JUDGMENT OF THE GENERAL COURT (Second Chamber)
12 May 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark MUSEUM OF ILLUSIONS – Earlier EU figurative mark MUSEUM OF ILLUSIONS – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Article 95 of Regulation 2017/1001)
In Case T‑70/20,
Metamorfoza d.o.o., established in Zagreb (Croatia), represented by A. Bijelić, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Tiesios kreivės, established in Vilnius (Lithuania),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 December 2019 (Case R 663/2019‑2), relating to opposition proceedings between Tiesios kreivės and Metamorfoza,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin and P. Škvařilová-Pelzl (Rapporteur), Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 4 February 2020,
having regard to the response lodged at the Court Registry on 7 May 2020,
further to the hearing on 30 November 2020,
gives the following
Judgment
Background to the dispute
1 On 29 September 2017, the applicant, Metamorfoza d.o.o., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was sought are in Class 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Museum services; educational services in the nature of museums designed to encourage and develop the study of science of optics and holography; designing, organizing, and displaying exhibitions of works, representations of works and reproductions of works in the field of science of optics and holography and materials explaining science of optics and holography techniques and principles for cultural or educational purposes; organizing and conducting educational conferences on science of optics and holography; educational services, namely, conducting exhibitions, workshops, seminars, lectures, tours, film and video presentations in the field of science of optics and holography; educational services, namely, providing libraries and study centers in the field of science of optics and holography; publication of educational material being texts, books, and magazines in the field of science of optics and holography; entertainment in the nature of exhibitions on the science of optics and holography; entertainment in the nature of science exhibitions; entertainment in the nature of hologram exhibitions; entertainment services, namely, organization of cultural events; hosting [organizing] social entertainment events, namely, birthday parties, special events’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 2017/203 of 25 October 2017.
5 On 9 November 2017, the other party to the proceedings before the Board of Appeal of EUIPO, Tiesios kreivės, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based on the earlier EU figurative mark reproduced below, which was filed on 27 April and registered on 16 August 2017 under the number 16647307 in respect of services in Class 41 corresponding to the following description: ‘Production of revue shows before live audiences; adventure playground services; organisation of conferences, exhibitions and competitions; audio, video and multimedia production, and photography; education and instruction services; amusement and theme park services; amusement centers; amusement park services; museum curator services; museum services; museum services relating to microscopy; education, entertainment and sport services; arranging and conducting of cultural activities; arranging and conducting of educational events; arranging and conducting of entertainment activities; arranging and conducting of entertainment events; arranging and conducting of live entertainment events; arranging and presenting of live performances; arranging for students to participate in recreational activities; arranging for ticket reservations for shows and other entertainment events; arranging of visual and musical entertainment; arranging of visual entertainment; art gallery services; audio and video production, and photography; audio entertainment services; children’s adventure playground services; children’s entertainment services; cultural services; cultural activities; education and instruction; education and training in the field of music and entertainment; entertainer services; entertainment booking services; entertainment in the nature of air shows; entertainment in the nature of an amusement park ride; entertainment in the nature of magic shows; entertainment information; entertainment services; entertainment services for producing live shows; entertainment services in the form of motion pictures; entertainment services in the nature of an amusement park show; entertainment services in the nature of arranging social entertainment events; entertainment services in the nature of organizing social entertainment events; entertainment services provided by performing artists; entertainment services relating to quizzes; entertainment, sporting and cultural activities; hosting [organising] awards; information and advisory services relating to entertainment; information relating to cultural activities; information relating to entertainment, provided on-line from a computer database or the internet; interactive entertainment services; laser show services; laser show services [entertainment]; leisure services; lighting productions for entertainment purposes; live dance exhibitions; live demonstrations for entertainment; live entertainment; magic show services; magic shows (presentation of -); musical entertainment; online interactive entertainment; organisation of entertainment services; organisation of events for cultural, entertainment and sporting purposes; organisation of live musical performances; organisation of outings for entertainment; organisation of recreational activities; organisation of shows; organising events for cultural purposes; organising events for entertainment purposes; organising of entertainment; organization of cultural shows; organization of shows [impresario services]; organization of shows for cultural purposes; organizing and arranging exhibitions for entertainment purposes; organizing and presenting displays of entertainment relating to style and fashion; organizing cultural and arts events; planning of shows; popular entertainment services; preparation of entertainment programmes for broadcasting; preparation of special effects for entertainment purposes; presentation of live dance performances; presentation of live entertainment events; presentation of live entertainment performances; presentation of live performances; production of amusement park shows; production of entertainment shows featuring dancers and singers; production of live entertainment events; production of live performances; production of live shows; production of live television programmes for education; production of shows; production of stage shows; providing amusement arcade services; providing amusement park facilities; providing cultural activities; providing entertainment information; providing facilities for entertainment; providing facilities for movies, shows, plays, music or educational training; providing information in the field of entertainment by means of a global computer network; providing museum facilities and services; providing theme park facilities; providing theme park services; provision of amusement facilities; provision of children’s playgrounds at service stations; provision of entertainment facilities; provision of entertainment information via television, broadband, wireless and on-line services; provision of entertainment information via the Internet; provision of live entertainment; provision of museum facilities; rental of artwork; rental of motion pictures; rental of paintings and calligraphic works; running of museums; show production services; theme park services’:
7 The ground relied on in support of the opposition was that set out in Article 8(1)(a) of Regulation 2017/1001.
8 On 29 January 2019, the Opposition Division upheld the opposition and refused to register the mark applied for in respect of all of the services covered, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. The Opposition Division stated that, in oppositions brought under Article 8(1) of Regulation 2017/1001, if Article 8(1)(a) of that regulation was the only ground invoked, but identity between the signs or between the goods or services at issue could not be established, the case had to be examined under Article 8(1)(b) of that regulation, which required only that there was a similarity between the signs and between the goods or services at issue and a likelihood of confusion.
9 On 25 March 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10 By decision of 2 December 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
11 The Board of Appeal found that the relevant territory with regard to the assessment of the likelihood of confusion was that of the European Union, but, for reasons of procedural economy, focused on Greece. The Board of Appeal upheld the Opposition Division’s findings, which had not been disputed by the parties, that the relevant public consisted of the general public and of professionals, with the result that the level of attention varied from average to high. As regards the comparison of the services, the Board of Appeal confirmed the Opposition Division’s assessment that the services at issue were identical or similar, an assessment which had not been disputed by the parties. As regards the most distinctive and dominant elements of the signs at issue, the Board of Appeal found that the verbal content of those signs, namely the expression ‘museum of illusions’, was likely to have a stronger impact on the relevant Greek public than their respective figurative elements. As regards the comparison of those signs, the Board of Appeal found that they were visually similar to an above-average degree, whereas they were phonetically and conceptually identical. It added that the earlier mark, as a whole, had no meaning with regard to the services in question for the relevant Greek public, with the result that it had a normal degree of inherent distinctiveness. In the light of the abovementioned factors, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant Greek public.
Forms of order sought
12 The applicant claims that the Court should annul the contested decision.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In the application, the applicant submits that the contested decision is vitiated by various errors, which may be grouped, in essence, under two pleas in law. The first plea alleges infringement of Article 95 of Regulation 2017/1001 and a misapplication of Article 8(1)(a) and (b) of that regulation, in that the Opposition Division erred in examining the opposition under Article 8(1)(b) of Regulation 2017/1001, although it had been brought on the basis of Article 8(1)(a) of that regulation. The second plea alleges infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal erred in finding that there was a likelihood of confusion in the present case.
15 EUIPO contends that the two pleas identified in paragraph 14 above should be rejected as unfounded and that, consequently, the action should be dismissed.
16 It must be pointed out that, given the date on which the application for registration at issue was filed, namely 29 September 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
17 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the applicant and EUIPO in their arguments to Article 7(1)(c) and (d) or to Article 8(1)(a) and (b) of Regulation 2017/1001 must be understood as referring to Article 7(1)(c) and (d) and Article 8(1)(a) and (b) of Regulation No 207/2009, the wording of which is identical. Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
The first plea, alleging infringement of Article 95 of Regulation 2017/1001 and a misapplication of Article 8(1)(a) and (b) of Regulation No 207/2009
18 The applicant submits that the Opposition Division erred in examining the opposition under Article 8(1)(b) of Regulation No 207/2009, although it had been brought only on the basis of Article 8(1)(a) of that regulation. It claims that the other party to the proceedings before the Board of Appeal relied on the wrong provision, by claiming rights in an identical mark for identical goods or services, whereas that was not, in actual fact, the case.
19 Referring to Article 95 of Regulation 2017/1001, the applicant states that, in proceedings relating to relative grounds for refusal of registration, as is the case here, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. It submits that, consequently, the opposition should have been rejected by the Opposition Division.
20 EUIPO disputes the applicant’s arguments and contends that the first plea should be rejected.
21 Article 72(1) of Regulation 2017/1001 provides that the Court has jurisdiction to rule on actions relating to decisions of the Boards of Appeal and not decisions of the Opposition Division.
22 The purpose of those actions is to review the legality of decisions of the Boards of Appeal, a review which must, pursuant to Article 95 of Regulation 2017/1001, be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see, to that effect, judgment of 13 February 2019, Etnia Dreams v EUIPO – Poisson (Etnik), T‑823/17, not published, EU:T:2019:85, paragraph 129 and the case-law cited).
23 According to the case-law, it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such actions (judgment of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 59; see also, judgment of 22 April 2015, Rezon v OHIM – mobile.international (mobile.de proMotor), T‑337/14, not published, EU:T:2015:220, paragraph 23 and the case-law cited).
24 In the present case, in the context of the first plea, the applicant does not dispute the merits of the contested decision, which was adopted by the Board of Appeal, but raises questions relating to the merits of the Opposition Division’s decision.
25 That plea is therefore directed against the reasoning which appears in the Opposition Division’s decision, rather than in the contested decision.
26 It is true that the Court must interpret the pleas in law on which an applicant relies in terms of their substance rather than of their classification (see judgment of 5 September 2014, Éditions Odile Jacob v Commission, T‑471/11, EU:T:2014:739, paragraph 51 and the case-law cited).
27 However, such an interpretation is possible only provided that that substance is sufficiently clear from the application. Under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which is applicable to the procedure before the General Court pursuant to the first paragraph of Article 53 thereof, and Article 177(1)(d) of the Rules of Procedure of the General Court, an application lodged in an action brought against EUIPO must contain, inter alia, the subject matter of the proceedings and a summary of the pleas in law relied on. It must, accordingly, specify the nature of the grounds on which the action is based, with the result that a mere abstract statement of the grounds does not satisfy the requirements of the Statute of the Court of Justice of the European Union and of the Rules of Procedure. Moreover, that summary – albeit concise – must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the action, if necessary, without any further information. In order to ensure legal certainty and the sound administration of justice, it is necessary – if an action or, more specifically, a plea in law is to be admissible – that the basic factual and legal particulars relied on be indicated coherently and intelligibly in the application itself (see judgment of 13 May 2020, Peek & Cloppenburg v EUIPO – Peek & Cloppenburg (Peek & Cloppenburg), T‑446/18, not published, EU:T:2020:187, paragraph 29 and the case-law cited).
28 In the present case, in the context of the first plea in law, the applicant has not identified, in a sufficiently clear and precise manner, the reasons why, in its view, the Board of Appeal made an error in reviewing the merits of the assessments which had led the Opposition Division, in its decision, to reject the opposition under Article 8(1)(b) of Regulation No 207/2009, a decision which the applicant had, in the context of its appeal, challenged before it.
29 In terms of their substance, the arguments which the applicant puts forward in support of the first plea seek therefore only to criticise the merits of the Opposition Division’s decision, in so far as it examined the opposition under Article 8(1)(b) of Regulation No 207/2009, and not the merits of the contested decision adopted by the Board of Appeal, in so far as it reviewed, at the applicant’s own request, the merits of that examination.
30 It follows that, in the light of its actual substance, the first plea cannot be interpreted as being directed against the contested decision, which is the subject of the action before the Court, but must be interpreted as being directed against the Opposition Division’s decision.
31 Consequently, that plea must be rejected as inadmissible.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
32 The applicant complains that the Board of Appeal found, in the contested decision, that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, as the result of an incorrect analysis, by that Board of Appeal, of the most distinctive and dominant elements of the signs at issue and of the comparison of those signs, in particular from the visual and conceptual standpoints.
33 EUIPO disputes the applicant’s arguments and contends that the second plea should be rejected. It submits that the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
34 It is important to point out at the outset that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
35 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).
36 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).
37 The fact that parties which claim that a decision of a Board of Appeal should be annulled do not dispute certain factors that are essential to the analysis of the likelihood of confusion does not mean that the Court may not or must not review the merits of those factors, since those factors constitute an essential stage of the reasoning which the Court is required to engage in in order to carry out that review. Where one of the parties claiming that the Board of Appeal’s decision should be annulled has called into question the Board of Appeal’s assessment relating to the likelihood of confusion, the Court has, by virtue of the principle of interdependence between the factors taken into account, in particular the similarity of the trade marks and that of the goods and services covered, jurisdiction to examine the Board of Appeal’s assessment of those factors (see, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 47). Where it is called upon to assess the legality of a decision of a Board of Appeal of EUIPO, the Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before it (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48).
38 In that regard, it must be pointed out that the applicant does not dispute, in particular, the Board of Appeal’s assessments regarding the relevant territory, the relevant public and its level of attention and the comparison of the services at issue. In the contested decision, the Board of Appeal found that the relevant territory was that of the European Union, but that, for reasons of procedural economy, it was appropriate for it to focus on Greece. As regards the relevant public, it upheld the Opposition Division’s assessments that the relevant public consisted of the general public and of professionals, with the result that the level of attention of that public varied from average to high. As regards the comparison of the services at issue, the Board of Appeal confirmed the Opposition Division’s assessment that those services at issue were identical or similar.
39 For the reasons adopted or upheld by the Board of Appeal in the contested decision, it must be held that the assessments referred to in paragraph 38 above are well founded and that they can be confirmed by the Court.
The dominant and most distinctive elements of the signs at issue
40 As regards the dominant and most distinctive elements of the signs at issue, in the first place, the applicant submits that the expression ‘museum of illusions’ in those signs is neither distinctive nor dominant. It takes the view that the Board of Appeal erred in finding, in the contested decision, that the relevant Greek public would not understand the English words ‘of’ and ‘illusions’. In that regard, first of all, the applicant states that English is the most spoken language in the European Union as a foreign or second language and that a non-negligible part of the relevant Greek public, according to various statistical sources, speaks English. Secondly, according to the applicant, ‘of’ is a very common English preposition and the word ‘illusions’ is part of the basic vocabulary of the English language and of almost all other European languages. Thirdly, it submits that the expression ‘museum of illusions’ and the word ‘illusion’ are recognised and understood by the relevant Greek public because the applicant opened a museum with that name in Athens (Greece) and because the word ‘illusion’ is extensively used on the Greek market to designate various goods and services, inter alia, tourist services or activities, and clothing. Fourthly, as regards the understanding of foreign words and the question of whether or not those words have to be understood throughout the European Union, the applicant refers to the judgment of 16 January 2008, Inter-Ikea v OHIM – Waibel (idea) (T‑112/06, not published, EU:T:2008:10), which permits, in its view, the inference that it is not necessary for all EU languages to contain a specific word or expression in order for that word or expression to be considered to be non-distinctive, descriptive or generic.
41 In the second place, the applicant submits that both the Opposition Division and the Board of Appeal failed to carry out an analysis of whether the expression ‘museum of illusions’ was descriptive and customary in the current language to designate the services at issue, as provided for by Article 7(1)(c) and (d) of Regulation No 207/2009. It argues that the expression ‘museum of illusions’ is descriptive of the services at issue and is even customary in the current language to designate those services, with the result that it cannot be taken into consideration in comparing the signs at issue and assessing any degree of similarity that there might be between them.
42 In the third place, the applicant submits that, given the descriptiveness and the customariness in the current language of the word element ‘museum of illusions’ to designate the services at issue and the lack of distinctiveness of that element, the figurative elements in the signs at issue are the dominant elements in those signs. As regards the earlier mark, those elements are, according to the applicant, the very distinctive yellow colour and the reproduction of a pair of eyes. As regards the mark applied for, the dominant element is, according to the applicant, the characteristic stylised letter ‘m’, which represents an illusion in itself, but was not, however, as the Board of Appeal incorrectly stated, inspired by M.C. Escher and his art.
43 EUIPO disputes the applicant’s arguments relating to the understanding of the English words in the signs at issue and their distinctiveness. First, it submits that, contrary to the applicant’s claims, the English term ‘illusions’ is not part of the basic vocabulary of that language, is not a common word and also does not resemble its Greek equivalent, whereas the word ‘of’ is a well-known preposition. It argues, in that regard, that the evidence submitted by the applicant does not show that the average consumer within the Greek general public has a sufficient knowledge of English to understand the meaning of the word ‘illusions’. Secondly, it submits that the Board of Appeal did not err in finding that at least part of the relevant Greek public would not attribute any clear meaning to the word ‘illusions’ and that, consequently, for that part of the public, that word would have an average degree of distinctive character. Thirdly, it submits that the evidence which the applicant provided in order to show that the word ‘illusions’ is known by the average consumer within the Greek general public, on account of its use on the tourism market in Greece, is insufficient.
44 In that regard, it must be borne in mind that, according to the case-law, 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 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 46 and the case-law cited). The fact, however, remains that, when perceiving a word sign, he or she will break it down into word elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her (see judgment of 8 July 2010, Engelhorn v OHIM – The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraph 60 and the case-law cited).
45 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. 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. 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. The Court of Justice has made clear that the fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 48 and the case-law cited).
46 For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
47 Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).
48 In the present case, the mark applied for comprises an expression consisting of three word elements, ‘museum’, ‘of’ and ‘illusions’, written on two lines, combined with a figurative element which is situated above it. It must be held that the Board of Appeal was right in finding, in the contested decision, that that figurative element would be perceived as a combination of two semi-arches, depicted in irregular perspectives which do not correspond to reality, and a small cube. As regards the applicant’s argument that the relevant public would perceive that figurative element as a representation of the letter ‘m’, it must be pointed out that, although the possibility of such a perception cannot totally be ruled out, it is, however, unlikely. In any event, as the Board of Appeal correctly observes in the contested decision, that perception would merely emphasise the first letter of the word ‘museum’ and would not significantly alter the relevant public’s overall perception of the mark applied for. The earlier mark comprises the same expression consisting of the three word elements ‘museum’, ‘of’ and ‘illusions’, written on two lines in red, slightly stylised characters in the lower part of a bright-yellow square, which also contains a cartoonish depiction of a pair of wide-open eyes in its upper right-hand corner.
49 As regards the perception of the word elements, which are common to the signs at issue, the applicant does not dispute the Board of Appeal’s assessment that the relevant Greek public will understand the meaning of the English word ‘museum’. However, it calls into question the Board of Appeal’s assessments that that public would not understand the meaning of the English words ‘of’ and ‘illusions’.
50 First, as regards the word ‘of’, it must be pointed out that the Board of Appeal itself found, in the contested decision, that that word was part of basic English vocabulary. That finding, which is consistent with the case-law (see judgment of 28 September 2016, The Art Company B & S v EUIPO – G-Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 35 and the case-law cited), is correct and must be upheld.
51 Secondly, as regards the English word ‘illusions’, it is common ground that that word does not exist in Greek and does not resemble its equivalent in that language. Furthermore, the Board of Appeal was right in finding, in the contested decision, that that word was not part of basic English vocabulary.
52 As regards the applicant’s arguments based on the relevant Greek public’s knowledge of English, it must be borne in mind that, according to the case-law, knowledge of a foreign language cannot, in general, be assumed (judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83; see also, to that effect, judgment of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 40). Although the statistical data regarding the knowledge of English in Greece which were provided by the applicant show that a large part of the relevant Greek public has different levels of knowledge of that language, they do not make it possible to conclude that the part of that public which does not understand that language is negligible. Consequently, it must be held that a non-negligible part of the relevant Greek public will not understand the word ‘illusions’.
53 That finding is not called into question by the applicant’s arguments that the whole of the relevant Greek public knows the word ‘illusions’ on account of the existence of a ‘museum of illusions’ in Athens or of the use of that word to designate various goods or services on the Greek market. The mere fact that such a museum exists or that such goods or services exist does not make it possible to conclude that the whole of the relevant Greek public knows the term ‘illusions’. Consequently, even though part of that public might know that term, the applicant has not provided sufficient evidence to prove that the part of that public which does not know that term is negligible.
54 Thirdly, in the light of the foregoing, it must be pointed out that the part of the relevant Greek public which does not understand the word ‘illusions’ will perceive the expression which is common to the signs at issue, namely ‘museum of illusions’, as referring to a museum of the same type or relating to the same theme, even though it will remain unaware of the specific type or theme of that museum.
55 As regards the analysis of the most distinctive elements in the signs at issue, it must be stated that it is not necessary to analyse the distinctive character of each word separately, because, for the reasons set out in paragraph 54 above, the relevant Greek public will perceive them as an overall expression designating a type of museum or a museum relating to a certain theme. In that regard, the Board of Appeal thus erred, since it carried out an analysis of the distinctive character of each of the words contained in the signs at issue and not of the overall expression which those words formed.
56 Consequently, even for the part of the relevant Greek public which does not understand the word ‘illusions’, the expression ‘museum of illusions’ will refer to the description of a museum of a particular type or relating to a particular theme and, for that reason, it must be held that that expression will be perceived as being descriptive of the services at issue, namely museum services. In the light of the case-law referred to in paragraph 47 above, the expression ‘museum of illusions’ contained in the signs at issue must therefore be held to have a weak inherent distinctive character. The same conclusion must a fortiori be drawn as regards the part of the relevant Greek public which understands the word ‘illusions’.
57 According to the case-law, the public will not generally consider a descriptive or weakly distinctive element forming part of a composite mark to be the distinctive and dominant element in the overall impression conveyed by that mark (see judgment of 5 April 2006, Madaus v OHIM – Optima Healthcare (ECHINAID), T‑202/04, EU:T:2006:106, paragraph 54 and the case-law cited; judgment of 28 October 2009, CureVac v OHIM – Qiagen (RNAiFect), T‑80/08, EU:T:2009:416, paragraph 49).
58 It does not therefore automatically follow that, where a sign consists of both figurative and word elements, it is the word element which must always be considered to be dominant. In certain cases, in a composite sign, the figurative element may therefore rank at least equally with the word element (see, to that effect, judgment of 24 October 2018, Grupo Orenes v EUIPO – Akamon Entertainment Millenium (Bingo VIVA ! Slots), T‑63/17, not published, EU:T:2018:716, paragraph 43 and the case-law cited).
59 In the light of the foregoing, the Board of Appeal erred in finding, in the contested decision, that the word elements of the signs at issue were likely to make a stronger impression on the relevant public than their respective figurative elements. Such an assessment is, in the light of the weak distinctive character of the expression ‘museum of illusions’ in the signs at issue, incorrect. Furthermore, as regards the mark applied for, it is necessary to take into account the fact that the figurative element of that mark is markedly larger than that expression and that it is the first element in that mark. As regards the earlier mark, it must be stated that the bright-yellow square and the representation of a pair of wide-open eyes which it contains also contribute significantly to the overall impression created by that mark.
60 Accordingly, it must be held that the expression ‘museum of illusions’, considered as a whole, does not constitute the dominant element in the signs at issue, but contributes in the same way as the figurative elements of those signs do to the overall impression created by those signs. Consequently, in the contested decision, none of the elements of which the signs at issue consist should have been considered, by the Board of Appeal, to be dominant or more distinctive than the others.
The comparison of the signs at issue
61 As regards the comparison of the signs at issue, the applicant submits, first, that both the Opposition Division and the Board of Appeal erred in finding that those signs were similar overall on account of their identical word elements, whereas that is not the case because the word elements in the mark applied for will be understood by a non-negligible part of the relevant public as being ‘m museum of illusions’. Secondly, it argues that the signs are visually and conceptually different, above all because of the differences resulting from their dominant figurative elements.
62 EUIPO disputes the applicant’s arguments regarding the visual and conceptual differences between the signs at issue and the lack of overall similarity between them.
63 First, as regards the visual comparison of the signs at issue, EUIPO submits that those signs are at least similar to an average degree. It contends that the signs coincide in their word elements and also have a similar structure since they are not only composed of one identical sequence of letters depicted in standard fonts, but also coincide in the visual arrangement of those word elements over two lines. It argues that the differences between the signs are not sufficient to counteract the similarities between them. Furthermore, it submits that the question whether the relevant public will perceive the geometrical figure in the mark applied for as a representation of the letter ‘m’ is of little relevance, because, in such a case, that letter will be perceived as a reference to the initial letter of the word ‘museum’ and will not constitute an element which increases the differences that exist between the signs.
64 Secondly, as regards the phonetic comparison of the signs at issue, EUIPO submits that those signs are phonetically identical for the part of the relevant Greek public which will not perceive the geometrical figure in the mark applied for as a representation of the letter ‘m’. However, it argues that, even if it is admitted that that geometrical figure will be perceived as a representation of the letter ‘m’, the pronunciation of that letter as an ‘m’ will hardly be discernible from that of the word ‘museum’ which follows it.
65 Thirdly, as regards the conceptual comparison of the signs at issue, EUIPO submits that those signs have the concept of museum in common, because the English-speaking part of the relevant Greek public will perceive those signs as referring to a museum of illusions, whereas the part of that public which will not attribute any meaning to the word ‘illusions’ will nonetheless perceive the concept of a ‘museum of the same type or kind’. It argues that, although the signs are different as regards the concept conveyed by the pair of eyes in the earlier mark, that additional concept is not, however, able to offset the conceptual similarity resulting from the element ‘museum of illusions’, which is common to both signs. EUIPO adds that, since the signs are visually and phonetically similar, no conceptual difference can neutralise the overall similarity between them.
66 As regards the visual similarity between the signs at issue, it must be pointed out that the Board of Appeal took into account the distinctive character of the word ‘illusions’ and the more important role of the word elements than the figurative elements in the signs at issue. As has been stated in paragraphs 49 to 60 above, those assessments on the part of the Board of Appeal are vitiated by errors.
67 Although the signs at issue coincide completely, from a visual standpoint, in the expression ‘museum of illusions’, which is present in those signs, that expression, since it is descriptive, will attract the relevant Greek public’s attention only to a limited extent. Furthermore, the signs at issue differ significantly, from a visual standpoint, in their figurative elements which, as has already been held in paragraph 60 above, are not less striking visually or less distinctive than their word elements. Consequently, the degree of visual similarity between the signs at issue must be categorised as low or, possibly, as average, rather than as above average, as the Board of Appeal found.
68 As regards the phonetic similarity, it must be borne in mind that the phonetic reproduction of a composite sign corresponds to that of all of its word elements, regardless of their specific graphic features, which fall more within the scope of the visual analysis of the sign. Therefore, the figurative elements of the earlier sign should not be taken into account for the purposes of the phonetic comparison of the signs at issue (see judgment of 26 June 2018, France.com v EUIPO – France (FRANCE.com), T‑71/17, not published, EU:T:2018:381, paragraph 74 and the case-law cited).
69 In the contested decision, the Board of Appeal stated that, phonetically, the signs at issue coincided in the expression ‘museum of illusions’ in those signs. Consequently, it was right in finding that those signs were phonetically identical.
70 Furthermore, as regards the part of the relevant Greek public which might perceive the figurative element in the mark applied for as a representation of the letter ‘m’, it must be stated that that part of that public is unlikely to pronounce that letter when it refers to that mark orally, since the pronunciation of that letter and that of the first letter in the word ‘museum’, which follows it, will tend to merge together. Even if that part of the relevant Greek public were to pronounce those two consecutive letters ‘m’ very distinctly, the signs at issue would nonetheless be phonetically similar to a high degree.
71 As regards the conceptual comparison of the signs at issue, the Board of Appeal found that those signs were identical. Accordingly, it found that those signs referred to the same concept, namely that of a museum of the same type. The Court observes that, for the part of the relevant Greek public which understands the whole of the expression ‘museum of illusions’, those signs will even refer to a more specific concept still, namely that of a museum of illusions.
72 It must be held that the Board of Appeal was right in finding that the signs at issue were conceptually identical. The figurative elements of those signs are not capable of altering the conceptual identity which results from their word elements, because they only highlight the common concept arising out of those elements, namely the visual and playful nature of the museum services, particularly where they relate to illusions, as is the case with the pair of wide-open eyes, the yellow square or the illusions of perspective that are present in those signs.
The distinctive character of the earlier mark
73 When it was questioned in that regard during the hearing, the applicant stated that the distinctive character of the earlier mark ought to be considered to be average. The applicant does not therefore dispute the Board of Appeal’s assessment in that regard.
74 EUIPO observes that the earlier mark, as a whole, has no meaning with regard to the services at issue and that, for that reason, the degree of distinctiveness of the earlier mark is average.
75 The Board of Appeal found that the earlier mark, as a whole, had no meaning with regard to the museum services in question for the relevant Greek public, with the result that it inherently had a normal degree of distinctiveness. That assessment on the part of the Board of Appeal is based primarily on that Board of Appeal’s finding that the word ‘illusions’ has distinctive character. However, as has been stated in paragraphs 49 to 60 above, that finding is incorrect.
76 It must be borne in mind that, according to the case-law referred to in paragraph 37 above, the fact that parties which claim that a decision of a Board of Appeal should be annulled do not dispute certain factors that are essential to the analysis of the likelihood of confusion does not mean that the Court may not or must not review the merits of those factors, since those factors constitute an essential stage of the reasoning which the Court is required to engage in in order to carry out that review.
77 Consequently, although the Board of Appeal’s finding as regards the distinctiveness of the earlier mark is not disputed by the parties, its merits must be reviewed, since, first, the distinctiveness of the earlier mark is an essential factor with regard to the assessment of the likelihood of confusion and, secondly, that finding is based on an incorrect premiss, as has been stated in paragraph 75 above.
78 In that regard, it is appropriate to begin by observing that the Board of Appeal was right in finding, in the contested decision, that the other party to the proceedings before the Board of Appeal had not claimed that the earlier mark had any enhanced distinctiveness acquired through use or reputation, with the result that the Court must confine itself, in the present case, to assessing the inherent distinctiveness of that mark.
79 According to the case-law, the fact that an EU trade mark which has been relied on in support of opposition proceedings has been registered means that that mark has a minimum of inherent distinctiveness, because Article 7(1)(b) of Regulation No 207/2009 precludes registration of a mark which is devoid of distinctive character (see judgment of 29 April 2015, Hostel Tourist World v OHIM – WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraph 35 and the case-law cited).
80 As has been stated in paragraphs 49 to 60 above, the expression ‘museum of illusions’ is descriptive for the relevant Greek public, because it refers directly to the museum services in respect of which the earlier mark is registered, even though part of the Greek public will not understand what the precise subject of those museum services is, namely illusions. Although, in that mark, that expression appears together with figurative elements, namely the bright-yellow square and the element representing a pair of wide-open eyes, those figurative elements do not substantially alter the relevant Greek public’s perception of that mark, since they only highlight the descriptive concept conveyed by that expression.
81 It follows that, in the contested decision, the Board of Appeal should have concluded that the earlier mark had a low degree of inherent distinctiveness.
The global assessment of the likelihood of confusion
82 As regards the global assessment of the likelihood of confusion, first, the applicant complains that the Opposition Division and the Board of Appeal carried out an incorrect analysis, in particular of the elements constituting the signs at issue and of the most distinctive and dominant elements of those signs. It submits that the only similarity between those signs is a descriptive and generic word element which is likely to be found in every trade mark relating to the specific type of ‘museum services’ which is covered by the marks at issue.
83 Secondly, the applicant states that the decision given by EUIPO in the present case effectively grants the other party to the proceedings before the Board of Appeal exclusive rights to the expression ‘museum of illusions’ and, in fact, grants it a monopoly over that expression. It states that the prohibition of use of that expression by third parties would prevent others from describing certain specific types of museum services and from communicating to customers what those services consist of.
84 Thirdly, according to the applicant, the situation in the present case is contrary to Article 12 of Regulation No 207/2009, now, after amendment, Article 14 of Regulation 2017/1001, because the proprietor of the earlier mark is trying to prevent a trader from describing its services by means of the expression ‘museum of illusions’, whereas such a possibility should remain available to all museum services providers in the internal market.
85 Fourthly, the applicant states that the proprietor of the earlier mark had already sent it and its franchisees a letter requesting that they cease using that mark, although they were not, except as regards the expression in question, using a sign that is identical to the earlier mark.
86 Fifthly, the applicant submits that the Opposition Division and the Board of Appeal did not follow their previous practice. In that regard, it refers to several decisions of EUIPO in which, on account of the presence of different figurative elements, no similarity was found to exist between the marks under consideration, although their word elements were identical.
87 EUIPO disputes the applicant’s arguments and supports the Board of Appeal’s assessment that there is, in the present case, a likelihood of confusion on the part of the relevant Greek public.
88 According to EUIPO, the merits of the Board of Appeal’s assessment regarding the existence of a likelihood of confusion are not called into question by the applicant’s arguments. First, as regards the arguments relating to the lack of an analysis of whether the word elements in the earlier mark were descriptive and customary in the current language, in accordance with Article 7(1)(c) and (d) of Regulation No 207/2009, EUIPO observes not only that those absolute grounds for refusal are not the subject matter of the present proceedings, but also that the earlier mark has a normal degree of inherent distinctiveness, at least for the part of the relevant Greek public which does not know the meaning of the word ‘illusions’. Secondly, it submits that the decisions of EUIPO referred to by the applicant are not applicable to the present case, because, in contrast to the circumstances which gave rise to those decisions, the word elements of the signs at issue are not devoid of distinctiveness for the relevant Greek public. Thirdly, it contends that the applicant’s arguments regarding the letters which the other party to the proceedings before the Board of Appeal sent, warning of the initiation of infringement proceedings, cannot have any effect on the present proceedings.
89 In the context of the global assessment of the likelihood of confusion, the Board of Appeal found, in the contested decision, that, in view of the relevant Greek public’s level of attention, which varied from average to high, the identity or similarity of the services at issue, the above-average degree of visual similarity between the signs at issue and the phonetic and conceptual identity between those signs, the inability of the figurative elements of those signs to change or modify the conceptual message conveyed by their word elements, and the average degree of inherent distinctiveness of the earlier mark, there was, in the present case, a likelihood of confusion.
90 According to the case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
91 Furthermore, according to the case-law, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion. Conversely, where the elements of similarity between two signs are the result of the fact that they have a weakly distinctive component or a component which has no distinctive character in common, the impact of those elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 5 March 2020, Exploitatiemaatschappij De Berghaaf v EUIPO – Brigade Electronics Group (CORNEREYE), T‑688/18, not published, EU:T:2020:80, paragraph 38 and the case-law cited).
92 Accordingly, marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (see judgment of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 32 and the case-law cited).
93 In the present case, it has been confirmed in paragraphs 38 and 39 above that the services at issue are identical or similar, whereas the level of attention of the relevant Greek public varies from average to high.
94 Moreover, as has been held in paragraphs 66 to 72 above, the signs at issue are phonetically and conceptually identical, whereas they are visually similar to a degree ranging from low to average. However, it must be pointed out that the visual similarity between the signs at issue and their phonetic and conceptual identity arise solely out of the presence, in those signs, of the expression ‘museum of illusions’, which, on account of its descriptive nature, will only slightly attract the attention of the relevant Greek public. Likewise, the capacity of that expression to identify the services at issue as coming from particular undertakings and thus to distinguish those services from those of other undertakings must also be held to be slight. As is clear from the case-law referred to in paragraph 91 above, the impact of those elements of similarity on the global assessment of the likelihood of confusion must therefore, itself, be held to be low.
95 Furthermore, as has been stated in paragraph 81 above, the earlier mark has a low degree of inherent distinctiveness. It is apparent from the case-law referred to in paragraphs 91 and 92 above that such a mark enjoys less extensive protection and that therefore the likelihood of confusion is, in such a case, lower.
96 It must be held that the relevant factors referred to in paragraphs 93 to 95 above, considered globally, do not make it possible to conclude that there is a likelihood of confusion in the present case, in particular on account of the descriptiveness of the word elements, which are common to the signs at issue, and the low degree of distinctiveness of the earlier mark.
97 Consequently, it must be held, as a result of the global assessment of the likelihood of confusion, that the Board of Appeal should, in the contested decision, have concluded that there was no such likelihood of confusion in the present case.
98 Since the conclusion drawn in paragraph 97 above is sufficient for the second plea to be upheld and for the sake of procedural economy, that plea must be upheld, without it being necessary to examine the other arguments which the applicant submitted in the context of that plea, as referred to in paragraphs 83 to 86 above, and the contested decision must therefore be annulled.
Costs
99 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
100 In the present case, the applicant has not applied for costs. Consequently, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 December 2019 (Case R 663/2019‑2);
2. Orders each party to bear its own costs.
Tomljenović | Schalin | Škvařilová-Pelzl |
Delivered in open court in Luxembourg on 12 May 2021.
E. Coulon | | M. van der Woude |