JUDGMENT OF THE GENERAL COURT (Third Chamber)
28 March 2019 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark ALBÉA — Earlier international registration designating the European Union — Word mark Balea — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑562/17,
dm-drogerie markt GmbH & Co. KG, established in Karlsruhe (Germany), represented by O. Bludovsky and C. Mellein, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh 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
Albea Services, established in Gennevilliers (France), represented by J.-H. de Mitry, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 25 May 2017 (Case R 1870/2016-1), relating to opposition proceedings between dm-drogerie markt and Albea Services,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 17 August 2017,
having regard to the response of EUIPO lodged at the Court Registry on 31 October 2017,
having regard to the response of the intervener lodged at the Court Registry on 31 October 2017,
further to the hearing on 7 December 2018,
gives the following
Judgment
Background to the dispute
1 On 14 November 2013, the intervener, Albea Services, obtained international registration No 1210553 designating, inter alia, the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO).
2 The international registration at issue was obtained for the following figurative sign:
3 The goods and services in respect of which the international registration at issue was granted are, inter alia, in Class 3 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘essential oils; cosmetics’.
4 The international registration at issue was published by the European Union Intellectual Property Office (EUIPO) in Community Trade Marks Bulletin No 154/2014 of 20 August 2014.
5 On 15 May 2015, the applicant, dm-drogerie markt GmbH & Co. KG, filed a notice of opposition on the basis of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community 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)), and, specifically, Articles 156 and 41 thereof (now Articles 196 and 46 of Regulation (EU) 2017/1001), to the international registration at issue, inter alia in respect of the products referred to in paragraph 3 above.
6 The opposition was based on the earlier international registration designating the European Union No 1112011 Balea, in respect of, inter alia, goods in Class 3 and corresponding to the following description: ‘essential oils; cosmetics’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 On 13 September 2016, the Opposition Division rejected the opposition, in so far as it found, inter alia, there to be no likelihood of confusion between the registrations at issue on the part of the relevant public.
9 On 12 October 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 25 May 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it found that, first, the relevant public was both the general public and professional consumers throughout the European Union deemed to be reasonably well-informed and reasonably observant and circumspect (paragraphs 14 and 15 of the contested decision), second, the marks at issue covered, in particular, ‘essential oils’ and ‘cosmetics’ in Class 3 and, therefore, identical goods (paragraph 16 of the contested decision), third, before examining whether a likelihood of confusion existed between the marks at issue in respect of the other goods and services covered by them, it was necessary to carry out that examination with regard to the identical goods, namely ‘essential oils’ and ‘cosmetics’ in Class 3 (paragraph 18 of the contested decision), fourth, the signs at issue differed visually (paragraphs 20 and 21 of the contested decision), fifth, despite their considerable phonetic differences, there were phonetic similarities between the signs at issue with regard to their endings (paragraph 22 of the contested decision), sixth, the signs at issue were not conceptually similar (paragraph 23 of the contested decision), seventh, overall, the differences between the signs, especially the visual differences, were sufficient to avoid a likelihood of confusion on the part of the relevant public, even considering that the goods were identical (paragraphs 28 to 31 of the contested decision), eighth, as there was no likelihood of confusion between the marks at issue for the ‘essential oils’ and ‘cosmetics’ in Class 3 and covered identically by the marks at issue, there was no likelihood of confusion with regard to the remaining goods and services covered by those marks either, even if they were identical (paragraph 32 of the contested decision).
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision and, by way of correction, delete the intervener’s trade mark;
– in the alternative, annul the contested decision and remit the case to EUIPO;
– in the further alternative, annul the contested decision.
12 EUIPO and the intervener contend, in essence, that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, and argues that the Board of Appeal was wrong to find there to be no likelihood of confusion between the registrations at issue.
14 EUIPO and the intervener dispute the applicant’s arguments and submit that the Board of Appeal was right in finding there to be no likelihood of confusion between the registrations at issue.
15 Under Article 156 and Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the protection of an international registration designating the European Union is refused if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, under Article 8(2)(a)(iv) of Regulation No 207/2009 (now Article 8(2)(a)(iv) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for the international registration designating the European Union.
16 According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and 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).
17 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).
18 As a preliminary point it must be noted that, in the present case, the Board of Appeal first examined whether there was a likelihood of confusion between the registrations at issue solely in respect of the ‘essential oils’ and ‘cosmetics’ in Class 3 (paragraph 18 of the contested decision). It was only after having carried out that assessment in respect of those goods and concluding that there was no likelihood of confusion that the Board of Appeal held that there was no likelihood of confusion with regard to the remaining contested goods and services either (paragraph 32 of the contested decision). Consequently, the merits of the single plea raised by the applicant must be assessed in the first place with regard to solely the ‘essential oils’ and ‘cosmetics’ in Class 3.
The relevant public
19 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 products 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).
20 In the present case, the Board of Appeal held, in paragraphs 14 and 15 of the contested decision, that the relevant public consisted of both the general public and professional consumers within the European Union who are deemed to be reasonably well informed and reasonably observant and circumspect.
21 It follows from the case-law that ‘essential oils’ and ‘cosmetics’ in Class 3 are goods primarily intended for the general public, who have an average level of attention, even if they may also be purchased by professionals or specialists, so that the level of attention should be held to be average (judgment of 26 March 2015, Emsibeth v OHIM — Peek & Cloppenburg (Nael), T‑596/13, not published, EU:T:2015:193, paragraphs 26 to 29). The Board of Appeal found this to be the case in the contested decision.
22 Inasmuch as the applicant takes the view that products in Class 3, such as for example ‘shampoo’ or ‘soap’ are mostly sold to final consumers at a price less than EUR 2, first, those products are not included among the products with regard to which, in the present case, the merits of the single plea are to be assessed. In the contested decision, the Board of Appeal examined, in the first place, solely ‘essential oils’ and ‘cosmetics’ (see paragraph 18 above). In addition, it must be observed that, whereas the earlier international registration covers both ‘soaps’ and ‘shampoos’ in Class 3, the international registration at issue refers only to ‘soaps’.
23 Secondly, it must be stated that the applicant failed to adduce any evidence substantiating its argument that soaps and cosmetics are mostly sold to final consumers at a price of less than EUR 2. In fact, as the intervener, in essence, correctly submits, such products are also sold, at least in part and in a number of Member States of the European Union, at prices over EUR 2. In that situation, it would have been for the applicant to prove that most of the sales of those products within the European Union were actually made at a price of less than EUR 2. However, it simply claimed that to be the case.
24 Thirdly, EUIPO and the intervener are correct to stress, in essence, the fact that the average consumer will normally choose between various body or hair care products according to, on the one hand, his or her taste in terms of aesthetics or scents and, on the other hand, the sensitivity of his skin and hair or even allergies from which he or she may suffer. In the purchase of such products, the average consumer will thus have at least an average level of attention. The fact that, having made an initial choice to purchase a product bearing a particular trade mark, that average consumer may be led to purchase products bearing the same trade mark when making future purchases, confirms that assessment. The average consumer would therefore pay some attention when purchasing goods bearing the mark which he or she had initially chosen.
Comparison of the goods
25 According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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, to that effect, 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).
26 In the present case, the Board of Appeal correctly held, in paragraph 17 of the contested decision, that the registrations at issue each cover ‘essential oils’ and ‘cosmetics’ in Class 3 and that those goods are therefore identical.
Comparison of the signs
27 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 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).
The visual similarity
28 As regards visual similarity, the Board of Appeal held, in paragraphs 19 to 21 of the contested decision, that the earlier sign was a word sign composed of the five-letter word ‘balea’, whereas the sign applied for was a figurative sign associating the five-letter word ‘albéa’ with a hexagonal frame embracing the initial letter ‘a’. The sign applied for was represented in a stylised dark grey font and the hexagonal element in different shades of grey. According to the Board of Appeal, the signs at issue overlap in the last two of their letters, namely the ending ‘ea’, and differ in their first three letters. In addition, it found that the sign applied for differs from the earlier sign in the acute accent over the letter ‘e’, the stylised font and the hexagonal element. Overall the signs at issue were visually dissimilar.
29 It must be held that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited). In that context, it also follows from case-law that, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited).
30 Having regard to its position in the sign sought and its size, the hexagonal element contained in the sign in question will not go unnoticed by the relevant public, as EUIPO essentially argues. Outside French-speaking countries, the average consumer is not familiar with the fact that, in French, it is not unusual to refer to mainland France using the term ‘hexagon’ or by referring to its hexagonal shape. Although, overall, the distinctive character of the hexagonal element as a straightforward geometrical shape is relatively weak, the applicant is incorrect in taking the view that it is devoid of any distinctive character and that it will therefore not be taken into account by the relevant public.
31 It follows that the Board of Appeal, while noting the differences between the signs at issue stemming from the hexagonal element and the acute accent placed over the letter ‘e’, which are only contained in the sign applied for, was fully justified in essentially comparing their word elements.
32 However, inasmuch as the Board of Appeal stressed that the word element of the sign applied for was represented in a stylised dark grey font, it must be pointed out that the earlier sign is a word sign in respect of which the earlier international registration does not claim any special graphic feature or colour within the meaning of Rule 3(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1). The protection which results from registration of a word sign concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that sign (judgment of 13 February 2007, Ontex v OHIM-Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 74). Since the earlier sign is a word sign, it may therefore be represented in any font, of any size and any colour, including in a version corresponding to that of the sign applied for. Consequently, the style in which the word element of the sign applied for is presented is irrelevant for the purposes of the visual comparison of the signs at issue.
33 As regards the visual comparison of the word elements of the signs at issue, the Board of Appeal noted only one similarity, namely that they overlap in the last two letters ‘e’ and ‘a’.
34 The applicant is correct to argue that there are other similarities between the signs at issue, not noted by the Board of Appeal in the contested decision. First, the word elements of the signs at issue are of the same length, that is, five letters long. Secondly, unlike the signs at issue in the cases which gave rise to the judgments of 18 October 2011, dm-drogerie markt v OHIM — Semtee (caldea), (T‑304/10, not published, EU:T:2011:602), and 12 February 2014, dm-drogerie markt v OHIM — Semtee (CALDEA), (T‑26/13, not published, EU:T:2014:70), they contain the same letters, if we are to disregard the acute accent over the letter ‘e’. Thirdly, those letters are included in the word elements in a similar order. The group of letters ‘al’ is contained in both word elements and it is only the letter ‘b’ which changes its position in those two word elements.
35 However, the visual similarities between the word elements in the signs at issue, referred to in paragraphs 33 and 34 above, are not particularly striking. It follows from the case-law that, in the case of word signs which are relatively short, such as those in the present case, even a difference consisting of a single consonant will preclude a finding that there is a high degree of visual similarity between the two signs (see judgment of 18 October 2011, caldea, T‑304/10, not published, EU:T:2011:602, paragraph 42 and the case-law cited). In those circumstances, in the light, first, of those similarities and, secondly, of the differences mentioned in paragraph 31 above, it must be held that, overall, there is a low degree of visual similarity between the signs at issue.
36 In that context, admittedly EUIPO and the intervener are correct in pointing out that it follows from the case-law of the General Court that the relevant public normally attaches more importance to the first part of words (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and 16 March 2005, L'Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65). However, it is also apparent from the case-law that that consideration cannot be upheld in all cases and cannot, in any event, invalidate the principle according to which the examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not engage in the examination of its various details (see, to that effect, judgment of 6 June 2018, Uponor Innovation v EUIPO — Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 63 and the case-law cited).
37 In the present case, while it is indeed the case that the word elements differ in their first letter or in their first syllable, that difference, even taken into consideration with those mentioned in paragraph 31 above, is not capable of entirely counteracting the visual similarities between the signs at issue (see paragraphs 33 and 34 above). In general, even if it were to be conceded that particular importance must be attributed to the difference in relation to the beginning of the signs, the Board of Appeal was not therefore justified in asserting that the signs at issue were visually completely different. Rather, it should have found there to be a low degree of visual similarity between the signs at issue.
The phonetic similarity
38 As regards phonetic similarity, in paragraph 22 of the contested decision, the Board of Appeal held that the earlier sign was pronounced as two syllables, namely ‘ba’ and ‘lea’, and that the sign applied for was pronounced as two syllables, namely ‘al’ and ‘bea’. It observed that the signs differed in their first letters and their beginnings, the syllables ‘ba’ and ‘al’ respectively, and that the final syllables were similar inasmuch as they shared the vowel sequence ‘ea’. Despite their considerable phonetic differences, there were phonetic similarities between the signs at issue with regard to their endings.
39 In the present case, in contrast to what is contended by EUIPO, the earlier sign can be split into the syllables ‘ba’, ‘le’ and ‘a’. The word element of the sign applied for is composed, for its part, of the syllables ‘al’, ‘bé’, and ‘a’. The intervener is in fact correct in stating that each letter of a word, consonant or vowel, has, in principle, an impact on its pronunciation. Thus, while it is true that the vowels in the three syllables of the word elements of the signs at issue — namely the vowels ‘a’, ‘e’ and ‘a’ in respect of the earlier sign and the vowels ‘a’, ‘é’ and ‘a’ in respect of the sign applied for — are essentially the same, which constitutes a phonetic similarity, their phonetic differences cannot be disregarded. First of all, in the first syllable, the vowel ‘a’ changes position, secondly, the initial consonant of the second syllable is different and, thirdly, an acute accent is placed over the letter ‘e’ in the word element of the sign applied for, which could possibly result in a French-speaking public pronouncing the straightforward letter ‘e’ differently, even given the presence of the shared last syllable ‘a’. Overall, having regard both to the shared vowel sequence and to the similar ending made up of the combination of the syllables ‘le’ and ‘a’ in the earlier sign and that of the syllables ‘bé’ and ‘a’ in the sign applied for, the Board of Appeal was fully justified in finding that there was at least a certain degree of phonetic similarity between the word elements of the signs at issue. However, that degree of similarity cannot be described as ‘normal’, as the applicant claims. Therefore, at the most, a low degree of phonetic similarity can be upheld.
The conceptual similarity
40 As regards conceptual similarity, the Board of Appeal held, in paragraph 23 of the contested decision, that the relevant public did not attach a similar meaning to the signs at issue. It stated that it would only be the earlier sign Balea which could be understood by the relevant public as referring to a lake in Romania or by the part of the relevant public which speaks Galician as meaning ‘whale’. The sign applied for did not have any meaning for the majority of the relevant public. The signs at issue were therefore not conceptually similar.
41 In the present case, the parties are right to agree that the Board of Appeal correctly found that the signs at issue were not conceptually similar, since, first, the word element of the sign applied for did not have any meaning and, secondly, the earlier sign only had a meaning for the part of the relevant public which knew of a particular lake in Romania and for that which speaks Galician. The Board of Appeal’s assessment must therefore be upheld.
The likelihood of confusion
42 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 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).
43 The Board of Appeal found, in paragraphs 29 to 31 of the contested decision, that there was a low degree of phonetic similarity between the signs at issue but that they were easy to distinguish visually. It noted that, before purchasing essential oils and cosmetics, consumers had, as a general rule, the chance to see them and to assess the visual differences between the signs affixed to them. Since consumers do not rely exclusively on the phonetic impression made by the signs, their low degree of phonetic similarity was not therefore of overriding importance in the present case. Overall, the Board of Appeal is of the opinion that the differences between the signs at issue, especially the visual differences, are sufficient to exclude a likelihood of confusion on the part of the relevant public, even considering that the goods are identical. It argued that, having regard to the obvious difference between the signs at issue, it is unnecessary to examine the applicant’s claim that the earlier mark enjoys an enhanced degree of distinctiveness or reputation in Germany. The assessment of whether there was a likelihood of confusion was, furthermore, consistent with the approach which it had upheld in its decision of 2 December 2015 in Case R 81/2015-1, a case in which it held that the relevant public would attach more importance to the differing initial parts of the Balea and ALVEA signs at issue.
44 In the present case, it must be pointed out at the outset, as it was by EUIPO and the intervener, that the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and that that system applies independently of any national system. Consequently, the marks at issue must be assessed only on the basis of relevant EU rules and a national decision, even one which has the status of case-law, can under no circumstances call in question the legality of the contested decision (see, to that effect, judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraphs 65 and 66). The decision of the Bundespatentgericht (Federal Patent Court, Germany) and that of the Institut national de la propriété industrielle (INPI) (National Institute for Industrial Property, France) cited by the applicant and the intervener respectively, therefore have no impact on the legality of the contested decision in the present case and are accordingly irrelevant.
45 It must also be noted that it is settled case-law that the decisions concerning the registration of a sign as a European Union trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71). The Board of Appeal’s reference, in paragraph 31 of the contested decision, to its decision of 2 December 2015 in Case R 81/2015-1 therefore is not a relevant argument with which to defend its approach in the contested decision.
46 So far as concerns the Board of Appeal’s assessment of whether a likelihood of confusion exists in the present case, it is sufficient to note that that assessment is necessarily vitiated by errors, inasmuch as the Board of Appeal relied, in paragraph 29 of the contested decision, essentially, on the alleged differences between the signs at issue and above all on the alleged visual difference between the signs at issue, whereas, in fact, there is a low degree of visual similarity (see paragraph 37 above) and a low degree of phonetic similarity (see paragraph 39 above) between the signs at issue.
47 In those circumstances, the Board of Appeal had no basis for asserting, as it nevertheless did, in essence, in paragraph 30 of the contested decision, that the enhanced distinctiveness of the earlier international registration and its reputation in Germany as claimed by the applicant, even if established, would not change the result of the analysis of the likelihood of confusion, that result itself being vitiated by errors (see paragraph 46 above).
48 Having regard to the low degree of visual and of phonetic similarity between the signs at issue, it was, on the contrary, for the Board of Appeal to examine the applicant’s arguments as to the purported enhanced distinctiveness of the earlier international registration, or its purported reputation in Germany.
49 It follows from the case-law that a mark which is highly distinctive, in particular marks with a significant reputation, enjoy broader protection than those which are less distinctive. As is apparent from recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), the appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. Since the more distinctive the mark, the greater will be the likelihood of confusion, marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
50 Although, admittedly, it also follows from the case-law that the similarity of the marks in question is a necessary condition for it to be found that there is a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009 and that, accordingly, the lack of similarity between the marks at issue renders Article 8 of Regulation No 207/2009 inapplicable (see, to that effect, judgment of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraphs 42 and 44 and the case-law cited), it must be stated that, in the present case, the signs at issue are visually and phonetically similar, albeit to a low degree.
51 Consequently, having regard to the low degree of visual and phonetic similarity between the signs at issue in the present case, the Board of Appeal should have examined whether the enhanced distinctiveness of the earlier international registration put forward by the applicant existed and, if so, what its effect was on the global assessment of the existence of a likelihood of confusion in the present instance.
52 Since the Board of Appeal omitted to do so, due to the fact that it had failed to recognise the low degree of visual similarity, the contested decision must be annulled.
53 Furthermore, inasmuch as the applicant’s first head of claim seeks that the General Court delete the intervener’s trade mark, it must be recalled that the power to alter decisions conferred on the General Court under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001) does not have the effect of conferring on that Court the power to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, having reviewed the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
54 It is apparent in this respect from paragraphs 48 to 52 above that the Board of Appeal, incorrectly, did not assess whether the earlier international registration was of enhanced distinctiveness, as the applicant claimed it to be, and, if so, what the effect of such enhanced distinctiveness was on the global assessment of whether there is a likelihood of confusion in the present case. Accordingly, it is not for the General Court to make those assessments in the course of the examination of the request for alteration of the contested decision made, in essence, by the applicant in its first head of claim. That request must therefore be rejected.
55 It is also settled case-law that, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the measures necessary to comply with judgments of the EU judicature. On the other hand, it is not for the General Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaño, T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited). Accordingly, inasmuch as it seeks that the General Court expressly remit the case to EUIPO, the applicant’s second head of claim is inadmissible.
Costs
56 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.
57 Since the applicant has not applied for costs, it must be held that the parties are to bear their own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 May 2017 (Case R 1870/2016-1);
2. Declares that the parties are to bear their own costs.
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 28 March 2019.