JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
20 September 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark UKIO — Earlier EU figurative mark representing two diagonal lines followed by a vertical line and a circle — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑367/18,
Sixsigma Networks Mexico, SA de CV, established in Mexico (Mexico), represented by C. Casas Feu and J. Dorado Lopez-Lozano, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Kusturovic, D. Gája and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Marijn van Oosten Holding BV, established in Amsterdam (Netherlands),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 March 2018 (Case R 1536/2017-2), relating to opposition proceedings between Sixsigma Networks Mexico and Marijn van Oosten Holding,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias (Rapporteur), President, A. Dittrich and R. Frendo, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 15 June 2018,
having regard to the response of EUIPO lodged at the Court Registry on 3 October 2018,
having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 5 February 2016, the company Marijn van Oosten Holding BV filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign UKIO.
3 The services in respect of which registration was sought are in Classes 35, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 35: ‘Advertising; business management; business administration; office functions; marketing services; public relations services; layout services for advertising purposes; drawing up and writing of publicity texts; development of commercial strategies; consultancy and advice relating to commercial strategies; development of visual strategies, formulas and experiences for commercial and advertising purposes; commercial business project management; professional consultancy in the field of commerce; business management consulting; consultancy services regarding business strategies; business consultancy using audiovisual productions for commercial or advertising purposes; presentation of goods and services with the help of audiovisual productions for commercial or advertising purposes; promotion of goods and services for others; business mediation in the sale and promotion of goods and the selection and display of goods; business management of performing artists; compilation of statistics; market prospecting, research and analysis; opinion polling; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; drafting and writing texts, other than publicity texts; film production services; photography and photographic reports; compiling, producing, directing and presenting radio and television programmes, and of audio and video recordings; layout services, other than for advertising purposes; scriptwriting services; news reporters services; theatrical booking agencies; museum services; presentation of works of visual art and literature to the public, for cultural or educational purposes; arranging of exhibitions for educational, cultural or recreational purposes; compilation and providing of training, courses and workshops; arranging and conducting of conferences, seminars, congresses, symposiums, lectures and other such educational activities; publishing, lending and dissemination of newsletters, books, newspapers, magazines, brochures, leaflets, printed matter and other texts and publications; organisation of trade fairs and exhibitions for educational purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet’;
– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; industrial design; industrial design; designing works of art and models; graphic design and graphic art services; product design; design of consumer goods; styling [industrial design]; design and development of computer hardware and software; computer software programming services; design and development of mobile applications; hosting of mobile applications and websites; hosting of platforms and portals on the internet; hosting of communication platforms on the internet; hosting of multimedia and interactive applications; computer programming relating to multimedia and interactive applications; programming of computer animations; design and development of virtual reality software; information and consultancy relating to the aforesaid services; all the aforesaid services, whether or not provided via electronic channels, including the internet’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2016/39 of 26 February 2016.
5 On 29 April 2016, the applicant, Sixsigma Networks Mexico, SA de CV, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now 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 20 February 2014 and registered on 16 April 2015 under the number 12620142:
7 The goods and services covered by the earlier mark are in Classes 9, 38, 41 and 42 and correspond, inter alia, in respect of Classes 41 and 42 to the following description:
– Class 41: ‘Education, entertainment and sports; conferences, exhibitions and competitions; conducting of exhibitions for entertainment purposes; conducting of exhibitions for educational purposes; museum exhibitions; arrangement of conventions for educational purposes; arranging of conventions for training purposes; arranging of conventions for entertainment purposes; arranging of conventions for cultural purposes; arranging and conducting of symposiums; arranging and conducting of seminars; arranging and conducting of congresses; arranging and conducting conferences and seminars; arranging and conducting educational conferences; arranging and conducting of commercial, trade and business conferences; arranging and conducting of conferences; arranging and conducting competitions; arranging and conducting award ceremonies; arranging of an annual educational conference; museum facilities (providing -) [presentation, exhibitions]; training and further training consultancy; providing of training; presentation of radio programmes; television and radio programme preparation and production; preparation of radio and television programmes; editing of television programmes; film production services; portrait photography; television, radio and film production; cultural activities; sporting and cultural activities; live band performances; performance of dance, music and drama; live entertainment services; booking agencies concert tickets; providing cultural activities; provision of museum facilities; photography; entertainment services; presentation of operas; presentation of recitals; presentation of dramas; presentation of dancing displays; presentation of musical performance; presentation of live comedy shows; magic shows (presentation of -); presentation of musical concerts; presentation of concerts; presentation of ballets; audiovisual display presentations; preparation of texts for publication; performances (presentation of live -); theatrical ticket agency services; provision of radio and television entertainment services; museum services; theatrical booking agencies; publishing and reporting; publishing services for books and magazines; services for the publication of guide books; publishing services (including electronic publishing services); publishing services; layout services, other than for advertising purposes; commissioned writing [plays, musicals, for publications etc]; script writing services’;
– Class 42: ‘Rental of computer hardware and peripheral devices, expressly not including anything relating to the rental of equipment for copying, reproduction, printing or scanning, software for managing printing equipment or software for document management; rental of a database server (to others), expressly not including anything relating to the rental of equipment for copying, reproduction, printing or scanning, software for managing printing equipment or software for document management; leasing of data processing systems, expressly not including anything relating to the leasing of equipment for copying, reproduction, printing or scanning, software for managing printing equipment or software for document management; installations for timeshare hardware systems, expressly not including anything relating to hardware systems for equipment for copying, reproduction, printing or scanning, software for managing printing equipment or software for document management; rental of data processing equipment and computers, expressly not including anything relating to the rental of equipment for copying, reproduction, printing or scanning, software for managing printing equipment or software for document management; data security services; computer hardware and software consultancy; computer software consultancy; professional consultancy relating to computer security; consultancy and advice on computer software and hardware; software development, programming and implementation; updating of software data bases; configuration of computer software; creation, updating and adapting of computer programs; development of data bases; creation, maintenance, preservation and adaptation of computer software; design of computer databases; research, development, design and upgrading of computer software; providing information, advice and consultancy services in the field of computer software; preparation of data processing programmes; repair of software [maintenance, updating]; software customisation services; IT security, protection and restoration; data recovery services; disaster recovery services for data communications systems; disaster recovery services for computer systems; server hosting; rental of web servers; encryption, decryption and authentication of information, messages and data; data encryption and decoding services; development of systems for the storage of data; development of systems for the transmission of data; research relating to data processing; design and development of computer hardware and software; design services relating to computer hardware and to computer programmes; troubleshooting of computer hardware and software problems; preparation of computer programs for data processing; customisation of computer hardware and software’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9 On 16 May 2017, the Opposition Division rejected the applicant’s opposition.
10 On 14 July 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11 By decision of 22 March 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal. In particular, after rejecting the applicant’s argument that the comparison of the marks had to be carried out on the basis of the premiss that the earlier mark is perceived as consisting of the sequence of letters ‘k’ ‘i’ ‘o’, the Board of Appeal found that, even if the services covered were identical, the degree of similarity between the marks at issue was not sufficiently great to conclude that there was a likelihood of confusion, even for the part of the relevant public that would perceive the earlier mark as including the sequence of letters ‘i’ ‘o’.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and Marijn van Oosten Holding to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it submits that the average consumer will perceive the earlier mark as consisting of the sequence of letters ‘k’ ‘i’ ‘o’ and that the signs at issue are therefore extremely similar visually and phonetically. It maintains that, in the light of the overall similarity of the signs and the identity of the services, the Board of Appeal erred in finding that there was no likelihood of confusion.
15 EUIPO disputes those arguments.
16 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for 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.
17 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).
18 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).
19 It is in the light of those principles that the present action must be examined.
The relevant public
20 The applicant submits that the relevant public consists of consumers in the European Union and has an average level of attention. The applicant maintains that business customers are not the end users of the services concerned and that those services are not aimed at them.
21 In that regard, first, it must be borne in mind that, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the services in question in that territory (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). Secondly, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
22 In the present case, the Board of Appeal found, in the contested decision, that the European Union constituted the relevant territory for the purposes of applying Article 8(1)(b) of Regulation 2017/1001. Furthermore, it took the view that, in the light of the nature of the services covered by the marks at issue, the relevant public consisted of professionals and end consumers in the European Union and that its level of attention would vary from average to high depending on the price and frequency of purchase of the services.
23 First, it must be pointed out that the applicant does not dispute the Board of Appeal’s finding that the relevant public consists of consumers of the services covered by the marks at issue in the territory of the European Union, a finding which is correct, since the earlier mark is an EU trade mark.
24 Secondly, as regards the composition of the relevant public, it must be pointed out that the applicant merely disputes the fact that the services covered by the marks at issue are aimed at business customers. However, it must be stated that some of the services at issue may be aimed both at the general public and at a public of professionals, such as the arranging and conducting of symposiums, congresses, seminars and conferences in Class 41, and that, by contrast, some of those services are aimed mainly at a public of professionals, such as the professional consultancy relating to computer security or the services of server hosting or rental of web servers in Class 42 covered by the earlier mark. The same is true of the services of hosting of mobile applications, websites, platforms and portals on the internet in the same class covered by the mark applied for. The Board of Appeal did not therefore err in finding that the relevant public consisted both of professionals and of end consumers.
25 Lastly, it is indeed true that, according to settled case-law, where the relevant public consists of consumers who are part of the general public and of professionals, the section of the public with the lowest level of attention must be taken into consideration (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21 and the case-law cited). However in the present case, as has been stated in paragraph 24 above, some of the services covered by the marks at issue are aimed solely at a public of professionals. That public’s level of attention as regards those services will therefore necessarily be higher than that of the general public (see, to that effect, judgment of 27 September 2016, Satkirit Holdings v EUIPO — Advanced Mailing Solutions (luvo), T‑449/15, not published, EU:T:2016:544, paragraph 25). Consequently, the Board of Appeal’s finding that the level of attention of the relevant public as a whole will vary from average to high must be accepted.
The comparison of the services
26 The applicant submits that all of the services concerned are covered by the earlier mark and that the services at issue are therefore identical.
27 In that regard, it must be pointed out that, for reasons of procedural economy, the Opposition Division did not compare all of the services at issue and examined the opposition on the basis of the premiss that all the services covered by the mark applied for and the services covered by the earlier mark were identical. In the contested decision, after pointing out that the Opposition Division had not compared the services, the Board of Appeal found that the marks at issue covered, at least in part, identical services such as the services of ‘education; providing of training; entertainment; sporting and cultural activities; film production services; photography; layout services, other than for advertising purposes; scriptwriting services; theatrical booking agencies; museum services; arranging of exhibitions for educational, cultural or recreational purposes; arranging and conducting of conferences, seminars, congresses, symposiums, lectures and other such educational activities’ in Class 41. In the context of the global assessment of the likelihood of confusion, the Board of Appeal proceeded on the basis of the premiss that the services were identical.
28 Consequently, it must be held that neither the Opposition Division nor the Board of Appeal reached a definitive conclusion as regards the identity or similarity of the services covered by the earlier mark and the services covered by the mark applied for, which were covered in their entirety by the applicant’s opposition. For reasons of procedural economy, those adjudicating bodies proceeded on the basis of the premiss that the services were identical without carrying out an exhaustive comparison of those services, the Board of Appeal, in particular, having merely stated that some of the services in Class 41 were identical.
29 That said, it must be pointed out that the applicant does not call into question the Board of Appeal’s choice of proceeding on the basis of the premiss that all the services at issue are identical, but submits, on the contrary, that that is actually the case.
30 In any event, according to settled case-law, it is not for the Court, in its review of the legality of a decision of a Board of Appeal of EUIPO, to rule, for the first time, on a question which was not examined by that adjudicating body (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72; see also judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling), T‑627/13, not published, EU:T:2015:740, paragraph 151 and the case-law cited).
31 Consequently, at this stage of the analysis, the Court must confine itself to stating that the Board of Appeal proceeded on the assumption that the services at issue were identical, since it is not for the Court to deal with the question, which was not examined by that adjudicating body, of whether the comparison of the services made it possible to reach that conclusion. By contrast, at a later stage, it will be for the Court to determine whether, in the light of that assumption and having regard to the interdependence of the factors taken into account, and, in particular, to the similarity of the marks and that of the goods or services covered by those marks, the Board of Appeal’s global assessment of the likelihood of confusion is correct.
The comparison of the signs
32 The applicant submits that the relevant public will perceive the first element of the earlier mark as a stylised representation of the letter ‘k’ and will, as a result, perceive that mark as a whole as consisting of the word element ‘kio’. It maintains that the marks at issue, which have that word element in common and differ only in the presence of the element ‘u’, are extremely similar visually and phonetically and that the conceptual comparison is neutral as those marks have no clear meaning in the relevant territory.
33 In that regard, it must be borne in mind that 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 In the present case, the Board of Appeal found that the applicant had not proved that the mark applied for had to be compared to the sign KIO. The Board of Appeal found that, since the earlier mark had not acquired enhanced distinctiveness through use and the applicant had not proved that that mark belonged to a family of which the element ‘kio is the root, the earlier mark had to be examined in the form in which it had been registered.
35 As regards the comparison of the signs, the Board of Appeal took the view that, from a visual standpoint, the earlier mark would be perceived by part of the relevant public as devoid of meaning and by another part of that public as containing an arrow pointing to the left, followed by the stylised letters ‘i’ ‘o’ or the number 10, and that the mark applied for would be regarded as consisting of the sequence of letters ‘u’ ‘k’ ‘i’ ‘o’. It found that, since the vertical line was missing, the first element of the earlier mark differed from the letter ‘k’ in the mark applied for. It concluded that there was, at most, a very low degree of visual similarity between those signs, even for the part of the public which perceived the earlier mark as containing the sequence of letters ‘i’ ‘o’. From a phonetic standpoint, the Board of Appeal found, for similar reasons, that there was, at most, a very low degree of similarity between the signs at issue. Lastly, from a conceptual standpoint, the Board of Appeal found that, since those signs did not have any meaning, they were not similar.
36 It must be pointed out at the outset that the applicant’s arguments are based entirely on the premiss that the first element in the earlier mark will be perceived as a stylised representation of the letter ‘k’. The merits of that premiss must therefore be examined first, before ruling on the similarity of the signs at issue.
37 In the first place, it must be pointed out that the letter ‘k’ consists of a vertical line and of two diagonal lines which go in opposite directions and meet in the middle of that vertical line. As EUIPO correctly submits, although it is true that the first element in the earlier mark consists, like the letter ‘k’, of two diagonal lines which point towards the left, it does not, unlike that letter, include a vertical line with which those two diagonal lines are juxtaposed. That vertical line is, however, an essential component of the normal graphic representation of the letter ‘k’, without which the relevant public will have difficulty in recognising that letter.
38 Furthermore, it must be stated that the earlier mark, as registered, does not contain any other element which would encourage the relevant public to perceive an association between the first element of that mark and the letter ‘k’.
39 First, as was stated by the Board of Appeal, the other two elements of which that mark consists will be perceived either as representing the number 10 or as representing the sequence of letters ‘i’ ‘o’. However, even if, on account of the presence of those other two elements, the relevant public were to attribute a meaning to the first element of that mark, it would be likely, as the Board of Appeal pointed out, to see in that element an arrow pointing to the left. It must be added that the relevant public may also perceive that element as representing the mathematical sign ‘lower than’.
40 Secondly, as the Board of Appeal pointed out, according to the evidence which the applicant provided in the course of the opposition proceedings, the earlier mark was not registered in the form that it has when it is used by the applicant, namely in combination with an expression including the sequence of letters ‘k’ ‘i’ ‘o’, which is capable of suggesting that the first element of that mark must be understood as a stylised representation of the letter ‘k’.
41 Consequently, even though the first element of the earlier mark and the letter ‘k’ have features in common, there is nothing to indicate, since an essential component of that letter is missing, that the relevant public will necessarily make the connection between that element and that letter. The Board of Appeal was therefore right in finding, for the purposes of the comparison of the signs, that the relevant public would not perceive the earlier mark as containing the sequence of letters ‘k’ ‘i’ ‘o’.
42 The applicant’s arguments are not capable of casting doubt on that finding.
43 In the first place, the applicant’s argument that, in essence, consumers are now familiar, on account of changes in means of communication, with graphic devices and stylised shapes that convey an idea is irrelevant. First, that argument is based on the erroneous premiss that the first element of the earlier mark constitutes the admittedly stylised, but nevertheless identifiable, representation of the letter ‘k’. However, it is apparent from the findings set out in paragraphs 37 to 41 above that, since an essential component of the letter ‘k’ is missing in the present case, the relevant public will not associate the first element of the earlier mark with that letter. Secondly, in the present case, as is apparent from paragraph 39 above, it is not, as such, the stylisation of the first element of the earlier mark which precludes that element from being associated by the relevant public with the letter ‘k’. As has been stated in that paragraph, the relevant public is likely, in spite of that stylisation, to attribute specific meanings to that element.
44 In the second place, since it is based on the same erroneous premiss as the preceding argument, the argument that consumers will tend to perceive the first element of the earlier mark as a letter because they perceive the other two elements of that mark as forming the sequence of letters ‘i’ ‘o’ must also be rejected.
45 It must be added that the fact that part of the relevant public perceives the last two elements of the earlier mark as a sequence of letters does not necessarily preclude it from conferring on the first element of the mark in question a meaning other than a letter of the alphabet, since it is common for figurative marks to combine letters or numbers with symbols or pictograms.
46 In the third place, it must be pointed out that the applicant’s claim that the first element of the earlier mark is often used in trade to represent the letter ‘k’ is not substantiated by the information that it provided in the course of the proceedings before EUIPO.
47 In the fourth place, as regards the EUIPO Guidelines to which the applicant refers, it is sufficient to state that they contain recommendations relating to whether a word element that is part of a figurative sign is ‘lost’ in the stylisation to which it is subject and to the cases in which it is possible to take that element into account or disregard it. However, as is apparent from paragraphs 37 and 43 above, in the present case, it is not the stylisation of the first element of the earlier mark that prevents it from being associated spontaneously by the relevant public with the letter ‘k’, but the fact that that element does not contain an essential component of that letter. The guidelines on which the applicant relies are therefore irrelevant.
48 In the fifth place, as regards the case-law and the decisions of EUIPO referred to by the applicant, it must be pointed out, as observed by EUIPO, that, according to settled case-law, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal and which are applicable in the factual circumstances of the particular case (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77 and the case-law cited).
49 In the present case, it is sufficient to point out that the judgments and decisions referred to by the applicant do not refer to figurative signs that are identical or very similar to the earlier mark. The findings of the Court and of the adjudicating bodies of EUIPO on which the applicant relies as regards those signs, and which result from an examination of the factual circumstances of the particular cases in question, cannot therefore be applied.
50 It follows from the foregoing that, since the premiss on which the applicant’s arguments relating to the similarity of the signs were based has been rejected as unfounded, the comparison of the signs must be made on the basis of the finding that the relevant public will perceive the earlier mark as consisting of an element which may be associated with the representation of an arrow pointing to the left or of the mathematical sign ‘lower than’ and of two elements which may evoke either the sequence of letters ‘i’ ‘o’ or the number 10.
51 In that regard, as far as, first of all, the visual comparison is concerned, it must be pointed out that the Board of Appeal was right in finding that the only common feature between the signs at issue that the relevant public is likely to perceive lies in the last two elements of those signs, since the mark applied for consists of the element ‘ukio’.
52 The Board of Appeal was also right in finding that the shape of the first element of the earlier mark, taken as a whole, creates a visual impression that is different from that produced by the letter ‘k’ in the mark applied for, since the vertical line is missing. It must be added that that difference is reinforced by the presence of the first letter, ‘u’, in the mark applied for.
53 Lastly, the Board of Appeal was justified in taking into consideration the fact that the signs under comparison were short, with the result that the relevant public would perceive the visual differences between those signs more clearly (see, by analogy, judgment of 23 September 2009, Arcandor v OHIM — dm drogerie markt (S-HE), T‑391/06, not published, EU:T:2009:348, paragraph 41). It must be added that that impression will be reinforced as a result of the greater attention which the consumer generally pays to the beginning of a sign than to the end (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51 and the case-law cited), since the signs in the present case differ precisely in their beginnings.
54 It follows that, contrary to what the applicant submits, the marks at issue are not extremely similar visually. There is, at most, a low degree of similarity between those marks.
55 From a phonetic standpoint, it is necessary to uphold the Board of Appeal’s findings that there will be, at most, some similarity between the marks at issue for the part of the relevant public that will pronounce the earlier mark as ‘io’, but that the pronunciation differs in the sound corresponding to the beginning of the mark applied for, ‘uk’. The Board of Appeal was, likewise, right in pointing out the differences in the rhythm and length of the marks at issue. For the reasons stated in paragraph 53 above, the relevant public is likely to pay more attention to those differences. There is therefore, at most, a low degree of phonetic similarity between the signs at issue and they are not extremely similar phonetically as the applicant submits.
56 From a conceptual standpoint, it must be pointed out that, for most of the relevant public, neither of the signs at issue has any specific meaning. It is true that the part of the public that consists of Lithuanian-speaking consumers may associate the mark applied for with the word ‘ūkio’, which is the genitive of ‘ūkis’, a term that refers, depending on the context, to a holding, agriculture or a household. That said, no meaning can be attributed to the earlier mark. It is apparent from the case-law that two signs are not conceptually similar where one of them has no meaning, even if the other one evokes a concept (see, to that effect and by analogy, judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 55). Consequently, as the Board of Appeal found, the marks at issue are not conceptually similar.
The global assessment of the likelihood of confusion
57 The applicant submits that, in the light of the very high degree of similarity between the marks at issue and the identity of the services, the Board of Appeal erred in finding that there was no likelihood of confusion in the present case. It submits, in particular, that the assessment of that likelihood of confusion cannot be based on the premiss that the relevant public will not be sharp and observant enough to identify the first element of the earlier mark as a representation of the letter ‘k’.
58 It must be borne in mind, in that regard, that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
59 In the present case, the Board of Appeal found that, since the applicant had not claimed that the earlier mark had acquired enhanced distinctiveness through use, its distinctiveness had to be considered to be average. Furthermore, it took the view that the very low degree of visual and phonetic similarity between the signs at issue was cancelled out by the very significant visual and phonetic differences that also existed. In the light of those factors and of the average to high level of attention of the relevant public, the Board of Appeal concluded that there was no likelihood of confusion, even for the part of the relevant public which would associate the last two elements of the earlier mark with the sequence of letters ‘i’ ‘o’ and even if the services at issue were identical.
60 In the first place, it must be pointed out that the Board of Appeal was right in finding that the distinctiveness of the earlier mark was average. It is common ground that, as the Board of Appeal found, the applicant did not claim enhanced distinctiveness acquired through use. Furthermore, as has been stated in paragraph 56 above, no specific meaning can be associated with that mark.
61 In the second place, it has been held in paragraphs 54 and 55 above that there is, at most, a low degree of visual and phonetic similarity between the marks at issue.
62 Consequently, the low degree of visual and phonetic similarity between the marks in the present case does not offset the differences between those marks in that regard, differences which, as has been stated in paragraph 53 above, are more likely to attract the relevant public’s attention because the signs are short and those differences are differences in the beginnings of those signs. Furthermore, it has been held in paragraph 56 above that those signs are not conceptually similar. It must therefore be held that the overall impressions which those signs convey to the relevant public are, at most, similar to a low degree.
63 Consequently, even assuming that the services are identical, including those, among those services, to which an average degree of attention is paid, and taking into account the fact that the average consumer only rarely has a chance to compare the various marks directly and must therefore rely on his imperfect recollection of them (see, to that effect, judgment of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 75 and the case-law cited), it must be held that any likelihood of confusion can be ruled out.
64 The applicant’s argument that it cannot be assumed that the relevant public will not be observant and sharp enough to identify a representation of the letter ‘k’ in the first element of the earlier mark is irrelevant. First, as has already been pointed out in paragraphs 43 and 44 above, the applicant proceeds on the erroneous premiss that the first element of the earlier mark constitutes the admittedly stylised, but nevertheless identifiable, representation of the letter ‘k’, whereas, as has repeatedly been stated, it cannot, since an essential component of that letter is missing, constitute such a stylised representation. Secondly, the applicant’s argument is based on a misreading of the contested decision, since the Board of Appeal did not find that the relevant public would not be sufficiently observant or sharp, but, on the contrary, correctly found that the relevant public’s level of attention ranged from average to high.
65 It follows from all of the foregoing that the single plea in law must be rejected and that the action must therefore be dismissed in its entirety.
Costs
66 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.
67 In the present case, EUIPO has claimed that the applicant should be ordered to pay the costs of these proceedings. 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 Sixsigma Networks Mexico, SA de CV to pay the costs.
Delivered in open court in Luxembourg on 20 September 2019.