JUDGMENT OF THE GENERAL COURT (Second Chamber)
20 March 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark BF energy – Earlier national word mark BS Energy – Earlier EU trade mark and national figurative marks BS ENERGY – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑245/23,
Braunschweiger Versorgungs AG & Co. KG, established in Brunswick (Germany), represented by C. Drzymalla, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
B.F. Energy Srl, established in Rome (Italy),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović (Rapporteur) and W. Valasidis, 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 its action under Article 263 TFEU, the applicant, Braunschweiger Versorgungs AG & Co. KG, seeks, in particular, the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 February 2023 (Case R 1646/2022-2) (‘the contested decision’).
Background to the dispute
2 On 11 November 2020, B.F. Energy Srl filed an application with EUIPO for registration of the following figurative sign as an EU trade mark:
3 The mark applied for covered goods and services in Classes 4, 7, 9, 11, 37, 39, 40, 42 and 44 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, for each of those classes, to the description in paragraph 1 of the contested decision.
4 On 12 April 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on the following earlier marks:
– the German word mark BS Energy covering services in Classes 35, 36, 37, 39, 40 and 42, corresponding, for each of those classes, to the description in paragraph 5(a) of the contested decision;
– the EU figurative mark, reproduced below, covering services in Classes 35, 36, 37, 39, 40 and 42, corresponding, for each of those classes, to the description in paragraph 5(b) of the contested decision:
– the German figurative mark, reproduced below, covering services in Classes 35, 37 and 42, corresponding, for each of those classes, to the description in paragraph 5(c) of the contested decision:
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 20 June 2022, the Opposition Division rejected the opposition in its entirety.
8 On 24 August 2022, 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 on the ground that there was no 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;
– reject the application for registration of the EU trade mark;
– order EUIPO to pay the costs, including the costs of proceedings before the Board of Appeal.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
The first head of claim, for annulment of the contested decision
12 The applicant relies on a single plea in law alleging the infringement of Article 8(1)(b) of Regulation 2017/1001, which consists of three parts, alleging, in essence, first, an erroneous assumption of a high level of attention on the part of the relevant public, second, an erroneous assessment relating to the low degree of similarity of the signs at issue and, third, an erroneous assessment of the absence of any likelihood of confusion.
13 In that regard, it must be borne in mind that 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 mark. Furthermore, pursuant to Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade mark’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
14 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 32 and the case-law cited).
15 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
16 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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 (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).
17 In the present case, the Board of Appeal found that the goods and services concerned were aimed at the professional public and partially also the public at large in the European Union. Since that finding is not in itself contested by the applicant, there is no need to call it into question.
18 Furthermore, the Board of Appeal noted that although the professional public can in principle be considered to have a higher level of attention than the public at large, in the present case both the public at large and the professional public display a high level of attention. That high level of attention is due to the fact that, according to the Board of Appeal, the goods and services concerned, linked to the production, supply or use of energy, are not purchased on a regular basis, may be relatively expensive, have specific technical features and can present potential safety risks.
19 The applicant maintains that the Board of Appeal erred when determining the applicable level of attention of the public at large as being high rather than average, to the extent that the goods and services covered by the marks at issue, such as the provision of energy services relating to electricity supply systems, are purchased on a regular basis and, although they have specific technical and safety features, those features play a secondary role taking into account the high level of regulation and standardisation in those areas.
20 In that regard, as EUIPO correctly submits, it should be borne in mind that, when consumers belonging to the public at large have to choose the goods and services in question, their choice will necessarily entail a careful and in-depth analysis of the specific technical features of those goods and services, such as their energy consumption profile, their classification in terms of energy efficiency, their compliance with safety standards, their compatibility and their interoperability with other complex systems in which they are likely to be integrated, or their impact on the environment. It should be noted that the purchase of such goods and services does not occur on a daily basis and may involve significant investments (see, to that effect, judgment of 9 December 2014, DTL Corporación v OHIM – Vallejo Rosell (Generia) T‑176/13, not published, EU:T:2014:1028, paragraph 47).
21 As regards, specifically, the energy supply and distribution services, such as electricity or gas, referred to by the applicant, even though the need for an energy supply and the associated energy sources are a fact of daily life for the public at large, that public does not conclude new energy supply contracts on a regular basis. In addition, the choice of supplier will normally be preceded by a detailed analysis of the features of the proposed offer, in particular in the light of factors such as the proposed tariffs in relation to the estimated consumption, the power or capacity offered, the duration of the contract and the conditions for termination, the quality of the customer service or the availability of energy from renewable sources.
22 Consequently, the applicant’s argument, in the context of the first part of the single plea, relating to the level of attention of the public at large, must be rejected.
The comparison of the goods and services
23 In the present case, the Board of Appeal noted that some of the goods and services covered by the mark applied for were identical or similar to the services covered by the earlier marks. It thus pointed out, by way of example, that the mark applied for covered services relating to the installation of power generating apparatus in Class 37, which were identical to the services of building, installation, maintenance and repair of power supply facilities installations, in the same class, covered by the earlier marks. For reasons of procedural economy, the Board of Appeal conducted its analysis as if all the goods and services covered by the mark applied for were identical to the services covered by the earlier marks, which was the approach most favourable to the examination of the opposition.
24 Since that approach has not been disputed by the applicant, there is no reason to call into question the Board of Appeal’s assessment based on the identity of the goods and services at issue.
The comparison of the signs
25 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).
26 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).
27 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 assessment of the distinctive and dominant elements of those signs carried out by the Board of Appeal.
– The distinctive and dominant elements of the signs at issue
28 The Board of Appeal found that the short word elements ‘bs’ and ‘bf’ of the signs at issue were meaningless in relation to the goods and services at issue and that they were therefore distinctive. By contrast, their common word element ‘energy’, which has similar equivalents in all the relevant languages, is recognised throughout the territory of the European Union as referring to a source of energy or the ability and strength to do or to produce things. That element is therefore descriptive of the goods and services at issue, which fall within or are related to the energy sector. It is therefore devoid of any distinctive character.
29 Furthermore, the Board of Appeal noted that the stylisation of the elements of the earlier figurative marks was simple and banal and, therefore, non-distinctive. As regards the figurative elements of the mark applied for, consisting of flames, the Board of Appeal found that those elements were linked to energy and are, therefore, non-distinctive, although they were, however, capable of attracting the attention of the relevant public.
30 Thus, the Board of Appeal concluded that the word elements ‘bs’ and ‘bf’ constituted the dominant elements of the signs at issue and that consumers would attach very little or no importance to the word element ‘energy’ common to the signs at issue.
31 The applicant disputes the Board of Appeal’s assessments, claiming that the Board of Appeal erred in finding that the word element ‘energy’ played a secondary role in the signs at issue. In addition, it observes that, although it is descriptive, the element ‘energy’ is three times longer than the word elements ‘bs’ and ‘bf’ and, since it is not sufficiently separated from them, it will not be perceived as a component separate from those other word elements of the signs, but is rather linked to them when the signs at issue are read or pronounced by an average consumer. Consequently, the Board of Appeal incorrectly focused on the word elements ‘bs’ and ‘bf’ for the purposes of the comparison of the signs at issue.
32 EUIPO disputes the applicant’s arguments.
33 As a preliminary point, it should be noted that the mark applied for is a composite mark consisting of a figurative element placed before word elements. More specifically, it can be broken down into a graphic design on the left side, consisting of two vertically interlaced flames, into a word element consisting of the letters ‘b’ and ‘f’ written in upper-case letters, larger than the other word element of the sign, and into a slightly stylised word element ‘energy’, written in lower-case letters and placed below the word element ‘bf’. All the word and figurative elements of the mark applied for are depicted in different shades of grey.
34 The two earlier figurative marks contain a word element consisting of the letters ‘b’ and ‘s’ written in bold upper-case letters, followed by a thin vertical line and the non-stylised word element ‘energy’ written in capital letters. The earlier word mark consists of the word elements ‘bs’ and ‘energy’.
35 It should be borne in mind that, 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).
36 In addition, it should also be borne in mind that, where some elements of a trade mark are descriptive of the goods in respect of which that mark is registered or the goods covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM – Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited).
37 In the first place, as regards the earlier figurative marks, the line separating the word elements of those marks and the bold characters of their word element ‘bs’ may be regarded as simple, as the applicant acknowledges.
38 Furthermore, as regards the mark applied for, it is true that the interlaced flames on the left-hand side of that mark are likely to be perceived as evoking energy. However, it must be stated that their size is significantly larger than that of the word element ‘energy’ and of a length equivalent to that of the word element ‘bf’ and that they occupy the entire left-hand side of the mark applied for. They are therefore likely to be identified and retained in the consumer’s recollection of the image of that mark.
39 In the second place, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that the word element ‘energy’, which is common to the signs at issue, is descriptive of the intended purpose or functioning of the goods and services concerned, in so far as they are or may all be linked to energy or require energy. As such, there is no need to call into question that assessment of the Board of Appeal.
40 In the third place, with regard to the applicant’s arguments that the word ‘energy’, although descriptive, does not play a secondary role in the present case and, being three times larger than the word elements ‘bs’ and ‘bf’ in the signs at issue, may be regarded as dominant in relation to those word elements, the following considerations must be noted.
41 At the outset, it should be observed that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those descriptive elements will not generally be considered by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 69 and the case-law cited).
42 As regards the earlier word mark, it is common ground that it is composed of two elements, namely ‘bs’ and ‘energy’. Contrary to what the applicant claims, there is nothing in the file to establish that the relevant public is not capable of identifying each of those two elements separately. Accordingly, it is appropriate to uphold the Board of Appeal’s assessment, which is not disputed as such by the applicant, that the word element consisting of the letters ‘b’ and ‘s’, in so far as it is meaningless, was distinctive in relation to the services which it covered. By contrast, the relevant public is in a position to understand the meaning of the element ‘energy’, the descriptive character of which is not disputed either. When perceiving a mark which designates energy-related goods and services, the relevant public will be inclined to disregard the element which simply refers to those goods and services and will pay more attention to the distinctive element of that mark. The fact that the term ‘energy’ has six letters whereas the element ‘bs’ only has two cannot alone make that element likely to make an impression on the relevant public and to be recollected by them. In those circumstances, the Board of Appeal was correct to find that the relevant public would attribute very little, if any, importance to the word element ‘energy’ and would concentrate on the element ‘bs’.
43 That finding must be confirmed all the more in the case of the earlier figurative marks, in which the word element ‘bs’ appears in bold characters whereas the word element ‘energy’ appears in normal characters and without any stylisation. Furthermore, the fact that the relevant public is likely to identify the elements ‘bs’ and ‘energy’ as separate elements is reinforced, in the case of the earlier figurative marks, by the thin line between those two word elements.
44 As regards the mark applied for, it is also necessary to confirm the Board of Appeal’s assessments relating to the distinctive character of the word element ‘bf’ in relation to the goods and services covered by that mark and to the descriptive character of the word element ‘energy’. Furthermore, as regards the word element ‘bf’, it must be pointed out that, because of its size, which is markedly larger than the other elements of the mark applied for, the shades of grey it depicts and its central position, with the result that it occupies two thirds of the visual space of the mark in question, it is likely to attract the attention of the relevant public more than the word element ‘energy’, as the Board of Appeal correctly found. The word element ‘energy’, apart from the fact that it is descriptive of the goods and services covered by the mark applied for, occupies only a quarter of the visual space and is located in the lower quadrant of that mark.
45 Accordingly, the applicant’s arguments put forward in the context of the second part of the single plea for annulment, relating to the distinctive and dominant elements of the signs at issue, must be rejected.
– Visual comparison
46 In the present case, in paragraph 40 of the contested decision, the Board of Appeal noted that the relevant public would focus its attention on the word elements ‘bs’ and ‘bf’ and would easily notice the different letter of those two short word elements. Furthermore, it stated that the coincidence in the word element ‘energy’ common to the signs at issue would have very little impact, if any. It found that the signs at issue are visually similar to a very low degree.
47 The applicant disputes the Board of Appeal’s assessments, claiming that the signs at issue, being almost identical, must be considered visually similar to an average degree. It states that the word elements of the signs at issue are not short expressions and that therefore the only difference between those elements consisted of a single letter positioned in the middle of the word elements in question. Such a difference would not be perceived by the relevant public, which would have an imperfect recollection of those signs.
48 EUIPO disputes the applicant’s arguments.
49 First, as has been found in paragraphs 42 to 44 above, it must be borne in mind that the word elements ‘bs’ and ‘bf’ are the distinctive elements of the signs at issue, which are likely to attract more attention from the relevant public. By contrast, since the element ‘energy’ is descriptive of the goods and services at issue, the relevant public will only attribute to it very little or no importance.
50 In those circumstances, the Board of Appeal was right to point out the importance, from a visual point of view, of the differences between the word elements ‘bs’ and ‘bf’ of the signs at issue. In that regard, it is necessary to recall the case-law according to which the relevant public is likely to perceive more clearly the differences between the signs at issue when they are short (see, to that effect, judgment of 4 May 2018, El Corte Inglés v EUIPO – WE Brand (EW), T‑241/16, not published, EU:T:2018:255, paragraph 35 and the case-law cited). Thus, since the relevant public will focus more on the word elements ‘bs’ and ‘bf’, which are short elements, the differences between those elements will be perceived clearly by the relevant public.
51 Second, as has just been stated in paragraph 33 above, the mark applied for is a composite mark, consisting of a graphic design on the left side consisting of two vertically interlaced flames, a word element ‘bf’, written in upper-case letters, larger in size than the other elements of the sign and the word element ‘energy’, which is smaller than the other elements of the sign, written in lower-case letters and placed below the word element ‘bf’. All the word and figurative elements of the mark applied for are depicted in different shades of grey. With the exception of the word element ‘energy’ common to the signs at issue, all the other elements of the mark applied for, which are likely to be easily identified and retained in the image of that mark which the consumer will recollect, distinguish it, from a visual point of view, from the earlier marks.
52 Third, the size, position and stylisation of the word element ‘bf’ and the figurative element consisting of flames, which are specific to the mark applied for, are likely to attract the relevant public’s visual attention more than the word element ‘energy’, which is common to the signs at issue. The word element ‘bf’ and the flames take up a large part of the visual space of the mark applied for and are placed in a prominent position on the top left quadrant of it. By contrast, the word element ‘energy’, written in thinner letters, only takes up a quarter of that space, in the bottom right quadrant. Such a vertical arrangement of those elements makes the flames and the word element ‘bf’ stand out more prominently when the mark applied for is visually perceived by the relevant public. Furthermore, the stylisation of the word element ‘bf’, consisting of a slight deterioration in the intensity of the characters which reproduces the stylisation of the flames which appear on the side, further reinforces the prominence of that element ‘bf’, which differs from the word element ‘bs’ of the earlier marks.
53 As such, visually, the differentiating elements between the signs at issue are more important than the elements of similarity. The signs at issue are therefore, as the Board of Appeal correctly found, visually similar to a low degree.
54 In the light of the foregoing considerations, the applicant’s argument concerning the visual comparison of the signs at issue must be rejected.
– Phonetic comparison
55 In the present case, in paragraph 41 of the contested decision, the Board of Appeal noted that, throughout the relevant territory, the letter ‘b’ in the signs at issue would be pronounced identically, whereas the pronunciation of the second letter of the distinctive word element of the signs, namely the letter ‘f’ in the mark applied for and the letter ‘s’ in the earlier marks, was different. The Board of Appeal also noted that it could be assumed that the word element ‘energy’, because of its descriptive character, would not be pronounced in any of the signs, particularly in the case of the mark applied for, given the secondary role of that word element in the sign on account of its smaller size and its position below the word element ‘bf’ considered to be more distinctive. The Board of Appeal concluded that the signs are phonetically similar to a low degree.
56 The applicant disputes the Board of Appeal’s findings, claiming that, on account of the presence of the word element ‘energy’, the relevant public will pronounce all the word elements of the signs in English, including ‘bs’ and ‘bf’, and infers from this that the major part of the signs are pronounced identically. It claims that the signs are phonetically similar to an average degree.
57 EUIPO disputes the applicant’s arguments.
58 In the first place, as has been stated in paragraphs 42 to 44 above, the relevant public will attach very little or no importance to the word element ‘energy’, which is common to the signs at issue, because of its descriptive character and its size and position in the sign applied for, and will instead focus on the word elements ‘bs’ and ‘bf’. In those circumstances, there is no need to call into question the Board of Appeal’s assessment that it is likely that, on account of its descriptive character, the word element ‘energy’ will not be pronounced.
59 In the second place, it should be noted that the word elements ‘bs’ and ‘bf’ of the signs at issue are pronounced letter by letter in two syllables. It follows that, phonetically, those word elements differ in terms of their second syllable, namely that associated with the letters ‘s’ and ‘f’ respectively and contain the same first syllable, namely that associated with the letter ‘b’.
60 Thus, even if the relevant public did not pronounce the word element ‘energy’, half of the syllables of the word elements ‘bs’ and ‘bf’ coincide phonetically. Accordingly, contrary to what the Board of Appeal found in paragraph 41 of the contested decision and as the applicant correctly submits, the signs at issue must be regarded as having, at the very least, an average degree of phonetic similarity.
– Conceptual comparison
61 In the present case, in paragraph 42 of the contested decision, the Board of Appeal noted that, because of their common word element ‘energy’, the signs at issue convey a descriptive meaning linked to energy, a meaning which is also evoked by the figurative element of the mark applied for. Those descriptive elements therefore have only a minor impact on the conceptual comparison of the signs, since consumers focus on the distinctive word elements ‘bs’ and ‘bf’, which have no meaning. The Board of Appeal took the view that the signs are conceptually similar to a low degree.
62 The applicant disputes the Board of Appeal’s findings, claiming that, in so far as the word elements ‘bs’ and ‘bf’ have no meaning, the signs at issue have at least a medium degree of conceptual similarity on account, in particular, of their common descriptive element ‘energy’.
63 EUIPO disputes the applicant’s arguments.
64 In the first place, as regards the verbal elements ‘bs’ and ‘bf’ of the signs at issue, it is common ground that they are meaningless. It follows that it is not possible to carry out a conceptual comparison of those word elements.
65 In the second place, it is also common ground that the word element ‘energy’, which is common to the signs at issue, is likely to be recognised throughout the relevant territory as referring to the concept of energy and that it is therefore descriptive of the intended purpose or functioning of the goods and services concerned, like the flames in the sign applied for.
66 It must therefore be held that there is a conceptual similarity between the signs at issue on account of the element in common ‘energy’ and the flames in the sign applied for. Accordingly, contrary to what the Board of Appeal incorrectly found in paragraph 42 of the contested decision and as the applicant correctly submits, the signs at issue must be regarded as having, at the very least, an average degree of conceptual similarity.
67 However, the conceptual similarity must be seen in the light of the fact that the common element has a weak, or even very weak, distinctive character, in the light of the case-law cited in paragraph 36 above. It follows that conceptual similarity plays a limited role in the assessment of the likelihood of confusion and is of less importance in that assessment (see, to that effect, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 92 and the case-law cited).
– The distinctiveness of the earlier marks
68 In the present case, the Board of Appeal noted that, despite the word element ‘energy’, the inherent distinctiveness of the earlier marks was normal.
69 There is nothing in the file which is capable of calling into question that assessment, which is not, moreover, disputed by the applicant.
The likelihood of confusion
70 The Board of Appeal concluded, in essence, that, having regard to the circumstances of the case, in particular the high level of attention of the relevant public and the low degree of similarity between the signs at issue, the existence of a likelihood of confusion could be ruled out, even in the case of identical goods and services.
71 Therefore, like the Opposition Division, the Board of Appeal decided that the opposition based on Article 8(1)(b) of Regulation 2017/1001 had to be rejected.
72 The applicant, in the context of the third part of the single plea, disputes the Board of Appeal’s assessments, claiming that, in the present case, in so far as the goods and services at issue are identical, a low degree of similarity between the signs is sufficient for a finding that there is a likelihood of confusion. Despite the weak impact of the common word element ‘energy’ for the purposes of the comparison of the signs, the signs at issue have at least an average degree of visual, phonetic and conceptual similarity. Consequently, the Board of Appeal erroneously found that there was no likelihood of confusion in the present case.
73 EUIPO disputes the applicant’s arguments.
74 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).
75 Moreover, the global assessment of the likelihood of confusion so far as concerns the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by the signs bearing in mind that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
76 In that regard, it follows from the case-law that when the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is low (see judgment of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited).
77 In the first place, in the present case, it has been concluded that the word element ‘energy’, which is common to the signs at issue, is descriptive and will not therefore attract the attention of the relevant public (see paragraphs 42 to 44 above). It follows that the differences between the signs at issue, which relate to elements other than the word element ‘energy’, namely the visual and phonetic differences between the word elements ‘bs’ and ‘bf’ of the signs at issue and the size, position and stylisation of the word element ‘bf’ and the figurative element consisting of flames in the sign applied for, will prevail in the overall impression of those signs on the relevant public. Accordingly, those differences are capable of offsetting the existence of a low degree of visual similarity between the signs at issue and an average degree of phonetic and conceptual similarity between those signs, particularly since, in accordance with the case-law cited in paragraph 67 above, the conceptual similarity found to exist in the present case plays a limited role in the assessment of the likelihood of confusion and is of less importance in that assessment.
78 In the second place, it should be noted that the distinctive word elements of the signs at issue are very short, since they consist of two letters, with the result that the relevant public is more easily able to perceive the differences between them (see, to that effect, judgments of 23 September 2009, Arcandor v OHIM – dm drogerie markt (S-HE), T‑391/06, not published, EU:T:2009:348, paragraph 41, and of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 31). Those differences are reinforced by the figurative elements of the mark applied for.
79 In the third place, it should be borne in mind that, in the present case, the relevant public consists of professionals and consumers belonging to the public at large who have a high level of attention. That relevant public will therefore easily be able to perceive the differences between the signs at issue.
80 In the fourth place, it is true that, by virtue of the principle of interdependence referred to in paragraph 74 above, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa. However, the principle of interdependence should not be applied mechanically. Contrary to the applicant’s arguments that it is sufficient, in order to find that there is a likelihood of confusion, to rely on a low degree of similarity between the signs, in so far as the goods and services at issue are identical, there is nothing to preclude a finding that, in the light of the circumstances of a particular case, there is no likelihood of confusion, even where the goods are identical and there is a certain degree of similarity between the marks at issue (see, to that effect, judgments of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 132 (not published) and the case-law cited, and of 9 November 2022, L’Oréal v EUIPO – Heinze (K K WATER), T‑610/21, not published, EU:T:2022:700, paragraph 67 and the case-law cited).
81 It follows from the foregoing considerations that, despite the incorrect assessments, noted in paragraphs 60 and 66 above, as regards the existence of a low degree of phonetic and conceptual similarity between the signs at issue instead of an average degree of similarity, the Board of Appeal was fully entitled to find that there was no likelihood of confusion in the present case, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
82 The third part of the single plea in law relied on by the applicant must therefore be rejected and, consequently, that plea must be rejected in its entirety.
The second head of claim, concerning the refusal to register the mark applied for
83 By its second head of claim, the applicant requests the Court to reject the application for registration of the mark applied for.
84 It must be found that that head of claim seeks, in essence, that the Court exercise its power to alter decisions in order to annul the Opposition Division’s decision and uphold the opposition to registration of the mark applied for in respect of all the goods and services which it covers, thus adopting the decision which, according to the applicant, the Board of Appeal should have taken when the appeal was brought before it. It is apparent from the second sentence of Article 71(1) of Regulation 2017/1001 that the Board of Appeal can annul the decision of the EUIPO department which was responsible for the contested decision and exercise any power within the competence of that department, in this instance to rule on the opposition and uphold it. Consequently, those measures fall within those which may be taken by the Court in the exercise of its power to alter decisions under Article 72(3) of Regulation 2017/1001 (judgments of 13 December 2018, Monster Energy v EUIPO – Bösel (MONSTER DIP), T‑274/17, EU:T:2018:928, paragraph 97 (not published); of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep), T‑20/19, EU:T:2020:309, paragraphs 18 to 22 (not published); and of 2 December 2020, Monster Energy v EUIPO – Nanjing aisiyou Clothing (Representation of a scratch), T‑35/20, not published, EU:T:2020:579, paragraph 90).
85 Since the single plea put forward in support of the application for annulment has, however, been rejected, the second head of claim must, as a result, be rejected.
86 It follows from all of the foregoing that the action must be dismissed in its entirety.
Costs
87 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.
88 Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Marcoulli | Tomljenović | Valasidis |
Delivered in open court in Luxembourg on 20 March 2024.
V. Di Bucci | | S. Papasavvas |