineering services’, such as defined previously and covered by the earlier mark. Moreover, those various services may be aimed at the same public and may share the same distribution channels.
61 Consequently, the Board of Appeal did not make an error of assessment in finding that the ‘engineering services’ covered by the earlier mark and the ‘industrial analysis and research services’ covered by the mark applied for are similar.
62 Third, the use of services consisting in ‘design and development of computer hardware and software’ covered by the mark applied for involves the application of scientific and technological knowledge and technologies which may be optimised by using the ‘engineering services’ covered by the earlier mark and, therefore, require use of such services. It follows that there is a link of complementarity between those different services, which are likely to be used together, by the same public, for the purpose of manufacturing computer hardware and developing software.
63 Thus, the Board of Appeal did not commit an error of assessment in finding that the ‘engineering services’ covered by the earlier mark and the services consisting in ‘design and development of computer hardware and software’ covered by the mark applied for are similar.
64 As regards the applicant’s argument that, in essence, the services covered by its application for registration relate to abstract questions and, therefore, differ from the services covered by the earlier mark, which, it claims, are limited to finding technical solutions to specific problems, it is appropriate to observe, in order to reject it, that that argument is based on an incorrect approach to the concept of industrial research. Although fundamental research includes experimental or theoretical work undertaken, in essence, to acquire new knowledge of the underlying foundations of phenomena and observable facts, without any direct practical application or use in view, industrial research, for its part, is aimed at the acquisition of new knowledge and skills for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services. However, the fact remains that both the services covered by the earlier mark and those covered by the mark applied for concern, principally, industrial research.
65 It follows from the foregoing that the Board of Appeal did not err in holding, in the contested decision, that the services at issue are in part identical and in part similar.
(c) The comparison of the signs
66 The global assessment of the likelihood of confusion must, in relation to 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 proceed to analyse 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).
67 Assessment of the similarity between two trade marks means more than taking just one component of a composite 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 in the memory of 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 similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
68 Moreover, it must be recalled that, according to settled case-law, two marks are similar where, from the point of view of the relevant public, they are at least in part identical as regards one or more relevant aspects (see judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑565/15, not published, EU:T:2016:518, paragraph 23 and the case-law cited).
(1) The distinctive and dominant elements
69 The distinctive character of an element making up a mark depends on 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 judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).
70 In order to establish the dominant character of an element making up a mark it is necessary to examine whether or not the overall impression conveyed to the relevant public by that mark is dominated by one or several elements of which it is composed. It is only if all the other elements making up the mark are negligible that the assessment of the similarity of the signs at issue can be carried out solely on the basis of the dominant element (see, to that effect, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that element 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 elements 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).
71 The Board of Appeal took the view, in the contested decision, that no element of the signs at issue could be regarded as being dominant to the extent of rendering the other elements negligible. It also found that the prefix ‘tec’ in both the signs at issue has a weak distinctive character in respect of the services of a technical nature covered by the marks in question, as well as, for the same reason, the component of the figurative element of the earlier mark representing an Erlenmeyer flask. It stated, however, that, in the presence of word and figurative elements, the first are, in principle, more distinctive than the second, because the average consumer in the relevant public will more easily refer to the services in question by citing the word elements than by describing the figurative elements of the signs at issue.
72 The applicant claims, in essence, that the word element ‘tecnium’ in the earlier mark has a weak distinctive character in regard to the services in Class 42 and that the component of the figurative element in that mark representing an Erlenmeyer flask is its dominant element. It also maintains that the word element ‘tec’ in the mark applied for is, taking into account the use of bold typeface, that mark’s dominant element.
73 In the present case, it is therefore necessary to examine whether, in view of the characteristics of the elements making up the signs at issue, the Board of Appeal correctly assessed the distinctive and dominant character of those elements.
74 With regard to the distinctive character of the constituent elements of the marks at issue, it must be stated that, even though the relevant public may understand that the word element ‘tecnium’ of the earlier mark and the word element ‘tec.nicum’ of the mark applied for refer, on account of the presence of the sequence of the letters ‘t’, ‘e’ and ‘c’, to the notion of technology (‘técnico’ in Spanish), that sequence of letters will nevertheless not be perceived by the relevant public as being capable of designating the services in Class 42 covered by those marks or a characteristic of those marks. The fact that the word element ‘tec’ may have a meaning for the relevant public does not necessarily allow the conclusion to be drawn that that term is descriptive of the services in question.
75 In that regard, it must be observed that, according to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑566/15, not published, EU:T:2016:517, paragraph 33 and the case-law cited).
76 However, in the present case, there is not a sufficiently direct and specific relationship between the meaning of the terms ‘tecnium’, ‘tec.nicum’ or that of the prefix ‘tec’ and the services covered by the marks at issue to enable the relevant public immediately to perceive, without further thought, a description of those services or of one of their characteristics. The mere fact that part of the relevant public might connect the word element ‘tec’ with the notion of technology, in terms of a set of processes specific to a science or a trade, is merely such as to confer on that element an evocative character and, thereby, to weaken its distinctive character.
77 It must therefore be held, as did the Board of Appeal, that the prefix ‘tec’, shared by the earlier mark and the mark applied for, has a weak degree of distinctiveness in regard to the services in Class 42 covered by those marks.
78 Contrary to what the applicant submits, the same conclusion must be drawn as regards the figurative element of the earlier mark representing an Erlenmeyer flask. It must be found, as did the Board of Appeal, that such a figurative element, which for the relevant public evokes technical work or scientific research, has a weak distinctive character in regard to the services in Class 42 covered by the earlier mark.
79 With regard to the dominant character of the elements comprising the marks at issue, it must be held that, in the mark applied for, the use of bold typeface to accentuate the prefix ‘tec’ of the word element ‘tec.nicum’ or that of a stylised dot to separate the components ‘tec’ and ‘nicum’ of that word element will be perceived solely as decorative elements, with the result that the relevant public will not perceive either of those elements as being visually dominant.
80 As regards the earlier mark, it must be held that, according to the overall impression created by it, the word element ‘tecnium’ does not have a dominant character, no more than the figurative element displaying an Erlenmeyer flask. Even though that figurative element occupies a slightly more significant position in the sign than does the word element ‘tecnium’, it must nonetheless be held that that fact is not, in any event, such as to render the word element ‘tecnium’ negligible. The view must therefore be taken that neither of those elements dominates the overall impression created by the earlier mark.
81 Finally, the Board of Appeal acted correctly in holding that the settled case-law, to the effect that, where a mark is composed of word and figurative elements, the former must, as a rule, be considered to be more distinctive than the latter, as the average consumer will more easily refer to the goods in question by citing the name of the mark rather than by describing the figurative element (see judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM — Staccata (QUARTODIMIGLIO QM), T‑76/13, not published, EU:T:2015:94, paragraph 53 and the case-law cited), may apply as regards the earlier mark and, therefore, that the word element of that mark will attract the average consumer’s attention more than its figurative element.
82 In the light of all the foregoing considerations, it must be held that the Board of Appeal correctly assessed the distinctive and dominant elements of the signs at issue.
(2) The visual similarity
83 The Board of Appeal found that there is an average degree of visual similarity between the signs at issue on account of the presence in both of them of the sequence of the letters ‘t’, ‘e’, ‘c’, ‘n’ and ‘i’ at the beginning of the signs and of the letters ‘u’ and ‘m’ at the end of the signs.
84 The applicant submits, in essence, that the signs at issue are visually different on account of the presence, in the earlier mark, of the capital letter ‘t’, positioned at the centre of the representation of an Erlenmeyer flask.
85 First, it must be held, as did the Board of Appeal, that the signs at issue each contain the word element ‘tecni’. Furthermore, it must be stated that, notwithstanding the presence of a dot between the letters ‘c’ and ‘n’ in the mark applied for, the signs at issue share the sequence of the letters ‘t’, ‘e’, ‘c’, ‘n’ and ‘i’ and the letters ‘u’ and ‘m’.
86 Second, it must, however, be noted that the signs at issue are distinguished by their length. Whereas the mark applied for consists of the two elements ‘tec’ and ‘nicum’, which are separated by a dot and comprise eight letters, the earlier mark, for its part, consists solely of the word element ‘tecnium’, which comprises seven letters.
87 Third, it must be stated that, contrary to what the applicant argues, the word element ‘tecnium’ of the earlier mark remains easily identifiable and perceptible as such by the relevant public irrespective of the capital letter ‘t’ positioned at the centre of the representation of an Erlenmeyer flask.
88 Thus, it must be held that the differences which exist between the signs at issue are not such as to call into question their visual similarity.
89 In those circumstances, the Board of Appeal acted correctly in concluding that the signs at issue have an average degree of visual similarity.
(3) The phonetic similarity
90 The Board of Appeal found that, on account of the presence in both signs of the two syllables ‘tec’ and ‘ni’, and of the proximity between the syllables ‘um’ of the earlier mark and ‘cum’ of the mark applied for, the signs at issue have a high degree of phonetic similarity.
91 The applicant maintains that, because of the presence of the letter ‘t’ in the earlier mark, positioned before the word element ‘tecnium’, the pronunciation of that set of letters ‘t-tecnium’ is very different to that of the word elements ‘tec’ and ‘nicum’ of the mark applied for.
92 First, it must be stated that the signs at issue have in common the sequence of letters ‘t’, ‘e’, ‘c’, ‘n’ and ‘i’, which will be pronounced in the same way by the relevant public, in two syllables ‘tec’ and ‘ni’.
93 Second, pronunciation of the third and last syllable of each of the signs at issue, namely, first ‘um’ and second ‘cum’, will be almost identical for the relevant public.
94 Third, it follows from the structure of the earlier mark that, for the most part, the relevant public might not pronounce the letter ‘t’ positioned at the centre of the representation of an Erlenmeyer flask on its own. It must be stated that the presence of that capital letter ‘t’ in the centre of the representation of an Erlenmeyer flask tends to suggest that it will be regarded as being the first letter of the word element ‘tecnium’ rather than as being an additional, independent word element.
95 In any event, even if the letter ‘t’ in the earlier mark is, as the applicant submits, pronounced as a letter distinct from the word element ‘tecnium’, that difference is not such as to call into question the partial phonetic identity of the signs at issue.
96 In those circumstances, the Board of Appeal acted correctly in finding that the signs at issue are phonetically similar to a high degree.
(4) The conceptual similarity
97 The Board of Appeal found that the signs at issue are conceptually similar by reason of the presence in those two signs of the prefix ‘tec’, which will evoke, for the relevant public, the technical nature of the services covered by the marks in question.
98 The applicant disputes that analysis and submits that the mark applied for has no meaning.
99 From the outset, it must be noted that the signs at issue are composed of terms which have no common meaning for the Spanish-speaking relevant public.
100 However, as already noted in paragraph 74 above, the fact remains that the signs at issue are both likely to refer, on account of the prefix ‘tec’ in each of them, to the notion of technology (‘técnico’ in Spanish) and, therefore, to evoke, for the relevant public, the technical nature of the services covered by the marks in question.
101 In those circumstances, the Board of Appeal acted correctly in finding that the signs at issue are conceptually similar.
102 It follows from all of the foregoing that the Board of Appeal did not commit an error of assessment in finding that the signs at issue are visually similar to an average degree, phonetically similar to a high degree and that they are conceptually similar.
(d) The likelihood of confusion
103 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (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).
104 The Board of Appeal found that, in the light of the level of attention of the relevant public, the similarity of the services in question and the similarity of the signs at issue, there is a likelihood of confusion.
105 The applicant rejects that analysis and argues that, owing to the weak distinctive character of the word element ‘tecnium’ of the earlier mark and the dominant character of the figurative element of that mark representing an Erlenmeyer flask, there is no likelihood of confusion.
106 In the present case, it is apparent from the examination carried out in paragraphs 45 to 102 above that, in view of the similarity of the services concerned, the similarity of the signs at issue for the relevant public and the level of attention of that public, there is a risk that that public may believe that the services in question are provided by the same undertaking or by economically linked undertakings.
107 Consequently, the Board of Appeal did not err in finding, in the context of a global assessment, that, in the light of the similarity of the signs at issue and the similarity of the services at issue, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
108 That finding cannot be called into question by the applicant’s argument that the Board of Appeal incorrectly assessed the likelihood of confusion because of a failure properly to take into account the distinctive and dominant elements of the earlier mark, since it has already been held, in paragraph 82 above, that the Board of Appeal correctly assessed the distinctive and dominant elements of the signs at issue and did not err in finding, inter alia, that no element of the signs at issue could be regarded as being dominant to the extent of rendering the other elements negligible and that the prefix ‘tec’, present in the two signs at issue, has a weak distinctive character, in respect of the services of a technical nature covered by the marks in question.
109 As regards the applicant’s argument that the Board of Appeal did not assess the distinctiveness of the earlier mark, it should be noted, in order to reject that argument, first, that, had it not had distinctive character for the services in question, the earlier mark would have been refused registration in Spain and, second, that the Board of Appeal explicitly referred, in paragraph 106 of the contested decision, to the principle that, in the assessment of the likelihood of confusion, one of the factors to be taken into account is the distinctive character of the earlier mark. Moreover, it must be held that the Opposition Division found, in its decision, that the earlier mark is of normal distinctive character, despite the presence of some weak elements. Given that the Board of Appeal confirmed that decision in its entirety, and in view of the continuity in terms of functions between the Opposition Divisions and Boards of Appeal as demonstrated by Article 71(1) of Regulation 2017/1001 (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 30, and of 10 July 2006, La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraphs 57 and 58), that decision, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to carry out in full its judicial review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64).
110 In any event, any finding that the earlier mark has a weak distinctive character would not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a 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).
111 It follows from all of the foregoing that the second plea put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
IV. Costs
112 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.
113 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders K.A. Schmersal Holding GmbH & Co. KG to pay the costs.
Valančius | Svenningsen | Öberg |
Delivered in open court in Luxembourg on 21 November 2019.