JUDGMENT OF THE GENERAL COURT (First Chamber)
6 September 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark granulat – International registration of the earlier figurative mark GRANULAT2000 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑557/22,
Arkadiusz Chmielarz, residing in Olsztyn (Poland), represented by D. Sęczkowski, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Granulat GmbH, established in Troisdorf (Germany), represented by A. Hufendiek, lawyer,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, I. Gâlea (Rapporteur) and T. Tóth, 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 his action under Article 263 TFEU, the applicant, Mr Arkadiusz Chmielarz, seeks the annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 June 2022 (Case R 1197/2021-4) (‘the contested decision’).
Background to the dispute
2 On 17 May 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered, inter alia, goods and services in Classes 1, 17, 35 and 40 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 corresponding, for each of those classes, to the following description:
– Class 1: ‘Unprocessed plastics; thermoplastic compounds; additives (chemical -) for use in plastics; foaming agents; slip agents; dehydrating agents for the treatment of plastics materials; stabilizers for plastic polymers; mineral extenders; extenders [chemical substances]; fire retardant chemicals’;
– Class 17: ‘Semi-worked plastic substances; recycled plastics’;
– Class 35: ‘Wholesale services in relation to plastics; wholesaling of chemical additives for use in plastics’;
– Class 40: ‘Processing of plastics; providing information relating to the processing of plastics’.
4 On 30 August 2019, the intervener, Granulat GmbH, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services covered by the mark applied for.
5 The opposition was based on, inter alia, international registration No 1035515 designating the European Union, in respect of the following earlier figurative sign:
6 The earlier mark covers, inter alia, goods in Classes 1 and 17 corresponding, for each of those classes, to the following description:
– Class 1: ‘Unprocessed plastics’;
– Class 17: ‘Plastic goods (semi-finished goods), in particular granulates, pellets, sheets, blocks, tubes, rods and profiles’.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
8 Following the applicant’s request, EUIPO invited the intervener to adduce proof of genuine use of the earlier mark relied on in support of the opposition. The intervener complied with that request within the prescribed period.
9 On 12 May 2021, the Opposition Division, after finding that genuine use of the earlier mark had been proved for the goods referred to in paragraph 6 above, partially upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001, taking the view that there was a likelihood of confusion in respect of the goods referred to in paragraph 3 above.
10 On 8 July 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
11 By the contested decision, the Board of Appeal dismissed the appeal. First, it noted that the relevant public consisted of professionals with specific expertise with, at the very least, an average level of attention. Secondly, it found that the goods and services in question were all identical or similar, at least to a low degree. Thirdly, it observed that the signs at issue displayed an average degree of visual similarity and a high degree of phonetic similarity. It noted that the conceptual similarity was apparent from an allusion to a descriptive aspect of the signs at issue and that its impact was, therefore, limited. Fourthly, taking the view that the earlier mark displayed a weak distinctive character, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, concerning the goods and services referred to in paragraph 3 above.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– annul the decision of the Opposition Division to the extent that it upheld the opposition;
– order EUIPO to register the mark applied for;
– 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 the parties are summoned to attend an oral hearing.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The jurisdiction of the General Court
15 By his third head of claim, the applicant asks the Court to order EUIPO to register the mark applied for.
16 In that regard, it suffices to note that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to European Union institutions, bodies, offices and agencies (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited). It follows that the third head of claim must be rejected on the grounds of lack of jurisdiction.
Substance
17 In support of his action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
18 The applicant submits, in essence, that the Board of Appeal erred, in particular, in its assessment of the distinctive character of the word element ‘granulat’, which led it to find incorrectly that there was a likelihood of confusion on the part of the relevant public as regards the goods and services referred to in paragraph 3 above.
19 EUIPO and the intervener dispute the applicant’s arguments.
20 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.
21 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).
22 It is in the light of those considerations that it must be examined whether the Board of Appeal correctly found that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
The relevant public
23 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
24 The Board of Appeal observed that the goods and services in question targeted business customers with specific professional knowledge or expertise, who displayed, at the very least, an average level of attention. It based its assessment on the English-speaking part of the relevant public, being the public in Ireland and Malta, but also on the public which has a good understanding of the English language, namely the Scandinavian countries, the Netherlands, Finland and Cyprus.
25 The applicant submits that the relevant public consists of professionals with specific expertise who display a high level of attention.
26 EUIPO argues that the Board of Appeal’s reasoning relating to the Danish, Swedish or Netherlands public cannot apply, since those languages contain the word ‘granulat’ or a very similar equivalent of the word ‘granule’. It takes the view that the assessment of the likelihood of confusion should be based solely on the Irish or Maltese public, whose mother tongue is English. As regards the level of attention of the relevant public, EUIPO claims that the Board of Appeal duly took into account the high level of attention of the professional public.
27 The intervener contends that the goods and services covered by the marks at issue target a professional public with an average level of attention.
28 First of all, as regards EUIPO’s observations concerning the relevant English-speaking public, it should be borne in mind that it follows from the unitary character of the EU trade mark that it suffices, in order for registration of a trade mark to be refused, that a likelihood of confusion exists on the part of the public of one EU Member State (see, to that effect, judgment 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 76 and the case-law cited).
29 Therefore, in order to establish the existence of a likelihood of confusion, it suffices to take into consideration the Irish and Maltese English-speaking public, which the applicant does not dispute.
30 In the present case, it is not disputed that the goods and services covered by the signs at issue target professionals with specific professional knowledge or expertise in the field of plastics.
31 In that regard, account must be taken of the fact that a restricted and specialist public is likely to have specific knowledge of the goods or services covered by the marks at issue and/or to display, in that regard, a higher level of attentiveness than the general public. Those factors may play a decisive role in determining whether or not there is a likelihood of confusion between those marks (see judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 30 and the case-law cited).
32 Thus, in the present case, it must be held that the Board of Appeal did not make an error of assessment in finding that the level of attention of the relevant public, represented by professionals, was, at the very least, average.
The comparison of the goods and services
33 The applicant does not dispute the Board of Appeal’s findings that the goods and services in question were all identical or similar, at least to a low degree.
The comparison of the signs
34 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).
35 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).
36 In the present case, before comparing the signs at issue visually, phonetically and conceptually, it is necessary to examine the Board of Appeal’s assessment of the distinctive elements of the marks at issue.
– The distinctive and dominant character of the elements making up the signs at issue
37 The Board of Appeal found that the word element ‘granulat’ was identically present in the signs at issue. It took the view that the term ‘granulat’ did not exist as such in English vocabulary, that it was therefore not descriptive, and that it had a distinctive character, notwithstanding its allusive nature. As regards the figurative element in the mark applied for, the Board of Appeal submitted that it was no more eye-catching than the word element, that it was made up of simple geometric shapes and that it was not particularly elaborate or sophisticated. Therefore, it concluded that the figurative element would be perceived as a decorative element.
38 The applicant claims, in essence, that the word element ‘granulat’ is descriptive for the relevant professional public, which would associate it with the sector concerned, namely the plastics industry. Consequently, he takes the view that the figurative elements are distinctive and dominant, and that the public’s attention is drawn to them.
39 EUIPO argues that the Board of Appeal’s assessments should be interpreted as meaning that the word element ‘granulat’ has a distinctive character ranging from low to average, which tends to be average. In that regard, it states that it is apparent from the contested decision that, even though it is possible to recognise an allusive aspect in the term ‘granulat’, the fact remains that it will not be descriptive or devoid of distinctive character with regard to the goods and services in question.
40 As a preliminary point, it should be noted, as the Board of Appeal also observes, that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
41 First of all, it must be stated that the mark applied for consists of the word element ‘granulat’, written in grey standard lower-case letters and a figurative device consisting of a central blue circle surrounded by four smaller blue circles, the left of which is connected to the central circle. The earlier mark consists of the word element ‘granulat’ followed by the element ‘2000’. Those elements are preceded by a set of 36 small circles, varying from black to light grey, arranged in such a way as to form a square.
42 Next, as regards the applicant’s argument that the word element ‘granulat’ is descriptive with regard to the goods and services in question, it should be noted that that term does not exist as such in the English language and that it therefore has no meaning in the eyes of the relevant public. Consequently, the Board of Appeal’s findings that that element is not descriptive and has a certain distinctive character are not incorrect. However, it must be held that, on account of its allusive nature, the word element ‘granulat’ is weakly distinctive with regard to the goods and services in question.
43 In respect of the word element ‘2000’, the Board of Appeal noted, which the applicant does not dispute, that that element will be understood as a mere non-distinctive reference to the year 2000 or to a characteristic of the goods, for example the quantity of an ingredient contained in them.
44 Lastly, concerning the figurative elements present in the signs at issue, it must be noted that they do not have any particular feature capable of being remembered by consumers. It must be held, as the Board of Appeal found, that they are made up of simple geometric shapes, which are not particularly elaborate or sophisticated. Accordingly, the relevant public, which will not describe those figurative elements, will perceive them only as additional decorative elements, playing a secondary role.
45 Furthermore, as regards the possible dominant character of the figurative elements of the signs at issue, it is not apparent either from their position or from their size that they are likely to make an impression on consumers. Consequently, it cannot be said that they are dominant.
46 Therefore, in the light of those assessments and the case-law cited in paragraph 40 above, the Board of Appeal did not make an error of assessment in finding that the word element ‘granulat’, identically present in the signs at issue, was distinctive and that the figurative elements would be perceived only as decorative and secondary elements.
– The visual similarity
47 The Board of Appeal stated that the signs at issue shared the same word element ‘granulat’, which played an independent role in both signs, notwithstanding its weak distinctive character. It found that the elements which differ, namely the element ‘2000’, the figurative elements and the typeface were elements which played a secondary role in the overall impression produced by the signs at issue. Therefore, the Board of Appeal took the view that the signs at issue displayed an average degree of visual similarity.
48 The applicant submits, in essence, that the figurative elements in each of the signs at issue are dominant and eye-catching, on account of the descriptive character of the word element. In that regard, he argues that the visual impression produced by the signs at issue is different, given that the mark applied for gives the impression of a fluid and streamlined form, unlike the earlier mark, which gives the impression of a more unfinished form. Furthermore, the applicant submits that the colour blue present in the two signs at issue varies significantly from one sign to the other.
49 EUIPO and the intervener dispute the applicant’s arguments.
50 First, it should be noted that the two marks at issue share one word element, the term ‘granulat’, and that that term is the only element to which the consumer will refer in both marks. That word element is spelt in the same way, it is placed following figurative elements in the two signs at issue, of which it occupies most of the space.
51 Secondly, the signs at issue differ in their figurative elements and in the element ‘2000’, which, as has been pointed out in paragraphs 43 and 46 above, play a secondary role in the overall impressions produced by the signs at issue. Moreover, notwithstanding their differences, the two figurative elements both depict circles.
52 Consequently, the Board of Appeal did not make an error of assessment in finding that the signs at issue were visually similar to an average degree.
– The phonetic similarity
53 The Board of Appeal found that the signs at issue displayed a high degree of phonetic similarity. The applicant does not dispute that assessment.
– The conceptual similarity
54 The Board of Appeal found that the signs at issue were conceptually similar, in so far as, although the term ‘granulat’ has no meaning for the relevant English-speaking public, it is likely that it will be perceived by that public as alluding to granular or granulate products in the context of the goods and services in question, given its close similarity to those words and the fact that it has been shown that plastics are sold in granular form. However, it took the view that such a similarity concerned an allusion to a descriptive aspect, with the result that it had a limited impact on the conceptual comparison.
55 The applicant does not call those assessments of the Board of Appeal into question.
The likelihood of confusion
56 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
57 The applicant criticises the Board of Appeal for having found that there was a likelihood of confusion notwithstanding the weak distinctive character of the earlier mark. In that regard, the applicant notes that marks with a weak distinctive character enjoy limited protection and that, where two signs coincide only in an element which is entirely devoid of distinctive character, the likelihood of confusion decreases.
58 The Board of Appeal found that the distinctive character of the earlier mark was weak for the relevant English-speaking public, since the term ‘granulat’ alluded to granular or granulate products. It observed that there was a high degree of phonetic similarity and an average degree of visual similarity between the signs at issue. In the light of all those factors, it concluded that there was a likelihood of confusion on the part of the relevant English-speaking public, even for the relevant public with a high level of attention, notwithstanding the weak distinctive character of the earlier mark.
59 EUIPO contends, as a preliminary point, that it does not support the Board of Appeal’s assessments that the term ‘granulat’ has a weak distinctive character or those that the earlier mark has a weak distinctive character. It argues that those assessments should be interpreted as referring to the allusive nature of the term ‘granulat’ and that its distinctive character varied between low and average, but tended to be average. As regards the applicant’s argument that the earlier mark enjoys limited protection, EUIPO submits that it is based on the incorrect assumption that the term ‘granulat’ is descriptive for the relevant public.
60 The intervener takes the view that the earlier mark has an average degree of distinctiveness and that it should be found that there is a likelihood of confusion.
61 Where the distinctiveness of the earlier mark is significant, such a circumstance is likely to increase the likelihood of confusion. That being so, the existence of a likelihood of confusion is not precluded where the distinctiveness of the earlier mark is weak (see judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).
62 Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgments of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and of 13 July 2018, Cyprus v EUIPO – Papouis Dairies (Pallas Halloumi), T‑825/16, EU:T:2018:482, paragraph 77).
63 According to the case-law, where the earlier trade mark and the contested mark 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 (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53).
64 However, it follows from the Court’s case-law that a finding that a likelihood of confusion exists cannot, because of the interdependence of the relevant factors, be ruled out in advance and in any event (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55).
65 In the present case, it is appropriate, in the first place, to analyse whether the Board of Appeal was correct in finding that the earlier mark was weakly distinctive.
66 In that regard, it should be borne in mind that the earlier mark is composed of the word elements ‘granulat’ and ‘2000’ as well as a figurative element.
67 As regards the word element ‘granulat’, it follows from the assessments set out in paragraph 42 above that it does not exist as such in the English language and that it will have no meaning for the relevant public and has a certain distinctiveness.
68 However, it should be recalled that the term ‘granulat’ alludes to the goods in question, since it refers to plastic granules. Furthermore, the figurative element and the word element ‘2000’ are purely decorative and play a secondary role.
69 Consequently, it must be held, as the Board of Appeal found, that the earlier mark has a weak distinctive character.
70 In the second place, it should be noted that the goods and services in question are identical or similar, at the very least, to a low degree, and that the signs at issue are visually and conceptually similar to an average degree and phonetically similar to a high degree.
71 In the third place, it is true that the earlier mark and the contested mark coincide in the word element ‘granulat’ which is weakly distinctive with regard to the goods and services in question.
72 However, although according to the case-law cited in paragraph 63 above, where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods and services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists, in the present case, as has been stated in paragraph 44 above, the figurative elements which differentiate the signs do not attract the consumer’s attention, are composed of simple geometric shapes, without being particularly elaborate or sophisticated, and will be perceived as additional decorative elements, playing a secondary role.
73 Consequently, the visual differences of the signs at issue are not sufficiently striking and are not of such significance that they enable the relevant public to distinguish clearly the marks at issue.
74 Therefore, it follows from all the relevant factors of the present case that the Board of Appeal did not make an error of assessment in finding that there was a risk that the relevant public may believe that the goods and services in question come from the same undertaking or, at the very least, from economically linked undertakings.
75 In the light of all of the foregoing considerations, since the single plea in law relied on by the applicant in support of the form of order sought by him cannot be upheld, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.
Costs
76 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.
77 Since the applicant has been unsuccessful, he must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that the parties are summoned to attend an oral hearing, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Arkadiusz Chmielarz to bear his own costs and to pay those incurred by Granulat GmbH;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Delivered in open court in Luxembourg on 6 September 2023.
V. Di Bucci | | M. van der Woude |