JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
1 February 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark DUUUVAL – Earlier EU figurative mark GROUPE DUVAL – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑671/21,
NFL Properties Europe GmbH, established in Eschborn (Germany), represented by M. Kloth, R. Briske, D. Habel and M. Tillwich, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by I. Harrington, J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Groupe Duval, established in Boulogne-Billancourt (France),
THE GENERAL COURT (Fifth Chamber),
composed, at the time of the deliberations, of D. Spielmann, President, R. Mastroianni (Rapporteur) and I. Gâlea, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 9 November 2022,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, NFL Properties Europe GmbH, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 August 2021 (Case R 243/2021-5) (‘the contested decision’).
Background to the dispute
2 On 16 May 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign DUUUVAL.
3 The mark applied for covered services 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, corresponding to the following description: ‘Education and entertainment services in the nature of professional football games and exhibitions; Providing sports and entertainment information via a global computer network or a commercial on-line computer service or by cable, satellite, television and radio; Arranging and conducting athletic competitions, namely professional football games and exhibitions; Football fan club services; Entertainment services, namely, musical and dance performances provided during intervals at sports events; Educational services, namely, physical education programmes; Production of radio and television programmes; Live shows featuring football games, exhibitions, competitions, and musical and dance performances; Sporting, entertainment and cultural activities; Publication of texts other than publicity texts; Organisation of a professional association of sports teams; Operation of a league of football clubs; Scheduling match fixtures for sports games; Provision of information about football’.
4 On 17 September 2019, Imfined SARL, the predecessor of the other party before the Board of Appeal, Groupe Duval, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5 The opposition was based on, inter alia, the EU figurative mark filed on 13 January 2017 and registered on 3 August 2017, covering services in Class 41 corresponding to the following description: ‘Providing of training; Entertainment; Sporting and cultural activities; Arranging and conducting of colloquiums, conferences and seminars; Camp services (Holiday -) [entertainment]; Sport camp services; Club services [entertainment or education]; Health club services; Organisation of competitions [education or entertainment]; Providing sports facilities; Golf facilities (providing -); Rental of golf equipment; Golf facilities (Providing -); Organisation of golf tournaments; Rental of tennis courts; Planning (Party -) [entertainment]; Publishing of publications and magazines’, reproduced below:
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 7 December 2020, the Opposition Division upheld the opposition.
8 On 5 February 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal in its entirety. In essence, the Board of Appeal, taking into account the identity of the services in question, the higher-than-average degree of visual similarity, the high degree of phonetic and conceptual similarity and the distinctive character of the earlier mark, found that, even as regards the services in respect of which the relevant public was likely to display a high level of attention, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
13 In its single plea, it disputes the Board of Appeal’s finding that there is, under Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion on the part of the relevant public in the present case. In particular, it calls into question the Board of Appeal’s assessments relating to the distinctive character of the earlier EU figurative mark, the identity of the services in question and the comparison of the marks at issue.
14 EUIPO disputes the applicant’s arguments.
15 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
16 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
18 The Board of Appeal found that the relevant public consisted of both professionals and the general public. It added that, with regard to the training services in Class 41, its level of attention was high, and that, as regards the other services in Class 41, which referred to the ‘Organisation of sports competitions; Organisation of exhibitions for cultural or educational purposes; Organisation and presentation of colloquiums’, the level of attention could vary from average to high, depending on the price, the degree of sophistication or the terms and conditions of the services purchased. Furthermore, the Board of Appeal focused its analysis on the French-speaking public of the European Union, since the earlier mark contained two words which were clearly understood in French: ‘groupe’ and ‘duval’.
19 The applicant does not dispute those findings.
The comparison of the services
20 In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
21 It is settled case-law that, where the services covered by the earlier mark include the services covered by the trade mark application, those services are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
22 The applicant claims that the Board of Appeal erred in finding that all the services covered by the mark applied for were identical to those covered by the earlier mark. According to the applicant, the services in question are completely dissimilar and, at most, similar to a low degree.
23 In particular, the applicant submits, first, that the ‘education and entertainment services in the nature of professional football games and exhibitions’ and the ‘educational services, namely, physical education programmes’ covered by the mark applied for are not identical to the services of ‘providing of training’ and ‘entertainment’ in the same class covered by the earlier mark. According to the applicant, those services of ‘providing of training’ and ‘entertainment’ cannot be interpreted so broadly that they also cover the applicant’s specific ‘education services’ relating to professional football games and physical education programmes. It adds that the Nice Classification system fundamentally distinguishes educational services from training and entertainment services and states that, at most, the services in question are similar, if at all, to a low degree.
24 In that regard, it should first of all be noted, as EUIPO did, that, even though ‘education’ and ‘providing of training’ are discrete terms in the heading to Class 41 of goods and services under the Nice Agreement, that latter classification is intended to serve exclusively administrative purposes. The scope of protection under trade mark law is therefore not determined by a term’s inclusion in a taxonomic information structure but by the usual meaning of that term. The purpose of the Nice Classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services (see judgment of 30 September 2015, Gat Microencapsulation v OHIM – BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 44 and the case-law cited).
25 Furthermore, it must be observed, as is correctly stated in paragraph 54 of the contested decision, that the ‘education services in the nature of professional football games and exhibitions’ and the ‘educational services, namely, physical education programmes’ covered by the mark applied for are included in the broad category of the services of ‘providing of training’ covered by the earlier mark or, at least, overlap with them. Those services are organised with the aim of sharing knowledge, experience and information. Moreover, according to the case-law, the services related to, inter alia, the organisation of exhibitions for educational purposes are regarded as being identical to the services of ‘providing of training’ (see, to that effect, judgment of 10 November 2016, Polo Club v EUIPO – Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN), T‑67/15, not published, EU:T:2016:657, paragraph 39). Consequently, those services may be regarded as being identical.
26 Secondly, the applicant claims that the services of ‘arranging and conducting athletics competitions, namely professional football games’ are different from the ‘sporting and cultural activities’ covered by the earlier mark, in that the former are services provided by professional associations and clubs and performed for the general public, whereas the latter relate to activities in which consumers actively participate.
27 That argument cannot be upheld either. It should be noted that sporting competitions in the nature of professional football games are sporting events, and the arranging and conducting of the former constitute ‘sporting activities’, with the result that, as the Board of Appeal rightly observed, those services are identical.
28 Thirdly, the applicant claims that the services of ‘providing sports and entertainment information via a global computer network or a commercial on-line computer service or by cable, satellite, television and radio; provision of information about football’ covered by the mark applied for are not identical to the services of ‘entertainment’ and ‘sporting activities’ covered by the earlier mark, but that they are, at most, similar to a low to average degree.
29 In that regard, it is sufficient to note, as is correctly stated in paragraph 61 of the contested decision, that the services at issue in the present case are all included in the broad categories of the services of ‘entertainment, sporting and cultural activities’ covered by the earlier mark. The services at issue may fall within the same broad general category, with the result that they are identical, even if the designation of the services covered by the earlier mark did not specify exactly which information constituted their subject matter. That argument cannot therefore succeed.
30 Fourthly, the applicant states that the services of ‘organisation of a professional association of sports teams; operation of a league of football clubs and scheduling match fixtures for sports games’ are not identical to the services of ‘sporting and cultural activities’ covered by the earlier mark.
31 That argument must also be rejected. It should be noted, as EUIPO did, that the fact that there is a wide variety of sporting activities does not undermine the fact that the services covered by the mark applied for concern ‘sporting activities’ as a whole. The provision of ‘sporting activities’ necessarily involves the organisation and operation of such activities. Consequently, the services covered by the mark applied for are narrower, specific examples falling within the general category of ‘sporting activities’ covered by the earlier mark. Accordingly, those services are identical. Furthermore, contrary to what the applicant claims, those services are all aimed at the general public, which is the end consumer of those services.
32 In the light of the foregoing, it must be held that the Board of Appeal was right to find that the services in question were identical.
The comparison of the signs
33 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).
34 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
35 Moreover, in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, phonetic or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 27).
36 In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the signs at issue.
The distinctive and dominant elements of the signs at issue
37 According to the case-law, for the purpose of assessing the distinctive character of an element making up 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, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38 and the case-law cited).
38 With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
39 In that regard, the Board of Appeal stated that the mark applied for was a word mark composed of a sequence of seven letters, ‘d’, ‘u’, ‘u’, ‘u’, ‘v’, ‘a’, ‘l’, and that it was not disputed that it was the cry of the supporters of the Jacksonville Jaguars football team. As regards the earlier mark, the Board of Appeal made the following findings. First, the word element ‘duval’ is the dominant element of that mark due to its size and position. Secondly, the figurative element has an essentially ornamental value and the word ‘groupe’, which is a generic term relating to all the goods and services covered by the earlier mark, is devoid of any distinctive character. It also stated that the element ‘duval’ could be recognised as being a very common French surname, in particular in Normandy.
40 In the present case, the applicant argues, first of all, that the expression ‘groupe duval’ of the earlier sign will be perceived as a reference to a commercial group in conjunction with a relatively common surname, with the result that the element ‘groupe’ shapes the overall impression and the expression will be understood as a single unit. It maintains that the figurative element of the earlier mark may serve to identify the commercial origin of the goods and services. The applicant claims that this figurative element is a rare illustration giving the earlier mark a noble touch which is missing from the contested sign and that it contributes to the overall impression produced by that mark on the relevant public. By contrast, the contested mark applied for is a single word, namely ‘duuuval’, which is a neologism representing the exclamation of supporters of a United States National Football League (NFL) team established in Duval County (Florida, United States of America).
41 EUIPO disputes the applicant’s arguments.
42 Contrary to what is claimed by the applicant, those findings of the Board of Appeal contain no errors of assessment. As EUIPO observes, the relevant public will not attribute any major significance to the typeface and colours of the earlier mark due to their decorative nature. In that regard, the figurative element will be perceived as purely decorative in the context of the sign as a whole, and the word ‘groupe’, which is considerably smaller than the word ‘duval’, will be understood as a non-distinctive generic term merely indicating that the company in question belongs to a larger group of companies. It is that very large word element which constitutes the dominant and most distinctive element of the earlier sign, having regard in particular to the fact that the mark is composed of word and figurative elements. It should be noted, in that regard, that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
43 It follows that the Board of Appeal was right to find that the word element ‘duval’ was the dominant element of the earlier mark.
The visual similarity
44 As regards the visual comparison of the signs at issue, the Board of Appeal observed that the signs at issue coincided in the letter groups ‘du’ and ‘val’, which, juxtaposed, constituted the dominant element of the earlier mark. It added that those signs differed in the repetition of the letter ‘u’ in the mark applied for and in the other word and figurative elements of the earlier mark. Furthermore, while acknowledging that the letter sequence ‘uu’ in the middle of the mark applied for was clearly striking for the French-speaking public, it found that the letter groups ‘du’ and ‘val’ had a considerable and stronger impact on the perception of consumers, given, in particular, that those letters did not prevent the immediate recognition of the surname ‘duval’, or an allusion to that surname, in view of the fact that the letters which coincide were also placed in the same order and at the beginning and at the end of the marks at issue. The Board of Appeal concluded that they were visually similar to a higher-than-average degree.
45 That assessment is correct. Although the marks at issue differ visually on account of the letters ‘uuu’, the repetition of which is very unusual for the relevant public, the fact remains that they coincide in the letter groups ‘du’ and ‘val’, which are present in the mark applied for and make up the dominant element of the earlier mark. The fact that the dominant element of the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue (see, to that effect, judgment of 14 June 2018, Lion’s Head Global Partners v EUIPO – Lion Capital (LION’S HEAD global partners), T‑310/17, not published, EU:T:2018:344, paragraph 31 and the case-law cited), even where the relevant public has a high level of attention (see, to that effect, judgment of 20 February 2018, Kwang Yang Motor v EUIPO – Schmidt (CK1), T‑45/17, not published, EU:T:2018:85, paragraphs 45 to 47).
46 It follows that the Board of Appeal was right to find that the signs at issue were visually similar to a higher-than-average degree.
47 None of the applicant’s other arguments is capable of calling that finding into question. Contrary to the applicant’s claims, the letter group ‘duval’ of the mark applied for does not in any way occupy a subordinate and marginalised position in that mark. Furthermore, as regards the argument that the letter group ‘uuu’ is ‘lively and playful’ and indicates that it is a loud exclamation, it is sufficient to note that that fact, even assuming it can be established, is not such as to prevent the relevant public from immediately recognising the surname ‘Duval’.
The phonetic similarity
48 Phonetically, according to the Board of Appeal, the pronunciation of the marks coincides in the pronunciation of the element ‘duval’. The triple letter ‘u’ of the mark applied for will not be pronounced by the French-speaking public since there is no sound in French which contains three letters ‘u’. In any event, it found that the elements ‘duval’ and ‘duuuval’ will be pronounced in the same way, in two syllables ‘du’ and ‘val’. The Board of Appeal also found that the word ‘groupe’ of the earlier mark had no equivalent in the contested sign, but that that element was devoid of any distinctive character. Lastly, it noted that the purely figurative element of the earlier mark could not be assessed phonetically. It concluded that the signs at issue were phonetically highly similar.
49 The applicant calls into question that assessment by the Board of Appeal and relies, first, on the difference in the number of syllables of the marks at issue, namely two syllables ‘duuu’ and ‘val’ in respect of the mark applied for and three syllables ‘groupe’, ‘du’ and ‘val’ in respect of the earlier mark and, secondly, on the way in which they will be emphasised when they are pronounced. In that regard, the first syllable ‘duuu’ in the mark applied for is drawn out and emphasised, and the second syllable ‘val’ is hardly perceived, with a minor phonetic role. Conversely, in the earlier mark, the second syllable of the second word element is slightly emphasised.
50 EUIPO disputes the applicant’s arguments.
51 In that regard, it should first of all be borne in mind, as the Board of Appeal did, that the word ‘groupe’ of the earlier mark was devoid of any distinctive character. Consequently, it is unlikely that that element of the earlier mark will be pronounced.
52 In addition, it should be recalled that, according to the case-law cited in paragraph 45 above, the fact that the dominant element of the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue (see, to that effect, judgment of 14 June 2018, LION’S HEAD global partners, T‑310/17, not published, EU:T:2018:344, paragraph 31 and the case-law cited).
53 Furthermore, as the Board of Appeal, in essence, rightly observed, the triple letter ‘u’ of the mark applied for will not lead the relevant public to pronounce that mark differently from the element ‘duval’ of the earlier mark, even if it were accepted that the relevant public perceives the mark applied for as an exclamation and therefore pronounces it more emphatically. It follows that the Board of Appeal did not err in finding that the signs at issue were phonetically highly similar.
The conceptual similarity
54 Conceptually, the Board of Appeal found that the earlier mark will be perceived as referring to the French surname ‘Duval’. As regards the mark applied for, the Board of Appeal harboured doubts that the relevant public would recognise the cry of the supporters of the Jacksonville Jaguars football team in that mark. It is well known, according to the Board of Appeal, that French consumers do not follow American football teams. As regards the triple vowel ‘u’ in the mark applied for, the Board of Appeal found that it had no influence on the perception of the sign by the relevant public. Consequently, according to the Board of Appeal, the signs are conceptually highly similar, given that the elements which distinguished them included an element devoid of any distinctive character and a meaningless figurative element.
55 The applicant claims that the Board of Appeal erred in finding that the signs at issue were conceptually similar. It submits that the public will perceive the earlier mark as a mark of a group of companies, whereas it will perceive the mark applied for as a sports recognition call. According to the applicant, this shows that the marks at issue differ conceptually to a considerable degree.
56 EUIPO disputes the applicant’s arguments.
57 It should be recalled that, according to the case-law, although the average consumer normally perceives a mark as a whole and does not analyse its various details, the fact remains that, when perceiving a word sign, the average consumer will break it down into word elements which, for him or her, suggest a concrete and immediately understandable meaning or which resemble words known to him or her (see judgment of 15 September 2021, Freshly Cosmetics v EUIPO – Misiego Blázquez (IDENTY BEAUTY), T‑688/20, not published, EU:T:2021:567, paragraph 56 and the case-law cited).
58 In the present case, it should be noted that, as EUIPO did, in the case of the relevant public which understands the element ‘duval’ as a common French surname, the mark applied for will simply be perceived as referring to that surname. That assertion is not called into question by the claim that the mark applied for is the supporters’ sports recognition call, given that that call involves the same word ‘duval’. In addition, it should be noted, first, that the figurative element of the earlier mark, which will be perceived as purely decorative, does not convey any concept and, secondly, that the element ‘groupe’, being devoid of any distinctive character, will have a lesser impact on the relevant public compared with the element ‘duval’. In those circumstances, the marks at issue concern the same surname and they may be regarded as conceptually similar.
59 In any event, it must be noted, as EUIPO did, that, even if a surname were not a concept as such and, consequently, if a conceptual comparison were not possible, taking account of the visual and phonetic similarity between the signs at issue, this would not affect the conclusion reached by the Board of Appeal in the contested decision that the signs are similar overall.
The global assessment of the likelihood of confusion
60 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).
61 In the present case, the Board of Appeal found, in paragraph 79 of the contested decision, that there was a likelihood of confusion on the part of the relevant public, even with regard to services in respect of which the relevant public is likely to pay a high level of attention. It based that finding on the identity of the services in question, the higher-than-average degree of visual similarity and the high degree of phonetic and conceptual similarity of the marks at issue, as well as the average degree of distinctiveness of the earlier mark in relation to the services in question, notwithstanding the presence of the element ‘groupe’, which has a low degree of distinctiveness.
62 The applicant submits that there is no likelihood of confusion on the part of the relevant public. It claims that most of the services covered by the two marks at issue are partly dissimilar, or only similar, at most, to an average degree. Moreover, the signs at issue are dissimilar, or at most similar to a low degree, on account of the partly identical letters of which they are composed. As regards the distinctive character of the earlier mark, the applicant argues that, although the element ‘duval’ is understood by the relevant public as a common French surname, that mark can be recognised as having only a weak degree of distinctiveness, given that the relevant public will see an indication of a widely used name in that mark, which is not particularly capable of identifying the services in respect of which the earlier mark has been registered as originating from a particular undertaking, and thus of distinguishing those services from those of other undertakings.
63 EUIPO disputes the applicant’s arguments.
64 In the present case, the identity between the services in question (see paragraphs 20 to 32 above), the higher-than-average degree of visual similarity of the marks at issue and the high degree of phonetic similarity and the conceptual similarity (see paragraphs 44 to 58 above), as well as the average degree of distinctiveness of the earlier mark (see paragraphs 60 to 62 above) must be borne in mind.
65 In respect of the distinctive character of the earlier mark, it must be observed, as EUIPO did, that, even if the earlier mark is understood by the relevant public as a surname, it is sufficiently distinctive to indicate the commercial origin of the services in question, in particular where, as in the present case, the mark is neither descriptive nor laudatory and has no relevant meaning in that regard. It follows that the Board of Appeal did not err in finding, in essence, that the earlier mark had an average degree of distinctiveness.
66 In the light of the foregoing, the Board of Appeal was right to find, in accordance with the case-law cited in paragraph 60 above, that there was a likelihood of confusion on the part of the relevant public, notwithstanding the higher-than-average level of attention of that public with regard to some of those services.
67 In so far as the average consumer only rarely has the chance to make a direct comparison between the different signs but must place his or her trust in the imperfect picture of them that that consumer has kept in his or her mind (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 60 and the case-law cited), the differences between the signs at issue are not able to divert the relevant public’s attention away from the overall similarity created by the identical letter groups ‘du’ and ‘val’, which, juxtaposed, constitute the dominant element of the earlier mark. Accordingly, it is very likely that the relevant public will be led to believe that the services in question come from the same undertaking or from economically linked undertakings.
68 In the light of all of the foregoing considerations, since the single plea in law relied on by the applicant in support of its claims must be rejected, the action must be dismissed in its entirety.
Costs
69 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.
70 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders NFL Properties Europe GmbH to pay the costs.
Spielmann | Mastroianni | Gâlea |
Delivered in open court in Luxembourg on 1 February 2023.
E. Coulon | | M. van der Woude |