JUDGMENT OF THE GENERAL COURT (Third Chamber)
13 March 2019 (*)
(EU trade mark — Invalidity proceedings — EU word mark supr — Earlier Benelux word mark Zupr — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 60(1)(a) and Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑297/18,
Wirecard Technologies GmbH, established in Aschheim (Germany), represented by A. Bayer, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne 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
Striatum Ventures BV, established in ’s-Hertogenbosch (Netherlands), represented by G. Van den Hout, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 20 February 2018 (Case R 2028/2017-5), relating to invalidity proceedings between Striatum Ventures and Wirecard Technologies,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 8 May 2018,
having regard to the response of EUIPO lodged at the Court Registry on 2 August 2018,
having regard to the response of the intervener lodged at the Court Registry on 10 August 2018,
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
Background to the dispute
1 On 11 August 2014, Tritendo Media GmbH 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 word sign supr.
3 The goods and services in respect of which registration was sought are in Classes 9, 38 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Software; computer software packages; none of the aforesaid goods for use with locks and lockboxes’;
– Class 38: ‘Data transmission; data transmission and data broadcasting; consultancy services relating to data communications; transmission of data by electronic means; arranging access to databases on the internet; providing user access to computer programmes in data networks; network transmission of sounds, images, signals and data; communications services for accessing a data-base; electronic data interchange services; data transmission by electronic mail; electronic mail and mailbox services; e-mail data services; rental of electronic mail-boxes; providing on-line electronic bulletin boards for transmission of messages among computer users; forums [chat rooms] for social networking; forums [chat rooms] for social networking; providing on-line chat rooms for transmission of messages among computer users; telecommunication gateway services’;
– Class 42: ‘Software customisation services; computer programming and software design; writing of programs for data processing; hosting services and software as a service and rental of software; software development, programming and implementation; consultancy in the field of software design; consultancy in the field of software design; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; providing temporary use of non-downloadable computer software for project management via computer networks, intranets or the internet; providing temporary use of non-downloadable computer software for handling office functions via computer networks, intranets or the internet; providing temporary use of non-downloadable software via computer networks, intranets or the Internet; technical advice and consultancy; engineering project management services’.
4 The trade mark application was published in Community Trade Marks Bulletin No 174/2014 of 17 September 2014. The contested mark was registered on 16 October 2015 under the number 013163746.
5 On 11 November 2016, the applicant, Wirecard Technologies GmbH, purchased the contested mark from its previous proprietor, namely Tritendo Media, the name of which has, in the meantime, become SuprSale GmbH. The transfer of the contested mark to the applicant was published in Community Trade Marks Bulletin No 230/2016.
6 On 15 March 2016, the intervener, Striatum Ventures BV, filed an application for a declaration of invalidity against the contested mark in respect of all of the goods and services referred to in paragraph 3 above.
7 The grounds for the application for a declaration of invalidity were those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 The application for a declaration of invalidity was based on the following earlier marks:
– the word mark Zupr, which was registered with the Benelux Office for Intellectual Property (BOIP) on 17 June 2014 under the number 0954477;
– the figurative mark reproduced below, which was registered with the BOIP on 2 October 2014 under the number 0959848:
9 Both the earlier Benelux word mark and the earlier Benelux figurative mark referred to in paragraph 8 above are registered in respect of goods and services in Classes 9, 35 and 42 corresponding, for each of those classes, to the following description:
– Class 9: ‘Data processing equipment and computers; software; software for communicating with users of smartphones; mobile telecommunications equipment’;
– Class 35: ‘Administrative services, also for the automated collection of sale data for retailers; search engine marketing’;
– Class 42: ‘Design and development of computer hardware and software; providing computer hardware and software for search engines’.
10 By decision of 21 July 2017, the Cancellation Division of EUIPO partially upheld the application for a declaration of invalidity and declared the contested mark invalid in respect of all the goods and services except the ‘engineering project management services’ in Class 42, which were found to be dissimilar to the goods and services covered by the earlier rights. The Cancellation Division examined the application for a declaration of invalidity in relation to the earlier Benelux word mark registered under the number 0954477. By contrast, it did not find it necessary to examine the application for a declaration of invalidity in relation to the earlier Benelux figurative mark registered under the number 0959848, since there were fewer similarities between that mark, as a stylised form with a figurative element, and the contested mark and it covered goods and services identical to those covered by the earlier Benelux word mark.
11 On 19 September 2017, 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 Cancellation Division.
12 By decision of 20 February 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal and upheld the Cancellation Division’s decision in its entirety.
13 In particular, after confirming that the goods and services covered by marks at issue were in part identical and in part similar, except for the ‘engineering project management services’ in Class 42, the Board of Appeal found that, on account of the similarity of the signs, the normal distinctive character of the earlier mark and the composition of the relevant public, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, in respect of the goods and services which had been found to be identical or similar.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the other party to the proceedings before the Board of Appeal, if it intervenes, to pay the costs.
15 EUIPO and the intervener contend that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
16 In support of its action, the applicant relies in essence on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. Within the context of that plea, after stating that for reasons of procedural economy it is following the approach adopted by the Board of Appeal in examining the application for a declaration of invalidity solely in relation to the earlier Benelux mark word Zupr (see paragraph 8 above), it submits that the Board of Appeal erred in law in its assessment of the similarity of the signs at issue and, as a consequence of that incorrect assessment, erred in its global assessment of the likelihood of confusion between the contested mark and the earlier mark.
17 Under Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, on application by the proprietor of an earlier mark, a registered EU trade mark must be declared invalid 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. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means ‘trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property’.
18 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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).
19 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined.
20 It must be pointed out at the outset that, in paragraph 24 of the contested decision, the Board of Appeal endorsed the Cancellation Division’s finding regarding the comparison of the goods and services in Classes 9, 38 and 42 covered by the contested mark, taking the view that those goods and services were, except for ‘engineering project management services’, similar or identical to the goods and services in Classes 9, 35 and 42 covered by the earlier mark. In paragraph 25 of the contested decision, the Board of Appeal also upheld the Cancellation Division’s finding regarding the definition of the relevant public and the relevant territory.
21 The parties do not dispute the Board of Appeal’s finding regarding the comparison of the goods and services covered by the contested mark. Likewise, they do not dispute the definition of the relevant territory as being that of the Benelux. Furthermore, in that regard, it must be held, as observed by EUIPO, that the applicant’s statement that the Benelux countries include Liechtenstein instead of Luxembourg cannot be regarded as an argument seeking to challenge the Board of Appeal’s definition of the relevant public but must be treated as a clerical mistake. Consequently, the assessment of the likelihood of confusion must be carried out in the light of the Board of Appeal’s finding as regards the similarity of the goods and services.
22 As regards the definition of the relevant public, the applicant submits that that public consists of average Benelux consumers, whereas the Board of Appeal takes the view that the goods and services at issue are aimed both at the general public and at specialists and that the relevant public’s level of attention may therefore vary from average to above average.
23 There is no need to call into question the Board of Appeal’s finding as regards the relevant public’s level of attention. According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 19 July 2016, Alpha Calcit v EUIPO — Materis Paints Italia (CALCILITE), T‑742/14, EU:T:2016:418, paragraph 43 and the case-law cited). In view of the goods and services in question, it must be held that the relevant public’s level of attention may vary from average to above average.
The comparison of the signs
24 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).
The visual similarity
25 As regards the visual similarity of the signs at issue, the Board of Appeal found, in paragraph 30 of the contested decision that, given that, first, the first letters of the signs at issue were different and that, secondly, they had the word element ‘upr’ in common, the signs were similar to an average degree. In particular, in paragraph 28 of the contested decision, the Board of Appeal stated that, while the difference between the signs at issue was in the first letter, the visual difference between ‘z’ and ‘s’ was not that striking in contrast to, for example, the difference between the letters ‘k’ and ‘p’. Furthermore, it noted that the letters ‘z’ and ‘s’ could be seen as a mirror reflection of each other, despite a slight difference in their line.
26 The applicant disputes the Board of Appeal’s assessment, submitting, in essence, that, visually, the general impression given by the signs at issue differs considerably because of the first letter of each sign.
27 EUIPO and the intervener dispute the applicant’s arguments.
28 In the first place, the applicant maintains that the signs at issue each consist of two syllables and contain four letters, the last three of which are identical and are arranged in the same order and in the same positions. Although, according to the applicant, that may confer some degree of visual similarity on the signs at issue, it is, it submits, necessary to take into account that their respective first letters are different and that consumers will more easily notice the difference between the first letters because they normally attach more importance to the first parts of words. Furthermore, according to the applicant, the brevity of the signs at issue enables consumers to grasp the variations in their spellings better.
29 First, it must be observed, as the Board of Appeal stated in paragraph 28 of the contested decision, that both of the signs at issue are word marks consisting of four letters, the last three of which are identical and are in the same order and the first of which differs, that letter being the letter ‘s’ in the contested mark and the letter ‘z’ in the earlier mark. Furthermore, it must be stated that the applicant itself concedes that the fact that the last three letters in the signs at issue are identical and are arranged in the same order and in the same positions may confer some degree of visual similarity on those signs.
30 Secondly, it must pointed out that, although it is true, as the applicant submits, that the first part of word marks may be more likely to catch the relevant public’s attention than the parts which follow (see judgment of 25 March 2009, L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30 and the case-law cited), that consideration cannot apply in all cases (see judgment of 4 July 2014, Advance Magazine Publishers v OHIM — Montres Tudor (GLAMOUR), T‑1/13, not published, EU:T:2014:615, paragraph 31 and the case-law cited). Furthermore, it cannot cast doubt on the principle that the examination as to whether the marks are similar must take into account the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle(ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 31 and the case-law cited).
31 Thirdly, it must be pointed out, as observed by EUIPO, that, as regards relatively short word signs, like those in the present case, the Court has already held that the elements at the beginning and the end of the sign are as important as the central elements (see judgment of 7 November 2013, Three-N-Products v OHIM — Munindra (AYUR), T‑63/13, not published, EU:T:2013:583, paragraph 45 and the case-law cited). Likewise, in the judgment of 15 July 2011, ERGO (T‑220/09, not published, EU:T:2011:392, paragraph 30), the Court has already held that there is a high degree of visual similarity between two signs which, like those in the present case, consist of four letters, three of which are identical and in the same order, and differ only in their first letters.
32 Consequently, contrary to what the applicant submits, in the overall visual impression of the signs at issue, the difference between the respective first letters in those signs should not, in the present case, be given greater attention than that accorded to the other three letters.
33 In the second place, the applicant submits that, contrary to what the Board of Appeal states, the visual difference between the letters ‘z’ and ‘s’ is very striking given that the letter ‘z’ consists of straight lines whereas the letter ‘s’ is a curved line, which makes its written form more complex. Furthermore, it maintains that that statement is valid regardless of whether the letters are written in lower or upper case. Consequently, according to the applicant, the Board of Appeal’s assertion that the letters ‘z’ and ‘s’ can be perceived by the relevant public as a mirror reflection of each other is completely incomprehensible. The applicant submits that, while that may be true of the letters ‘b’ and ‘d’ for example, that argument cannot be accepted as regards the comparison of the letters ‘z’ and ‘s’, the lines of which are completely different.
34 In that regard, it must be borne in mind that the Court has already held that the letters ‘z’ and ‘s’ are similar (judgment of 17 October 2006, Armour Pharmaceutical v OHIM — Teva Pharmaceutical Industries (GALZIN), T‑483/04, EU:T:2006:323, paragraph 74). Furthermore, the Board of Appeal was right in finding that, despite a slight difference in their lines, the letters ‘z’ and ‘s’ could be seen as a mirror reflection of each other. As observed by EUIPO, the difference between curved and straight lines cannot cancel out the clear symmetry of their shapes, a symmetry which exists whether the letters are written in upper or lower case. Consequently, contrary to what the applicant submits, the Board of Appeal did not err in finding that the visual difference between ‘z’ and ‘s’ was not striking.
35 In the third place, the applicant claims that, whereas, by virtue of the use of the letter ‘z’, the earlier sign creates the visual impression of an exotic and foreign word rather than of a word which comes from an official language of the European Union, the letter ‘s’ in the contested mark is distinguished by the fact that the relevant public will immediately and without further thought associate the term ‘supr’ with the common French or English term ‘super’. The applicant submits that the difference between the signs at issue is thus accentuated by the fact that the contested mark will naturally be understood by the relevant public as referring to the term ‘super’. Furthermore, the applicant maintains that, as the visual perception of the contested mark is considerably influenced by the allusion to the term ‘super’, the group of letters ‘upr’, which is common to both of the signs at issue, is not the element of the contested mark which most attracts attention.
36 In that regard, it must be pointed out that, contrary to what the applicant submits, it has not been established that the relevant public will immediately and without further thought consider that the word ‘super’ should naturally be substituted for the sign supr, particularly because the term ‘super’ does not clearly emerge from the sign supr, since one of the letters of which that term consists is missing. Mere general knowledge of the term ‘super’ in the relevant territory cannot call that finding into question. Similarly, the applicant does not put forward any convincing reason which suggests that the relevant public tends to believe, without further thought, that the contested mark has been misspelt and thus to perceive immediately and visually the error which has been thought to have been made.
37 Furthermore, it must be stated that the applicant’s reference to the judgment of 23 September 2009, Arcandor v OHIM — dm drogerie markt (S-HE) (T‑391/06, not published, EU:T:2009:348, paragraph 41), in support of the argument that the brevity of a sign enables consumers to grasp better the variations in its spelling, is not relevant in the present case. In that judgment, the Court held that the insertion of a hyphen constituted a significant difference which was likely to be perceived more clearly in a very short sign. It must be stated that, in the present case, neither of the two signs at issue contains a hyphen or a variation in spelling of equal significance.
38 It follows that, contrary to what the applicant claims, the difference between the respective first letters in the signs is not such that it overrides the high degree of visual similarity due to the identity of the other letters of which those signs consist. That is particularly so because both signs consist only of a single syllable (see paragraph 50 below) and because, as the applicant itself states, the last three letters of the contested mark do not constitute an element which will be perceived separately from its first letter, ‘s’, since the sign supr is perceived as a whole rather than as a word made up of various parts.
39 In view of all of the foregoing, it must be held that the Board of Appeal did not err in finding that, seen as a whole, the signs at issue could be regarded as being visually similar to an average degree.
The phonetic similarity
40 As regards the phonetic similarity, the Board of Appeal found, in paragraph 31 of the contested decision, that the signs at issue were pronounced as ‘supr’ and ‘zupr’ respectively. It added that, even though there was a difference in the pronunciation of the letters ‘s’ and ‘z’, such a difference was not very striking. Consequently, according to the Board of Appeal, the signs remained phonetically similar to the extent that the sound of the group of letters ‘upr’ is the same.
41 The applicant disputes the Board of Appeal’s assessment, submitting, in essence, that the Board of Appeal did not adduce any evidence in support of that assessment and, in particular, did not specify which language it was referring to. Furthermore, it disputes the assertion that the relevant public will pronounce the signs at issue in a highly similar way. According to the applicant, first, the word element ‘upr’ in both of the signs at issue is not pronounced identically and, secondly, the respective first letters in those signs have completely different sounds and different phonetic features. Consequently, it maintains that, despite some phonetic similarity between the signs at issue, there is a noticeable difference in their overall pronunciation. It submits that as the difference in pronunciation of the beginnings of the two signs at issue is decisive as regards the overall phonetic impression for target consumers, it is sufficient to exclude any phonetic similarity.
42 EUIPO and the intervener dispute the applicant’s arguments.
43 As regards the applicant’s argument seeking to complain that the Board of Appeal did not determine which language of the relevant public it was referring to, it must be stated that the Board of Appeal, having defined the relevant territory as that of the Benelux (see paragraphs 20 and 21 above), took all the official languages spoken by the relevant public in that territory into account in its assessment.
44 Even if the Board of Appeal had taken into account only one of the languages in question, spoken in only part of the relevant territory, it must be borne in mind that the Court of Justice has already held, in a case concerning the right of the proprietor of an EU trade mark to oppose, pursuant to Article 8(1)(b) of Regulation 2017/1001, registration of a similar EU trade mark which would create a likelihood of confusion, that such an opposition must be upheld where it is established that there is a likelihood of confusion in part of the European Union, a Member State, for example, being capable of constituting such a part. A similar approach is necessary in cases concerning the right of the proprietor of an EU trade mark or a Benelux trade mark to have a mark which creates a likelihood of confusion declared invalid (see, to that effect, judgment of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraphs 26 and 27 and the case‑law cited).
45 As regards the arguments relating to the pronunciation of the marks at issue, it must be pointed out that, contrary to what the applicant submits, the Board of Appeal did not find either that the signs at issue were pronounced in a highly similar way or that ‘both marks w[ould] be pronounced by the relevant public in the same way’.
46 As has been pointed out in paragraph 40 above, it confined itself to stating that, phonetically, the signs will be pronounced as ‘supr’ and ‘zupr’ respectively. In particular, the Board of Appeal admitted that there was a difference in pronunciation between the respective first letters of the two signs at issue, although it found that that difference in the pronunciation of the letters ‘s’ and ‘z’ was not to be regarded as very striking. It came to the conclusion that the signs at issue remained phonetically similar to the extent that the sound of the group of letters ‘upr’ was the same.
47 First of all, the applicant disputes that finding, submitting that the relevant German- and Dutch-speaking publics will pronounce the contested mark according to the rules of German, Dutch or English pronunciation and will immediately and without further thought consider that the common term ‘super’ must naturally be substituted for the term ‘supr’. Furthermore, it maintains that the likely pronunciation of the contested trade mark in English would therefore be ‘su-per’ [su :pǝ(r)] whereas, in German or Dutch, the contested trade mark will be pronounced as ‘su-per’ [‘zu :pɐ] and ‘süper’ [‘sypǝr] respectively. By contrast, it submits that the earlier mark will be pronounced by the German-speaking public as ‘tsu-p’, namely by pronouncing the first letter as [t:], whereas the Dutch-speaking public will pronounce it as ‘zü-pr’ [zy :pr]. It maintains that the letter ‘s’ in Dutch is always voiceless whereas the letter ‘z’ is voiced. Secondly, the applicant submits that the French-speaking Benelux public will pronounce the first syllable of the contested mark and of the earlier mark nearly identically as ‘zue’. However, it maintains that the pronunciation of the second syllable would be significantly different. The applicant submits that, on account of its allusion to the French word ‘super’, the French-speaking part of the relevant public will pronounce the second syllable of the contested trade mark as ‘per’, with the stress falling on the letter ‘e’, whereas it will pronounce the second syllable of the earlier mark as ‘pr’. Lastly, the applicant maintains that the term ‘zupr’ is a fanciful term which has no relation to the goods and services covered by the corresponding earlier trade mark. It submits that that term is therefore more capable of attracting the relevant public’s attention and that that increases the difference between the fanciful earlier trade mark and the contested trade mark.
48 In that regard, it must be stated that the applicant’s line of argument is based, in essence, on the premiss that the relevant public will naturally associate the contested mark with the English and French term ‘super’ and that, on account of that immediate and instinctive association, the contested mark must, according to the applicant, be regarded as consisting of two different syllables, namely ‘su’ and ‘per’. That association of the contested mark with the term ‘super’ also, in the applicant’s view, results in a difference in pronunciation, in particular in French, between the second syllable of the contested mark, which is pronounced as ‘per’ and within which the stress is placed on the ‘e’, and the second syllable of the earlier sign, which is pronounced as ‘pr’
49 In the first place, it must be pointed out that, as has been stated in paragraph 36 above, it has not been established that the relevant public will be led to associate, immediately and without further thought, the contested mark with the term ‘super’. That is particularly so because, by contrast with the case which gave rise to the judgment of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD) (T‑339/05, not published, EU:T:2007:172, paragraph 45), which is mentioned by the applicant, the two terms ‘supr’ and ‘super’ are not pronounced in the same way.
50 In the second place, as EUIPO points out, there is no reason to presume that the signs at issue consist of two syllables to the extent that the group of letters ‘pr’ would be pronounced independently and in a significantly different way. As EUIPO observes, the two signs at issue comprise only one syllable, which consists of a vowel sound, coming from the letter ‘u’, combined with the sound of the consonants which precede and follow that letter. Given that there is only one vowel, the two signs will be pronounced, in all the languages of the relevant public, as a single syllable, without any distinction between the first parts of the two signs, namely ‘zu’ and ‘su’ respectively, and the second parts, namely ‘pr’.
51 It follows that, contrary to what the applicant submits, the Board of Appeal was fully entitled to find, in paragraph 31 of the contested decision, that the relevant public would pronounce the word element ‘upr’ in both of the signs in the same way.
52 Moreover, as the Board of Appeal correctly points out, although the first letters in the signs at issue are pronounced differently, the pronunciation of the word element ‘upr’ is strictly identical and thus necessarily maintains a degree of similarity. Consequently, when undertaking an overall comparison of the signs at issue, it is necessary to take into account that there is some phonetic similarity between those signs, in view of the identical pronunciation to which a very large part of each of those signs, namely three of their four letters, gives rise.
53 In the third place, as regards the pronunciation of the first letters of the signs at issue, namely ‘z’ and ‘s’, first, it must be pointed out that the applicant contradicts itself inasmuch as it submits, on the one hand, that the French-speaking Benelux public will pronounce the respective first syllables of the signs at issue almost identically and, on the other hand, that those signs are significantly different because their respective first letters have completely different sounds and different phonetic features.
54 Secondly, it must be borne in mind that the Court has already held, having regard to the French-speaking public, that the pronunciation of the word elements ‘z’ and ‘sa’ are not so different from each other as to offset the identical pronunciation of the first four letters of a sign (judgment of 13 July 2011, Inter IKEA Systems v OHIM — Meteor Controls (GLÄNSA), T‑88/10, not published, EU:T:2011:368, paragraph 41).
55 It follows from all of the foregoing that the Board of Appeal did not err in finding that the difference in the pronunciation of the letters ‘s’ and ‘z’ was not very striking and that, in spite of this, the signs at issue remained phonetically similar, to the extent that the sound of the group of letters ‘upr’ was the same. In conclusion, the degree of phonetic similarity must, like the degree of visual similarity, be held to be average.
The conceptual similarity
56 As regards the conceptual similarity of the signs at issue, the Board of Appeal found, in paragraph 32 of the contested decision, that neither of the signs had any meaning in the relevant territory. It found that, even if the contested mark could be associated with the word ‘super’, that did not give rise to any conceptual difference in view of its purely laudatory connotation. According to the Board of Appeal, the conceptual comparison between the signs therefore remained neutral.
57 The parties expressly confirm the Board of Appeal’s finding that neither of the signs at issue has any meaning in the relevant territory. That finding must be upheld. This means that a conceptual comparison of the signs at issue is not possible (judgment of 21 September 2017, Novartis v EUIPO — Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149).
58 The Board of Appeal was therefore fully entitled to find, in paragraph 32 of the contested decision, that the conceptual comparison between the signs at issue remained neutral.
59 However, the applicant complains that the Board of Appeal erred in finding, in paragraph 32 of the contested decision, that the fact that the contested mark might be associated with the word ‘super’ does not give rise to any conceptual difference in view of its purely laudatory connotation. In that regard, it submits in essence that, as the contested mark is very close to the word ‘super’, which is particularly well known and easily recognisable in all of the relevant languages and is generally used to express approval or assent in an enthusiastic way, it has a certain ‘evocative force’. It maintains that such an evocative force would, in itself, be sufficient to justify the existence of a certain conceptual difference between the signs at issue, given that the relevant public will perceive the word ‘zupr’ as an invented word. Furthermore, according to the applicant, the evocative force of the contested mark is independent of whether that mark designates a characteristic of the goods and services in respect of which the marks at issue have been registered, since that has no influence on the relevant public’s ability to make an association between the contested mark and the word ‘super’.
60 EUIPO and the intervener dispute the applicant’s arguments.
61 In that regard, it must be stated that the mere contention that the term ‘super’ is particularly well known and easily recognisable in all of the relevant languages does not in itself suffice to confer on the contested mark an ‘evocative force’ which is sufficient to justify the conclusion that there is a conceptual difference between the signs at issue. Although the Court has, for example, been able to confer such an evocative force on the word sign EURON, that was justified by the fact that that sign clearly contained the term ‘euro’, which can easily be recognised by consumers. It therefore held that consumers would be aware of the evocative effect of the sign in question without undertaking a conceptual analysis of it, but simply by focusing their attention instinctively on the recognisable element of the word sign EURON, that is to say, the term ‘euro’ (judgment of 13 February 2007, Ontex v OHIM — Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraphs 90 to 92). However, in the present case, unlike the sign EURON and contrary to what the applicant submits, the contested mark does not include a word which is particularly well known and easily recognisable, with the result that the relevant public will not be aware of the evocative effect of that mark without undertaking a conceptual analysis of it.
62 However, assuming that part of the relevant public were led to associate the contested mark with the term ‘super’, it must be held that, contrary to what the Board of Appeal states in paragraph 32 of the contested decision, that may give rise, in spite of the purely laudatory connotation of the term ‘super’, to a conceptual difference between the signs at issue. For that part of the relevant public which might associate the contested mark with the term ‘super’, that mark will have a meaning, whereas the earlier mark will not have any meaning attributed to it (judgment of 3 March 2004, Mülhens v OHIM — Zirh International (ZIRH), T‑355/02, EU:T:2004:62, paragraph 46).
63 It follows from all of the foregoing that the conceptual comparison of the signs at issue is neutral for the part of the public for which neither of the two signs has any meaning. By contrast, for the part of the public which might associate the contested mark with the term ‘super’, the signs at issue are dissimilar, given that the contested mark has a possible meaning and the earlier mark is devoid of any meaning.
Conclusion regarding the comparison of the signs
64 It follows from all of the foregoing that the signs at issue are visually and phonetically similar. The conceptual comparison of those signs is neutral for the part of the public for which neither of the two signs has any meaning. By contrast, for the part of the public which might associate the contested mark with the term ‘super’, the signs at issue are dissimilar (see paragraph 62 above).
65 It must be determined whether the fact that the contested mark might be associated with the term ‘super’ and give rise to a conceptual difference between the signs at issue, at least for part of the relevant public, has an effect on the Board of Appeal’s global assessment regarding the existence of a likelihood of confusion (see paragraphs 66 to 75 below).
The likelihood of confusion
66 It should be noted at the outset that the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
67 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. Account should, however, be taken of the fact that the average consumer only rarely has a chance to compare the various marks directly and must therefore rely on his imperfect recollection of them. 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).
68 Furthermore, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
69 In the present case, in paragraphs 34 to 36 of the contested decision, the Board of Appeal, after pointing out that the signs at issue were similar to an average degree, that the earlier sign was of normal distinctive character and that the relevant public comprised both specialists and the general public, found that there was a likelihood of confusion between the signs at issue in respect of the good and services which had been found to be identical or similar.
70 The applicant agrees with the Board of Appeal’s finding, in paragraph 33 of the contested decision, that the earlier sign is of normal distinctive character. However, it disputes the Board of Appeal’s finding as to the existence of a likelihood of confusion.
71 It submits, in essence, that the contested mark has a clear and specific meaning, whereas the earlier mark does not have such a meaning or has only a totally different meaning. According to the applicant, that is sufficient to counteract to a large extent any possible phonetic and visual similarities between the two marks, in accordance with the principle developed in the case-law to the effect that phonetic and visual similarities can be counteracted by conceptual differences between the trade marks in question, provided that at least one of the marks at issue has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately. Furthermore, the applicant submits that that counteraction is confirmed by the fact that the marks at issue are also visually different, as the degree of phonetic similarity between two marks is of less importance in the case of goods and services which are, as in the present case, marketed in such a way that, when making a purchase, the relevant public usually also perceives visually the mark designating those goods or services.
72 EUIPO and the intervener dispute the applicant’s arguments.
73 In that regard, it is sufficient to state that, even if it were assumed to be established that the contested mark could be associated, by at least part of the relevant public, with the term ‘super’, with the result that it should be regarded as being conceptually dissimilar to the earlier mark (see paragraphs 62 and 64 above), that cannot call into question the Board of Appeal’s finding relating to the likelihood of confusion. Contrary to what the applicant submits, such a conceptual difference is not capable of counteracting the visual and phonetic similarities which, in the present case, exist between the signs at issue.
74 It must be borne in mind that, according to the case-law, such a counteraction requires at least one of the marks at issue to have, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately, and the other mark to have no such meaning or an entirely different meaning (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98). However, that is not the situation in the present case.
75 The contested mark does not consist of the word ‘super’, but of a fanciful term, which is more removed and without any clear and specific meaning. Consequently, unlike the mark at issue in the case which gave rise to the judgment of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS) (T‑292/01, EU:T:2003:264), referred to by the applicant, the contested mark in the present case cannot be regarded as having a clear and specific meaning which the public will be capable of grasping immediately, in accordance with the case-law cited in paragraph 74 above.
76 It follows that the conceptual differences between the marks at issue, even if they were assumed to be established, will not, for the purposes of the case-law, be capable of counteracting the visual and phonetic similarity. That is particularly so because the goods and services at issue have been held to be identical or similar.
77 Furthermore, doubt cannot be cast upon that finding by the applicant’s argument that the degree of phonetic similarity between the marks at issue is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods. Although the software and computer software packages in Class 9 may in fact be sold to consumers ‘as seen’ on shelves in self-service, an oral discussion of the characteristics of the goods and their mark is also likely to take place at the time of purchase. Besides, those goods and also the services at issue in Classes 38 and 42 could, as the applicant itself concedes, be advertised orally on television or on the internet. Therefore, in the assessment of the likelihood of confusion, the degree of phonetic similarity between the marks at issue, is, in this case, at least as important as their visual similarity (see, to that effect, judgment of 23 September 2011, NEC Display Solutions Europe v OHIM — C More Entertainment (see more), T‑501/08, not published, EU:T:2011:527, paragraph 53 and the case-law cited).
78 It follows from all the foregoing that the single plea in law must be rejected as unfounded.
79 The action must therefore be dismissed in its entirety.
Costs
80 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. 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 (Third Chamber),
hereby:
1. Dismisses the action;
2. Orders Wirecard Technologies GmbH to pay the costs.
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 13 March 2019.