JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
7 February 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative trade mark Buffet – Earlier EU word mark BUFF and earlier figurative mark Buff – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑101/23,
Michal Darila, resident in Bratislava (Slovakia), represented by M. Holič, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Original Buff, SA, established at Igualada (Spain), represented by M. Hernández Gázquez and E. Edissonov Kirilov, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M. J. Costeira (Rapporteur), President and M. Kancheva and P. Zilgalvis, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By his action under Article 263 TFEU, the applicant, Mr Michal Darila, seeks, in essence, annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 December 2022 (Case R 528/2022-2) (‘the contested decision’).
Background to the dispute
2 On 6 August 2020, the applicant submitted to EUIPO an application for registration of an EU trade mark for the following figurative sign:
3 The trade mark applied for designated goods in Classes 24 and 25 within the meaning of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of 15 June 1957, as revised and amended, and corresponding, for each of those classes, to the following description:
– Class 24: ‘Textile goods, and substitutes for textile goods; Textiles; Filters made of textile materials; Woven fabrics; Fabrics’;
– Class 25: ‘Footwear; Clothing; Hats; Parts of clothing, footwear and headgear; Millinery; Shoes’.
4 On 3 December 2020, the intervener, Original Buff, SA, lodged an opposition to the registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based in particular on the following earlier trade marks:
– the EU word mark BUFF, registered under number 9 201 856, inter alia, for goods in Class 25;
– the figurative EU trade mark, registered under number 15 955 751, inter alia, for goods in Class 24, reproduced below:
6 The grounds relied on in support of the opposition were those referred to 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) and Article 8(5) of that regulation.
7 On 2 February 2022, the Opposition Division rejected the opposition in its entirety on the basis of Article 8(1)(b) of Regulation 2017/1001 and Article 8(5) of that regulation.
8 On 31 March 2022, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal allowed the appeal on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between the trade mark applied for and the earlier trade marks.
Forms of order sought by the parties
10 The applicant claims that the Court should:
– alter the contested decision in its entirety;
– confirm the decision of the Opposition Division relating to opposition No B 3 136 022;
– reject the opposition;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs in case an oral hearing is convened.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The scope of the applicant’s first and third heads of claim
13 The applicant asks the Court, first, by his first head of claim, to alter the contested decision in its entirety and, secondly, by his third head of claim, to reject the opposition. EUIPO submits that the applicant did not explicitly request the annulment of the contested decision and that, in principle, an application to alter a decision cannot be granted in the absence of an application for annulment.
14 However, it must be held, having regard to the content of the application, that the applicant’s first and third heads of claim implicitly include an application for annulment of the contested decision (see, to that effect, judgment of 27 February 2014, Advance Magazine Publishers v OHIM – Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraphs 15 and 16 and the case-law cited).
15 It follows that the first and third heads of the applicant’s claim in fact seek annulment and alteration of the contested decision.
The admissibility of Eurobarometer Study No 386 produced for the first time before the General Court
16 EUIPO submits that Eurobarometer Study No 386, referred to in paragraph XV of the application, is inadmissible on the ground that the applicant presented it for the first time before the Court.
17 In that regard, an analysis of EUIPO’s administrative file shows that the applicant did not submit Eurobarometer Study No 386 during the proceedings before it.
18 According to settled case-law, the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 72 of Regulation 2017/1001, so that the function of the Court is not to re-examine the factual circumstances in the light of documents submitted to it for the first time. Accordingly, the document referred to in paragraph 16 above should be excluded as inadmissible without it being necessary to examine its probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
The substance
19 In support of his action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
20 The applicant contests, in essence, the assessments of the Board of Appeal concerning the understanding, by part of the relevant public, of the word element of the trade mark applied for, the comparison of the signs at issue and the overall assessment of the likelihood of confusion.
21 EUIPO and the intervener contend, in essence, that the Board of Appeal did not commit any error capable of leading to the annulment of the contested decision.
22 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is to be refused registration where, because of its identity with or similarity to an earlier trade mark and because of the identity or similarity of the goods or services which the two trade marks designate, there is 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 mark.
23 According to settled case-law, a likelihood of confusion exists where the public might believe that the goods or services at issue come from the same undertaking or from undertakings which are economically linked. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services at issue, and taking account of all the relevant factors in the case, in particular the interdependence of the similarity of the signs and that of the goods or services designated (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).
24 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both identity or similarity of the trade marks at issue and identity or similarity of the goods or services which they designate. Those two 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).
25 It is in the light of the above principles that the applicant’s single plea in law must be examined.
The relevant public and comparison of the goods concerned
26 In the first place, as regards the relevant public, the Board of Appeal, in paragraph 18 of the contested decision, confirmed the Opposition Division’s assessment that it consisted of the general public displaying an average level of attention. It also approved, in paragraph 17 of that decision, the Opposition Division’s assessment that the relevant territory was that of the Member States of the European Union.
27 In the second place, as regards the comparison of the goods concerned, the Board of Appeal, like the Opposition Division, considered, first, that the goods covered by the mark applied for in Class 24 were identical with, or very similar to, the goods covered by the earlier word mark and, secondly, that the goods covered by the mark applied for in Class 25 were identical with, or similar to, the goods covered by the earlier figurative mark.
28 Those assessments, which are not disputed by the parties, are free from error of assessment and must therefore be upheld.
The comparison of the signs
29 According to the case-law, the overall assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression produced by them, taking into account, in particular, their distinctive and dominant elements. The average consumer’s perception of the trade marks in relation to the goods or services in question plays a decisive role in the overall assessment of that risk. In that regard, the average consumer normally perceives a trade mark as a whole and does not examine 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).
30 It should be borne in mind that the assessment of similarity between two trade marks cannot be limited to taking into consideration only one component of a complex trade mark and comparing it with another trade mark. By contrast, the comparison must be made by examining the trade marks in question, each considered as a whole, which does not rule out the possibility that the overall impression produced in the memory of the relevant public by a complex trade mark may, 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 trade mark are negligible that similarity can be assessed 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 in particular be the case where that component is capable of dominating on its own the image of that trade mark which the relevant public retains in its memory, so that all the other components of the trade mark are negligible in the overall impression produced by it (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
31 In the present case, the signs to be compared are:
– the trade mark applied for corresponding to the following figurative sign:
– the earlier word mark BUFF and the following earlier figurative mark:
32 As a preliminary point, it should be noted that the Board of Appeal considered that the word element ‘buff’ was the dominant element of the earlier figurative mark, because of its central position, stylisation and size. That assessment, which has not been contested by the parties, must be approved.
– The visual comparison of the signs
33 The applicant claims, first, that the Board of Appeal considered that the lengthening by one third of the number of letters of the word element ‘buff’ was not sufficiently distinctive, without however giving any indication of what would constitute a significant lengthening. Secondly, the applicant submits that the Board of Appeal wrongly considered, without providing any explanation, that the group of letters ‘ff’, present in the signs at issue, possessed a striking character, since that combination results purely and simply from the use of English grammar. Third, the applicant submits that, although not a decisive factor of visual differentiation, the Board of Appeal failed to take into account the fact that the earlier figurative mark and the mark applied for were figurative marks. The applicant concludes that the trade marks at issue are visually similar to an average degree at most.
34 EUIPO and the intervener contest the applicant’s arguments.
35 First, in paragraph 26 of the contested decision, the Board of Appeal found that the signs at issue coincided in the sequence of letters ‘b’, ‘u’, ‘f’ and ‘f’, which corresponded to the entirety of the earlier word mark and the word element of the earlier figurative mark, and differed in the additional letters ‘e’ and ‘t’, placed at the end of the mark applied for. Secondly, it found that those additional letters did not significantly lengthen the mark applied for as a whole, as compared with the earlier marks. Thirdly, it found that the group of letters ‘ff’, present in the signs at issue, was striking. The Board of Appeal concluded that the signs at issue were visually similar to an average degree.
36 In the first place, as regards the conflicting word elements, it is important to note, first, that, according to settled case-law, where the word constituting the earlier mark is wholly contained in the trade mark applied for, that circumstance constitutes an indication of the similarity between those two marks (see judgments of 20 April 2018, holyGhost v EUIPO – CBM (holyGhost), T‑439/16, not published, EU:T:2018:197, paragraph 33 and the case-law cited, and of 6 February 2020, Corporació Catalana de Mitjans Audiovisuals v EUIPO – Dalmat (LaTV3D), T‑135/19, not published, EU:T:2020:36, paragraph 39 and the case-law cited).
37 On the one hand, it must be noted that the element ‘buff’, which constitutes the earlier word mark and the dominant word element of the earlier figurative mark, is contained in its entirety in the single word element ‘buffet’, which constitutes the trade mark applied for.
38 On the other hand, given that the earlier marks are entirely included in the trade mark applied for, the difference arising from the addition of the element ‘et’ in that mark, which, moreover, is no more distinctive than the common element ‘buff’, is not sufficiently great to significantly reduce the visual similarity created by that common element.
39 Secondly, it is true that, according to the case-law, the shorter the signs, the easier it is for the general public to perceive clearly the differences between them, especially where the common elements are not very distinctive (see judgment of 6 February 2020, LaTV3D, T‑135/19, not published, EU:T:2020:36, paragraph 44 and the case-law cited).
40 However, it follows from the case-law concerning short signs that it is only when the differences between those signs can lead to different overall impressions that the similarity between them is appreciably reduced (see judgment of 6 February 2020, LaTV3D, T‑135/19, not published, EU:T:2020:36, paragraph 45 and the case-law cited).
41 Since the additional elements of the trade mark applied for do not significantly lengthen it and are not particularly distinctive, in so far as they consist only of the two letters ‘e’ and ‘t’, their presence is not capable of appreciably weakening the visual similarity of the signs at issue resulting from the common element ‘buff’.
42 Furthermore, it is clear from the case-law that, even in the case of short signs, it is the presence, in each of the word marks, of several letters in the same order which is important. Consequently, the fact, established in the present case, that the earlier word mark is contained in its entirety in the mark applied for constitutes a significant indication of the similarity of those marks, even if they are short signs (see, to that effect, judgment of 6 February 2020, LaTV3D, T‑135/19, not published, EU:T:2020:36, paragraph 48 and the case-law cited).
43 In the second place, as regards the figurative elements of the signs at issue, first, as regards the stylisation of the word elements, it must be noted that their typeface is different and that the stylisation of the word element of the earlier figurative mark is slightly stronger than that of the word element of the mark applied for. However, the stylisation of the word elements of those two marks remains relatively weak and commonplace and, as the intervener submits, those word elements coincide in that they both begin with a capital letter followed by lower-case letters.
44 Secondly, as regards the black circle present in the earlier figurative mark, it must be considered that that element, which is not dominant, as established in paragraph 32 above, constitutes a rather banal geometric shape. Accordingly, the Board of Appeal was right to focus its visual comparison of the signs at issue on the word element of the earlier figurative mark, which constitutes its dominant element, rather than on that simple geometric shape.
45 In the light of the foregoing considerations, it must be concluded that the abovementioned differences are not capable of appreciably reducing the visual similarity of the signs at issue resulting from the presence of the common element ‘buff’. Accordingly, the Board of Appeal rightly held that those signs were similar to an average degree from a visual point of view.
46 That conclusion cannot be called into question by the applicant’s argument that the group of letters ‘ff’ is not striking, in so far as it results from the use of English grammar. As EUIPO submits, the applicant has not adduced any evidence to show that the relevant public in Estonia, Lithuania, Bulgaria, Greece and Croatia would perceive that group of letters as conforming to the rules of English grammar.
47 In any event, irrespective of whether the group of letters ‘ff’ complies with the rules of English grammar, it will attract the attention of the relevant public in the signs at issue in so far as it consists of two consecutive identical letters which, first, constitute half of the word element of the earlier marks and, secondly, are placed in the middle of the word element of the trade mark applied for.
– The phonetic comparison of the signs
48 The applicant agrees, in essence, with the Board of Appeal’s conclusion that the signs at issue have a below-average degree of similarity from the phonetic point of view, but challenges its reasoning as regards, first, the letter ‘e’, present in the sign applied for, which is merely an additional letter, and, secondly, the fact that those signs have an identical syllable which constitutes both the sole word element of the earlier signs and one of the two syllables making up the word element of the sign applied for. The applicant states that the pronunciation of the signs at issue is completely different. According to him, the first syllable of the word element ‘buffet’ in the sign applied for is ‘bu’ and the second is ‘fet’ or ‘fe’. Those two syllables are clearly different from the syllable ‘buf’ or ‘baf’, which is the pronunciation of the word element ‘buff’ in the earlier trade marks.
49 EUIPO and the intervener contest the applicant’s arguments.
50 In the present case, the Board of Appeal considered, in paragraph 27 of the contested decision, that the beginning of the sign applied for was pronounced in the same way as that of the earlier signs and differed from them by the additional sound ‘et’ at the end, which would not go unnoticed. Thus, it established that the signs at issue had an identical syllable which, first, constituted the only word element making up the earlier marks and, secondly, was one of the two syllables making up the sign applied for. The Board of Appeal considered that the signs at issue did in fact coincide through the same vowel ‘u’, placed at the beginning, and that the vowel ‘e’ was merely an additional vowel. It considered, however, that the rhythm of pronunciation of those signs would be different because of the different number of syllables making them up. The Board of Appeal concluded that, on the whole, it agreed with the conclusion of the Opposition Division that the signs at issue had a below-average degree of phonetic similarity.
51 Since, as EUIPO submits, the applicant objects only to the Board of Appeal’s analysis of similarity, but does not contest its finding that the degree of phonetic similarity between the signs at issue is below average, the applicant’s arguments are ineffective.
52 In any event, in view of the different number of syllables in the signs at issue and the equally different rhythm of their pronunciation, the Board of Appeal was right to conclude that the degree of phonetic similarity between the signs at issue was below average.
– The conceptual comparison of the signs
53 The applicant considers that the word element ‘buffet’ in the trade mark applied for has a clear conceptual aspect. He points out that that word has a similar meaning in Spanish, English, French and Italian, but also in Czech, German, Polish and Slovak, although there may be a slight transliteration. According to the applicant, in order to assess the meaning of that word, it is necessary to take into account the fact, which emerges from Eurobarometer Study No 386, that more than half the population of the European Union speaks, in addition to its mother tongue, one or more foreign languages, most often European, and principally English, French, German, Spanish and Italian. The applicant adds that, in most of the foreign languages mentioned by the Board of Appeal, the word ‘buffet’ has a meaning.
54 EUIPO and the intervener contest the applicant’s arguments.
55 First, the Board of Appeal considered that the signs at issue conveyed two different concepts for the English-speaking public, namely that the latter would perceive the word ‘buff’ as a reference to a dull pale yellow colour or, more colloquially, to an amateur or specialist and the word ‘buffet’ as a meal of cold food arranged on a long table at a party, public occasion or café, usually in a hotel or railway station, or to a piece of furniture. Secondly, for the Italian-, French- and Spanish-speaking public at least, those signs were not conceptually similar, since the word ‘buffet’ had a meaning, whereas the word ‘buff’ had no meaning. Thirdly, for another part of the public, such as Bulgarian, Estonian, Greek, Croatian or Lithuanian speakers, none of the signs had a clear meaning and, consequently, the conceptual comparison was neutral.
56 In the first place, as regards the word element ‘buff’ in the earlier marks, the Board of Appeal’s assessment in paragraph 22 of the contested decision, which is not disputed by the parties, must be confirmed, according to which, for the part of the relevant public for whom English is the mother tongue, it refers to a dull pale yellow colour or, more colloquially, to an amateur or a specialist and, for the rest of the relevant public, it does not convey any concept.
57 In the second place, as regards the word element of the trade mark applied for, namely the element ‘buffet’, it must be noted, as did the Board of Appeal, that, for part of the relevant public, it will be perceived as a reference either to a meal of cold food laid out on a long table at a party or public occasion or café, generally in a hotel or railway station, or to a piece of furniture. The relevant part of the public that speaks English, French or Italian will understand the word ‘buffet’ if it exists in that form in those languages. The same applies to the relevant section of the public speaking other languages in which the word ‘buffet’ is used as such or in a similar form, such as Spanish, for example.
58 However, as EUIPO submits, only part of the relevant public will perceive the word ‘buffet’ as such. As the Board of Appeal found in paragraph 25 of the contested decision, such a meaning is not immediate in languages in which the equivalent of that word is spelt very differently, such as ‘бюфет’ in Bulgarian, ‘phuvet’ in Estonian, ‘μπουφές’ in Greek, ‘bife’ in Croatian or ‘bufetas’ in Lithuanian. Thus, the Board of Appeal was right to consider that, taking into account the elements in the file, the word ‘buffet’ had no meaning in the eyes of the part of the relevant public speaking Bulgarian, Estonian, Greek, Croatian or Lithuanian.
59 Having regard to all the foregoing considerations, it should be noted, first, that the word ‘buff’ has a meaning only for the English-speaking part of the relevant public and, secondly, that the word ‘buffet’ has no meaning for the Bulgarian-, Estonian-, Greek-, Croatian- or Lithuanian-speaking part of the relevant public.
60 As regards the part of the relevant public which speaks Bulgarian, Estonian, Greek, Croatian or Lithuanian, the signs at issue will not be conceptually comparable since none of them, taken as a whole, has any meaning. Where none of the signs at issue has any meaning taken as a whole, it must be found that comparison at conceptual level is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).
61 Furthermore, the conclusion of the Board of Appeal that the signs at issue are different for the English-speaking part of the relevant public and for at least the Spanish-, French- or Italian-speaking part of the relevant public must be confirmed. As regards the latter part of the relevant public, it must be noted that, where one of the trade marks at issue has a meaning in the eyes of the relevant public and the other mark does not, it must be found that the trade marks at issue are conceptually different (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).
62 The applicant’s arguments cannot invalidate the conclusions set out in paragraphs 60 and 61 above.
63 First, the applicant’s argument that, in essence, the word ‘buffet’ has a similar meaning in the Czech, German, Polish and Slovak languages is not such as to call into question the undisputed fact that that word has no meaning in the Bulgarian, Estonian, Greek, Croatian and Lithuanian languages.
64 Secondly, as regards the applicant’s argument that the fact that more than half of the population of the European Union speaks, in addition to its mother tongue, one or more foreign languages, including principally English, French, German, Spanish and Italian, must be taken into account, it should be borne in mind that knowledge of a foreign language cannot, in general, be presumed (judgments of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83, and of 14 July 2021, Cole Haan v EUIPO – Samsøe & Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 39).
65 In so far as the applicant did not substantiate those allegations during the administrative procedure, the only evidence to which he refers having, moreover, been declared inadmissible in paragraph 18 above, he cannot rely on those statistics concerning knowledge of certain languages in the European Union. Thus, the applicant has shown neither that all of the relevant public speaking Bulgarian, Estonian, Greek, Croatian or Lithuanian would speak another language in which the word ‘buffet’ would have a meaning, nor that that public would understand that word and attribute a meaning to it.
66 Thirdly, the applicant’s arguments that, first, the word ‘buffet’ is ubiquitous in the European Union and, secondly, despite a different transliteration in Bulgarian, Estonian, Greek, Croatian or Lithuanian, its equivalent in each language has an identical or similar phonetic appearance are also unsubstantiated. As EUIPO points out, the applicant merely mentioned those arguments without providing any evidence in support of them during the administrative procedure, even though they do not constitute well-known facts.
67 Accordingly, in the present case, it must be held that there is not sufficient evidence in the file to conclude that the part of the relevant public speaking Bulgarian, Estonian, Greek, Croatian or Lithuanian will understand the word ‘buffet’.
68 In the light of the foregoing, it should be noted, first, that, as the Board of Appeal rightly found, from a conceptual point of view the signs at issue are different for the English-speaking part of the relevant public and for at least the Spanish-, French- or Italian-speaking part of the relevant public and, secondly, that a conceptual comparison is not possible for the Bulgarian-, Estonian-, Greek-, Croatian- or Lithuanian-speaking part of the relevant public.
The intrinsic distinctiveness of the earlier marks
69 In paragraphs 29 and 30 of the contested decision, the Board of Appeal held, first, that the inherent distinctiveness of the earlier trade marks was average and, secondly, that the earlier word mark had enhanced distinctiveness due to its reputation in Spain for clothing and headgear in Class 25 and that the earlier figurative mark had no reputation or enhanced distinctiveness for the goods in Class 24 for which it was registered.
70 It should be noted that the applicant does not contest those assessments of the Board of Appeal.
The overall assessment of the likelihood of confusion
71 The applicant relies on paragraph 20 of the judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25), and paragraph 75 of the judgment of 4 March 2020, EUIPO v Equivalenza Manufactory (C‑328/18 P, EU:C:2020:156), that there are no relative grounds for refusal within the meaning of Article 8(1)(b) of Regulation 2017/1001 in respect of the trade mark applied for.
72 EUIPO and the intervener contest the applicant’s arguments.
73 Taking into account the average inherent distinctiveness of the earlier marks, the similarity of the signs at issue to an average degree visually and to a below-average degree phonetically, the Board of Appeal concluded, in paragraph 35 of the contested decision, that there was a likelihood of confusion, including a likelihood of association, for at least that part of the relevant public which speaks Bulgarian, Estonian, Greek, Croatian or Lithuanian.
74 Thus, the Board of Appeal considered that the visual and phonetic similarities of the signs at issue could not be neutralised by their conceptual differences, at least for that part of the relevant public for whom neither the word ‘buff’ nor the word ‘buffet’ had a clear meaning, having regard also to the fact that the goods designated by the trade marks at issue were not at all related to a buffet, whether that buffet was understood as a piece of furniture, a meal or a bar.
75 In that regard, it should be borne in mind that the overall assessment of the likelihood of confusion involves a degree of interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services designated. Thus, a low degree of similarity between the goods or services designated may be offset by a high degree of similarity between the trade 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).
76 Where the protection of the earlier trade mark extends to the whole of the European Union, the perception of the trade marks at issue by the consumer of the goods and services in question in that territory must be taken into account. However, in order to refuse registration of an EU trade mark, it is sufficient that a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation 2017/1001 exists in a part of the Union (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 76 and the case-law cited).
77 First, in the present case, it is clear from the foregoing that the relevant public consists of the general public with an average level of attention and the relevant territory is that of the European Union.
78 Secondly, the goods covered by the trade mark applied for are identical, very similar or similar to the goods covered by the earlier trade marks.
79 Thirdly, the signs at issue are similar to an average degree visually and to a below-average degree phonetically. Moreover, conceptual comparison is not possible for the Bulgarian-, Estonian-, Greek-, Croatian- or Lithuanian-speaking part of the relevant public.
80 In the light of the foregoing considerations, it must be held that the Board of Appeal did not commit any error of assessment in finding that there was a likelihood of confusion for at least that part of the relevant public which speaks Bulgarian, Estonian, Greek, Croatian or Lithuanian.
81 That conclusion cannot be called into question by the applicant’s argument that, in essence, the absence of conceptual similarity neutralises, in the present case, any visual and phonetic similarity, which eliminates any likelihood of confusion.
82 In that regard, it follows from the case-law, referred to by the applicant, that the overall assessment of the likelihood of confusion implies that conceptual differences between two signs may neutralise phonetic and visual similarities between them, provided that at least one of those signs has, in the eyes of the relevant public, a clear and specific meaning, so that that public is capable of grasping it directly (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98, and of 14 October 2003, Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 54).
83 It is clear from paragraph 59 above that, for part of the relevant public, namely Bulgarian, Estonian, Greek, Croatian and Lithuanian speakers, neither the element ‘buff’ nor the element ‘buffet’ has a clear and specific meaning. Thus, in so far as the conditions referred to in the case-law cited in paragraph 82 above are not met for that part of the relevant public, there can be no neutralisation of the phonetic and visual similarities for that part of the latter.
84 Accordingly, it must be held that there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between the signs at issue for at least that part of the relevant public which speaks Bulgarian, Estonian, Greek, Croatian or Lithuanian. Thus, having regard to the case-law referred to in paragraph 76 above, the Board of Appeal was right to refuse registration of the trade mark applied for.
85 In the light of all the foregoing considerations, since the single plea in law relied on by the applicant in support of his claims cannot be upheld, the action must be dismissed in its entirety.
Costs
86 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.
87 Since the applicant has been unsuccessful, he must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, it must, since no hearing has been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Michal Darila to pay his own costs as well as those incurred by Original Buff, SA;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira | Kancheva | Zilgalvis |
Delivered in open court in Luxembourg on 7 February 2024.
V. Di Bucci | | M. van der Woude |