JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
12 July 2023 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark EMBANK European Merchant Bank – Earlier EU figurative mark mBank – Earlier national word mark mBank – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001 – Article 95(2) of Regulation 2017/1001 – Article 27(4) of Delegated Regulation (EU) 2018/625 – Document submitted for the first time before the Board of Appeal)
In Case T‑261/22,
mBank S.A., established in Warsaw (Poland), represented by E. Skrzydło-Tefelska, M. Stępkowski and M. Oleksyn, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
European Merchant Bank UAB, established in Vilnius (Lithuania), represented by G. Pranevičius, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere (Rapporteur) and S. Kingston, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 23 March 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, mBank S.A., seeks the annulment and the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 February 2022 (Case R 1845/2020-5) (‘the contested decision’).
Background to the dispute
2 On 23 October 2019, the applicant filed an application with EUIPO for a declaration of invalidity of the EU trade mark, which had been registered following an application lodged by the intervener, European Merchant Bank UAB, on 9 April 2019, for the following figurative sign:
3 The services covered by the contested mark for which a declaration of invalidity was sought are in Class 36 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Financial and monetary services, and banking; Safe deposit services; Valuation services’.
4 The request for a declaration of invalidity was based on the following earlier marks:
– the earlier EU figurative mark, filed on 23 February 2018 and registered on 3 October 2018 under No 17 857 541, reproduced below, designating, inter alia, ‘financing services, banking deposit services, financial valuation services’ in Class 36:
– the earlier Polish word mark mBank, filed on 27 March 2013 and registered on 10 March 2014 under No R.264 500, designating, inter alia, ‘financial services, banking deposit services, financial valuation services’ in Class 36.
5 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 60(1)(a) 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), read in conjunction with Article 8(1)(b) of that regulation.
6 On 16 July 2020, the Cancellation Division upheld the application for a declaration of invalidity on the basis of the earlier Polish word mark mBank.
7 On 16 September 2020, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
8 By decision of 30 March 2021, EUIPO’s Fifth Board of Appeal annulled the decision of the Cancellation Division and rejected the application for a declaration of invalidity solely on the basis of the earlier Polish word mark. By decision of 19 November 2021, the Board of Appeal revoked its decision of 30 March 2021 on the ground of a manifest error attributable to EUIPO, under Article 103 of Regulation 2017/1001.
9 By the contested decision, the Board of Appeal upheld the appeal and rejected the application for a declaration of invalidity in its entirety.
Forms of order sought
10 The applicant claims that the General Court should:
– alter the contested decision and uphold the application for a declaration of invalidity in its entirety;
– order EUIPO and the intervener to pay the costs, including those relating to the proceedings before EUIPO.
11 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of the action
12 Since the application contains, besides the request for EUIPO and the intervener to be ordered to pay the costs, only one head of claim seeking the alteration of the contested decision and that the application for a declaration of invalidity be upheld, it is apparent that, in that head of claim, the applicant necessarily seeks, not only the alteration of the contested decision, but also its annulment, which can be inferred from the submission of the two pleas in law relied on in support of the action (see, to that effect, judgments 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, and of 29 June 2022, bet-at-home.com Entertainment v EUIPO (bet-at-home), T‑640/21, not published, EU:T:2022:408, paragraph 11 and the case-law cited).
13 In that regard, at the hearing, the applicant confirmed that its first head of claim should be interpreted as also including an application for annulment of the contested decision.
14 Accordingly, the action as thus defined is admissible.
Substance
15 In support of the action, the applicant puts forward two pleas in law, alleging, first, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, and, second, infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
16 The Court considers it appropriate to examine at the outset the second plea in law.
The second plea in law, alleging infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625
17 The applicant submits that the Board of Appeal infringed Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, by rejecting, without valid grounds, evidence concerning the enhanced distinctive character of the earlier marks, submitted for the first time before it.
18 In the contested decision, the Board of Appeal found that the evidence concerning the alleged enhanced distinctiveness of the earlier mark mBank, on account of its long-standing presence on the market, intensity of its use and regular promotional and advertising activities, submitted by the applicant for the first time before it, was inadmissible in the light of the conditions laid down in Article 27(4) of Delegated Regulation 2018/625.
19 Article 95(2) of Regulation 2017/1001 provides that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.
20 It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001, and that EUIPO is in no way prohibited from taking account of facts and evidence which are relied on or submitted late (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42; see also judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 55; and of 2 June 2021, Franz Schröder v EUIPO – RDS Design (MONTANA), T‑854/19, EU:T:2021:309, paragraph 24 and the case-law cited).
21 By contrast, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence which were relied on or submitted out of time taken into account by EUIPO. In stating that EUIPO ‘may’ decide to disregard such evidence, that provision grants the latter a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43; see also of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 56; and of 2 June 2021, MONTANA, T‑854/19, EU:T:2021:309, paragraph 25 and the case-law cited).
22 The exercise of EUIPO’s discretionary power provided for in Article 95(2) of Regulation 2017/1001 is, however, circumscribed by Article 27(4) of Delegated Regulation 2018/625.
23 Under that provision, the Board of Appeal may accept evidence submitted for the first time before it only where that evidence meets two requirements. First, it is, on the face of it, likely to be relevant for the outcome of the case. Second, it has not been submitted in due time for valid reasons, in particular where it is merely supplementing relevant facts and evidence which had already been submitted in due time, or is filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.
24 As regards that last condition, it should be recalled that, according to the case-law, supplementary evidence is characterised by a link with other evidence previously submitted in due time which it supplements (see judgment of 19 January 2022, Masterbuilders, Heiermann, Schmidtmann v EUIPO – Cirillo (POMODORO), T‑76/21, not published, EU:T:2022:16, paragraph 40 and the case-law cited).
25 In addition, it must be observed that it is for the party submitting facts and evidence for the first time before the Board of Appeal to explain before it to what extent that submission satisfies the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 (judgments of 6 October 2021, Kondyterska korporatsiia ‘Roshen’ v EUIPO – Krasnyj Octyabr (Representation of a lobster), T‑254/20, not published, EU:T:2021:650, paragraph 57, and of 1 February 2023, Brobet v EUIPO – Efbet Partners (efbet), T‑772/21, not published, EU:T:2023:36, paragraph 43).
26 The Court of Justice has pointed out that it was always possible to submit evidence in due time for the first time before the Board of Appeal in so far as that evidence was intended to challenge the reasons given by the Cancellation Division in the contested decision. That evidence is, therefore, either evidence supplementary to that submitted in the proceedings before the Cancellation Division or evidence on a new matter which could not be raised during those proceedings. However, it is for the party presenting that evidence to justify why that evidence is being submitted at that stage of the proceedings and demonstrate that submission during the proceedings before the Cancellation Division was impossible (judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraphs 42 and 43; see also judgment of 6 October 2021, Representation of a lobster, T‑254/20, not published, EU:T:2021:650, paragraph 59 and the case-law cited).
27 The applicant puts forward arguments seeking to establish that the evidence submitted for the first time before the Board of Appeal had not been submitted in due time for valid reasons and that the second requirement of Article 27(4) of Delegated Regulation 2018/625 was satisfied.
28 In the first place, the applicant claims that, contrary to the Board of Appeal’s assertion, it had clearly stated before the Cancellation Division, in paragraphs 17 and 22 of its application for a declaration of invalidity, that the earlier marks had acquired an enhanced distinctive character and recognition through extensive and persistent use.
29 By that argument, the applicant argues, in essence, that the evidence submitted before the Board of Appeal supplemented facts already submitted in due time before the Cancellation Division.
30 In the contested decision, the Board of Appeal found that the evidence intended to establish the enhanced distinctive character of the earlier marks through use, submitted for the first time before it, could not be regarded as supplementing evidence submitted in due time. In that regard, it noted that, before the Cancellation Division, the applicant had merely stated that the earlier mark ‘[had] been used for many years and comprised in many other marks’, without submitting any evidence of the alleged ‘enhanced distinctive character and recognition through extensive and persistent use’.
31 It is apparent from the case-law that the existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it. It has been held that the relevant factors for assessing the acquisition of a high distinctive character through use include, in particular, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 23, and of 4 February 2016, Meica v OHIM – Salumificio Fratelli Beretta (STICK MiniMINI Beretta), T‑247/14, EU:T:2016:64, paragraphs 67 and 68 and the case-law cited).
32 In that regard, it should also be noted that, although the inherent distinctive character of the earlier mark concerns an issue of law that EUIPO is required to examine, if necessary of its own motion, that does not apply to the reputation or enhanced distinctiveness of the earlier mark, evidence of which is a matter of fact which it is up to the parties to provide. It is therefore for the party claiming enhanced distinctiveness of the earlier mark to provide EUIPO with solid and objective evidence capable of proving such a fact (see judgment of 12 October 2022, Shopify v EUIPO – Rossi and others (Shoppi), T‑222/21, under appeal, EU:T:2022:633, paragraph 90 and the case-law cited).
33 In the present case, it must be noted that the applicant did not submit before the Cancellation Division any evidence seeking to establish the enhanced distinctive character of the earlier marks as a result of their use.
34 Furthermore, it should be noted that neither paragraph 17 nor paragraph 22 of the applicant’s application for a declaration of invalidity, cited by it in the application, refers to the various relevant factors, referred to in paragraph 31 above, making it possible to assess the acquisition of an enhanced distinctive character through use due to the recognition of it by a significant part of the relevant public.
35 It is apparent from paragraph 17 of the application for a declaration of invalidity that the applicant referred only to the high degree of inherent distinctiveness of the earlier marks, which, according to the applicant, stemmed from the presence of the letter ‘m’. In paragraph 22 of that application for a declaration of invalidity, the applicant merely stated that the letter ‘m’ was used in various marks of which it was the proprietor, but it did not mention the enhanced distinctive character through use of the earlier marks or the relevant public’s recognition of them.
36 In any event, the mere assertion that the earlier marks are used on the market cannot be equated with a claim that those marks have acquired enhanced distinctiveness through use. It should be borne in mind that, if the applicant intended to rely on the fact that the earlier marks were well known, the applicant was required to put forward facts and, if necessary, evidence to enable EUIPO to determine the truth of such a claim (see, to that effect, judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 30 and the case-law cited).
37 Therefore, contrary to the applicant’s assertion, it is not apparent from its application for a declaration of invalidity that it had put forward, during the proceedings before the Cancellation Division, matters of fact or evidence intended to establish that the earlier marks had acquired an enhanced distinctive character as a result of their use.
38 The Board of Appeal therefore correctly found that the applicant’s statements before the Cancellation Division were not sufficient for the evidence submitted for the first time before the Board of Appeal to be regarded as additional or supplementary evidence for the purposes of Article 27(4) of Delegated Regulation 2018/625.
39 In the second place, the applicant claims that the intervener did not raise an argument relating to the very low distinctive character of the earlier marks before the Cancellation Division, but that it did so for the first time before the Board of Appeal. It maintains that considerations of legal certainty, sound administration and respect for the rights of the defence militate in favour of accepting evidence submitted in response to new allegations of the intervener.
40 By that argument, the applicant maintains, in essence, that the evidence submitted before the Board of Appeal seeking to establish the enhanced distinctive character of the earlier marks as a result of their use related to a new element which could not be raised before the Cancellation Division.
41 In the contested decision, the Board of Appeal found that the applicant’s argument that ‘it [was] the first time where necessity of presenting of the evidence occur[red] because [the intervener had] raised a new argument of the alleged lack of high distinctiveness of the mBank trade marks’ was incorrect, in so far as the intervener had argued in due time before the Cancellation Division that ‘the earlier marks [had a] very low distinctive character’.
42 It is apparent from the file relating to the proceedings before EUIPO that, in its observations before the Cancellation Division, the intervener had raised arguments concerning the low distinctive character of the earlier marks and that, before the Board of Appeal, it merely repeated those same arguments.
43 It follows that, as submitted by EUIPO, the applicant’s argument that the intervener submitted, before the Board of Appeal, ‘new allegations’ relating to the low distinctive character of the earlier marks has no factual basis.
44 Furthermore, it should be noted that the applicant, in its observations in response to the intervener’s arguments before the Cancellation Division, merely referred to its position relating to the distinctive character of the earlier marks set out in its application for a declaration of invalidity. It follows that the applicant had the opportunity to respond to the intervener’s arguments before the Cancellation Division, but that it did not do so.
45 It follows that the applicant has not shown that it was impossible to submit before the Cancellation Division the evidence seeking to establish the enhanced distinctive character of the earlier marks as a result of their use.
46 Furthermore, the applicant claims that, to the extent that the Board of Appeal called into question the normal distinctive character attributed to the earlier marks by the Cancellation Division, it was required to take into account the evidence submitted with the aim of refuting that assertion.
47 In that regard, it is sufficient to state that the applicant’s argument is based on a misreading of the contested decision. The Board of Appeal, first, upheld the Cancellation Division’s decision by finding that the earlier word mark had a normal distinctive character, despite the presence of the non-distinctive component ‘bank’. Secondly, it found that the earlier figurative mark had an average distinctive character, despite the presence of the non-distinctive element ‘bank’ and in view of the striking combination of colours that characterises its figurative element.
48 It follows from the foregoing that the applicant has not demonstrated the impossibility of submitting in due time, for valid reasons, evidence intended to establish the enhanced distinctive character of the earlier marks as a result of their use, submitted for the first time before the Board of Appeal, and has therefore not established that the second condition of Article 27(4) of Delegated Regulation 2018/625 was satisfied.
49 Since the conditions of Article 27(4) of Delegated Regulation 2018/625 are cumulative, the applicant’s argument that the first requirement of that provision, relating to the relevance of that evidence to the outcome of the case, was satisfied, must be regarded as ineffective.
50 It follows that the Board of Appeal did not infringe Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, in finding that the evidence submitted for the first time before it was inadmissible.
51 Accordingly, the second plea in law must be rejected as unfounded.
The first plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation
52 The applicant submits that the Board of Appeal made an error of assessment in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. The applicant puts forward four complaints alleging that the Board of Appeal made errors of assessment concerning, first, the level of attention of the relevant public, second, the distinctive elements of the contested mark, third, the elements common to the marks at issue and the distinctive character of the earlier marks and, fourth, the global assessment of the likelihood of confusion.
53 Under a combined reading of Article 60(1)(a) of Regulation 2017/1001 and Article 8(1)(b) thereof, upon application by the proprietor of an earlier trade mark, a registered EU trade mark is to be declared invalid 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.
54 Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means inter alia 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.
55 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
56 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).
57 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 that 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).
58 It must be noted that the applicant does not dispute the Board of Appeal’s finding that the services in Class 36 covered by the contested mark were identical to the services in the same class covered by the earlier marks.
– The first complaint, relating to the level of attention of the relevant public
59 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It is also necessary to take into consideration that the average consumer’s level of attention is likely to vary according to the category of goods 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).
60 In the contested decision, the Board of Appeal found that the services in Class 36 covered by the marks at issue were directed both at the general public and at a professional public with specific professional knowledge or expertise. It endorsed the Cancellation Division’s finding that the level of attention of the relevant public would be quite high. In that regard, it considered that those services could have an important impact on the future financial situation of the consumer, who will therefore be highly attentive when ordering those services, which for the most parts were technical and specialised in nature.
61 The applicant does not dispute that the relevant territory for the assessment of the likelihood of confusion is Poland, as regards the earlier word mark, and the European Union, as regards the earlier figurative mark. Nor does it dispute that the relevant public consists of both the general public and professionals. It submits that the Board of Appeal erred in finding that the level of attention of the relevant public was high.
62 The applicant claims that, both for end consumers of financial services in Class 36 and for professionals, their level of attention may be average, or even low, in so far as the use of banking services has become a common activity on a daily basis.
63 In this respect, as regards the services in Class 36, it is sufficient to state that it is apparent from the case-law that the level of attention of the specialised public and of the general public for financial services is high since they are liable to have a direct impact on the economic and financial assets of consumers, that they generally involve substantial sums of money and that they may have a significant financial impact (see judgment of 2 March 2022, Banco de Investimento Global v EUIPO – Banco BIC Português (EUROBIC), T‑125/21, not published, EU:T:2022:102, paragraph 66 and the case-law cited).
64 Furthermore, a difference must be made between the choice of banking products and services, which entails a high level of attention on the part of consumers, on the one hand, and the day-to-day banking operations and the everyday use of banking products, on the other (judgment of 2 March 2022, EUROBIC, T‑125/21, not published, EU:T:2022:102, paragraph 70).
65 Although the services at issue in Class 36 are likely to be used on a daily basis by the relevant public, it must be stated that they are not purchased or contracted on a regular basis, in view of their impact on the consumer’s economic and financial assets, which the applicant does not dispute.
66 The applicant’s argument that the level of attention of the relevant public is average when it uses the banking services covered by the marks at issue on a daily basis must therefore be rejected.
67 Furthermore, as noted by EUIPO and the intervener, the applicant cannot validly rely on the judgment of the General Court of 19 January 2017 in Morgan & Morgan v EUIPO – Grupo Morgan & Morgan (Morgan & Morgan) (T‑399/15, not published, EU:T:2017:17) to argue that the general public shows an average level of attention when it comes to financial services. As the General Court recalled in that judgment, in order to determine the relevant public, account had to be taken of all the services in respect of which registration of the mark was sought. However, the application for registration in that case did not only cover financial services but many other services in Class 36. For some of those services, the relevant public was considered to be the general public with an average level of attention. Therefore, the applicant could not rely on that judgment to draw an inference as to the level of attention shown by the general public with regard solely to financial services in Class 36.
68 Accordingly, it must be stated that the applicant’s arguments are not capable of calling into question the Board of Appeal’s finding that the relevant public has a high level of attention.
69 It follows that the first complaint must be rejected as unfounded.
– The second complaint, relating to the distinctive elements of the contested mark
70 In the contested decision, the Board of Appeal found that the most distinctive part of the contested sign was the figurative element, which had no meaning in relation to the services at issue. It further stated that, due to its size, red colour and position within the sign, the figurative element was also co-dominant with the word element ‘embank’.
71 The applicant states that it agrees with the Board of Appeal’s assessment that the expression ‘European merchant bank’ plays a secondary role in the contested mark because of its smaller font, its position in the lower part of the sign and the faint light grey colour in which it is represented. By contrast, it disputes the Board of Appeal’s assessment relating to the perception of the word and figurative elements of that mark by the Polish public. The applicant claims that the most visible and most striking element of the contested mark is the dominant element ‘embank’ and that the Board of Appeal wrongly gave a high level of importance to the figurative element of that mark.
72 First, the applicant disputes the Board of Appeal’s assessment that the element ‘embank’ corresponds to the abbreviation of the expression ‘European merchant bank’ in so far as it is not obvious that the letters ‘e’ and ‘m’ correspond to ‘European merchant’. It argues that the letters ‘e’ and ‘m’ in the element ‘embank’ of the contested mark are put together and have not been separated by a space or punctuation mark, with the result that the whole word ‘embank’ must be perceived as a single fanciful word read together.
73 In that regard, it must be noted that the contested mark consists of the word element ‘embank’ written in capital letters in a large font, placed to the right of the figurative element, and of which the first two letters ‘e’ and ‘m’ are written in bold letters. Below the element ‘embank’ is the expression ‘European merchant bank’, which is written in lower-case letters in a smaller font, the first letter of each word being written in upper-case letters.
74 It follows, hat the fact that the first two letters ‘e’ and ‘m’ of the element ‘embank’ are written in bold characters makes it possible to distinguish them from the word ‘bank’, even if they are attached to it. Furthermore, the applicant does not dispute that the word ‘bank’ will be understood by the relevant public and that it is descriptive of the services in Class 36.
75 Moreover, the letters ‘e’ and ‘m’ correspond to the initial letters written in capital letters of the words ‘European’ and ‘merchant’ placed just below it. Thus, the expression and the sequence of letters are intended to clarify each other and to highlight the link between them. The presence of the expression ‘European merchant bank’ placed directly below the element ‘embank’ provides the consumer with an immediate explanation of the meaning of the two letters ‘e’ and ‘m’ appearing before the word ‘bank’.
76 The Board of Appeal therefore correctly found that the letters ‘e’ and ‘m’ would be understood by consumers as being the abbreviation of ‘European merchant’.
77 Second, the applicant claims that the Board of Appeal erred in finding that the word ‘merchant’ is distinctive for the Polish general public which does not speak English. That word allegedly has a specific meaning for the relevant Polish public, which will understand it as a selling term, and it has no distinctive character.
78 In its assessment of the perception of the various elements of the expression ‘European merchant bank’, the Board of Appeal found that the words ‘European’ and ‘bank’ were descriptive and therefore devoid of distinctive character and that the word ‘merchant’ was distinctive for the general public which did not speak English.
79 It is true that, as submitted by the applicant, the General Court has already held that, as regards services in Class 36, the relevant public to be taken into consideration consisted of professionals and the general public, displaying a high level of attention, since that public is familiar with basic English financial terminology (see, to that effect, judgment of 22 September 2016, Grupo de originación y análisis v EUIPO – Bankinter (BK PARTNERS), T‑228/15, not published, EU:T:2016:530, paragraph 30).
80 However, as observed by EUIPO, knowledge of a foreign language cannot in general be assumed (judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83). The applicant has not submitted any evidence capable of showing that the Polish general public was familiar with the English word ‘merchant’ in connection with the services in question or that that word is part of basic English financial vocabulary.
81 Accordingly, the applicant’s argument is not capable of calling into question the Board of Appeal’s finding that the word ‘merchant’ will not be understood by the part of the relevant public which does not understand English.
82 Third, the applicant maintains that the Board of Appeal erred in finding that the figurative element of the contested mark represented a horse or mythical creature and that, therefore, it made an error, in the conceptual comparison of the signs, in finding that the marks differed as a result of the concept conveyed by that figurative element. It is not a concept with a specific meaning which could be presumed to be perceived uniformly by most of the relevant public.
83 In the contested decision, the Board of Appeal found that the figurative element of the contested mark, represented in red and inside a red circle on a white background, was ‘a figurative depiction of a horse-like creature with eight legs, the body made up of red spirals, and the tail curled up and over the horse’s body towards the head, somewhat resembling a bird’s talon’. It found that that figurative element was fanciful and distinctive to a normal degree.
84 It is sufficient to state that the applicant has not submitted any evidence to contradict that Board of Appeal’s assessment. In particular, it does not explain how the relevant public might perceive that figurative element other than as a stylised representation of a horse or of a mythical creature.
85 Likewise, contrary to the applicant’s assertion, that assessment by the Board of Appeal is based on an objective description of the figurative element of the contested mark and does not need to be substantiated by evidence.
86 Fourth, the applicant submits that where a mark is composed of word and figurative elements, the word element of that mark is, in principle, more distinctive than the figurative element. The figurative element of the contested mark is relatively complex and vague and is not an element by which consumers describe or remember the contested mark. Therefore, the word element ‘embank’ is the most noticeable and the most striking element of the contested mark.
87 First, in so far as the applicant, in stating that the element ‘embank’ is the ‘more noticeable’ element of the contested mark, seeks to argue that it constitutes the dominant element of that mark, it is sufficient to state that that argument is not such as to call into question the Board of Appeal’s assessment.
88 It must be stated that the Board of Appeal, in view of the large size of the word element ‘embank’, found that it constituted a dominant element of the contested mark. However, it further stated that, in view of its size, colour and position within the sign, the figurative element was co-dominant with that word element within the contested mark. The applicant does not put forward any argument in that regard.
89 Second, in the contested decision, the Board of Appeal found that the figurative element, which had no meaning in relation to the services at issue, was the most distinctive element of the contested mark.
90 It should be noted that, admittedly, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the product or service in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
91 However, as stated by the intervener, it does not follow from that case-law that the word elements of a mark must always be regarded as more distinctive than the figurative elements. This is definitely not the case here.
92 It must be pointed out that the figurative element of the contested mark is fanciful and that it has no meaning in relation to the services covered by the contested mark. Furthermore, the word element ‘embank’ will be perceived as the abbreviation of the expression ‘European merchant bank’. It consists, first, of the letters ‘e’ and ‘m’, which, respectively, are the initials of the words ‘European’ and ‘merchant’, the first of which is descriptive of the origin of the services or of the place where they are offered, and, second, of the word ‘bank’, which is descriptive of the services covered by the contested mark and is therefore devoid of distinctive character.
93 Thus, in view, in particular, of the presence in the word element ‘embank’ of the word ‘bank’ which is descriptive of the services at issue and in view of the lack of meaning of the figurative element of the contested mark in relation to those services, the Board of Appeal correctly found that the second element was more distinctive than the first.
94 It follows that the second complaint must be rejected as unfounded.
– The third complaint, relating to the elements common to the marks at issue and the distinctive character of the earlier marks
95 In the first place, the applicant maintains that the Board of Appeal made contradictory findings, on the one hand, that the earlier word mark mBank had a normal distinctive character and, on the other, that the element ‘mBank’ within the contested mark has a low distinctive character.
96 It is sufficient to state that the applicant’s argument is based on a misreading of the contested decision. In its analysis of the contested mark, the Board of Appeal found that the word element ‘embank’ consisted of the letters ‘e’ and ‘m’ and the word ‘bank’. It did not therefore state that the contested mark contained a weakly distinctive element ‘mbank’.
97 Contrary to the applicant’s assertion, that contradiction is also not apparent from the Board of Appeal’s reference, in the context of the analysis of the likelihood of confusion, to the case-law according to which, where the elements of similarity between two signs result from the fact that, as in the present case, they share a component with a low distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low.
98 The Board of Appeal then, following that reference, referred to the low impact on the assessment of the likelihood of confusion of the similarity resulting from the presence of the single letter ‘m’ and the descriptive component ‘bank’ in the signs at issue.
99 Accordingly, it is not apparent from the contested decision that the Board of Appeal took into account an element ‘mbank’ which is weakly distinctive and which is common to the signs at issue. The applicant cannot therefore validly claim that there is a contradiction with the finding that the earlier word mark mBank had a normal distinctive character.
100 In the second place, the applicant claims that the Board of Appeal made an error of assessment in failing to take into account the fact that the earlier word mark mBank is incorporated in its entirety in the contested mark, which is an indication that the marks at issue are similar. In the context of the comparison of the signs, the Board of Appeal was not entitled to find that the only element shared by the signs at issue was the word ‘bank’ in omitting the letter ‘m’. The Board of Appeal should have compared the earlier word mark and the contested mark by focusing on the elements ‘mbank’ and ‘embank’.
101 It is apparent from the case-law that, even if the element common to the marks at issue cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those marks, to the extent that it constitutes in itself the earlier mark and retains an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element retains an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue come, at the very least, from companies which are linked economically, in which case a likelihood of confusion must be held to be established (see judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 38 and the case-law cited).
102 However, the Court has also stated that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (see judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 39 and the case-law cited).
103 Furthermore, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he or she will break it down into word elements which, for that consumer, suggest a concrete meaning or which resemble words known to him or her (see judgment of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 24 and the case-law cited).
104 It must be borne in mind that the applicant does not dispute that the word ‘bank’ will be understood by the relevant public and that it is descriptive of the services in Class 36 covered by the marks at issue.
105 First, it must be held that the earlier word mark will be perceived as consisting of the word ‘bank’ preceded by the letter ‘m’. Second, the word element ‘embank’ in the contested mark will be perceived as consisting of the letters ‘e’ and ‘m’ and the word ‘bank’, which is reinforced by the fact that the letters ‘e’ and ‘m’ are written in bold characters, and will be understood as being an abbreviation of the expression ‘European merchant bank’ which appears below, as stated in paragraph 92 above.
106 The applicant does not provide any reason why the word element ‘embank’ of the contested mark would be broken down as consisting of the letter ‘e’ followed by an element ‘mbank’. The fact that the marks at issue share the sequence of letters ‘m’, ‘b’, ‘a’, ‘n’ and ‘k’ does not mean that those marks will be perceived, in the contested mark, as forming a unit with a particular meaning.
107 Accordingly, the earlier word mark does not retain an independent distinctive role in the contested mark and, contrary to the applicant’s assertion, it cannot be regarded as being ‘incorporated’ in the contested mark.
108 Lastly, it should be noted that the examples of decisions of the Boards of Appeal of EUIPO and of the General Court, referred to by the applicant, relating to cases in which a mark was found to be incorporated into another, relate to marks different from those at issue in the present case and are therefore irrelevant.
109 Admittedly, the presence in each of the marks of several letters in the same order may be of some importance in the assessment of the visual similarity between two signs at issue (see judgment of 20 October 2016, Clover Canyon v EUIPO – Kaipa Sportswear (CLOVER CANYON), T‑693/15, not published, EU:T:2016:620, paragraph 29 and the case-law cited).
110 In the contested decision, owing to the fact that the marks at issue coincided in the five letters, ‘m’, ‘b’, ‘a’, ‘n’ and ‘k’, the Board of Appeal found that there was a low degree of visual similarity and a high degree of phonetic similarity.
111 Thus, it is apparent from the comparison of the signs carried out by the Board of Appeal that the applicant’s argument that that Board of Appeal based its assessment of the similarity of the signs solely on the element ‘bank’, without taking into account the common letter ‘m’, is incorrect.
112 Furthermore, it should be noted that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 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 (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43, and of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 71).
113 It should be noted, first, that the figurative element of the contested mark is co-dominant with the word element ‘embank’ and, second, that although the element ‘European merchant bank’ plays a secondary role in the perception of that mark, it is not, however, negligible. Accordingly, those elements had to be taken into account in the comparison of the signs at issue and the applicant cannot validly claim that the Board of Appeal, in comparing the signs at issue, should focus on the elements ‘mbank’ and ‘embank’.
114 It follows that the third complaint must be rejected as unfounded.
– The fourth complaint, relating to the global assessment of the likelihood of confusion
115 The applicant claims that, in view of the identical nature of the services at issue, the high degree of phonetic similarity of the signs at issue, the incorporation of the earlier word mark in the contested mark and the normal distinctiveness of the earlier marks, the Board of Appeal should have found that there was a likelihood of confusion from the point of view of the relevant public, even taking into account the high level of attention of that public.
116 In the context of the assessment of the likelihood of confusion, the Board of Appeal recalled, first, that the services covered by the marks at issue were identical and, second, that the signs at issue were visually similar to a low degree, phonetically similar to a high degree and conceptually similar to a very low degree. It considered that the impact of the similarity resulting from the presence of the single letter ‘m’ and the descriptive element ‘bank’ in the signs at issue was low and thus not decisive for the purposes of the global assessment of the likelihood of confusion. It found that the attention of the relevant public would, as a result, naturally focus more on the elements which differentiate the signs at issue and, in particular, the co-dominant and distinctive figurative element and the additional letter ‘e’ of the largest word element in the contested mark. It stressed that the relevant public with a high level of attention would be more able to notice the differences between the signs at issue. Lastly, it further stated that, given the nature of the services at issue, the visual aspect of the marks was of primary importance.
117 The Board of Appeal concluded that, in light of the foregoing and the degree of distinctiveness of the earlier word mark, which was no higher than normal, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
118 In the first place, the applicant submits that even if, as the Board of Appeal maintains, the word element ‘bank’ of the earlier marks has a low distinctive character in relation to the services at issue, the distinctive character of the earlier marks is only one element among others to be taken into account in assessing the likelihood of confusion. Even in a case involving an earlier mark with a low distinctive character, there may be a likelihood of confusion.
119 It is sufficient to state that that argument is based on a misinterpretation of the factors for assessing whether there is a likelihood of confusion between two marks, by failing to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a complex mark possesses, which is concerned with its ability to dominate the overall impression created by the mark (see, to that effect, orders of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and of 8 March 2019, Herrero Torres v EUIPO – DZ Licores (CARAJILLO LICOR 43 CUARENTA Y TRES), T‑326/18, not published, EU:T:2019:149, paragraph 55).
120 Furthermore, it should be borne in mind that the Board of Appeal found the distinctive character of the earlier word mark to be normal and not low.
121 In the second place, the applicant disputes, in essence, the Board of Appeal’s assessment that the relevant public’s attention will focus rather on the elements differentiating the signs at issue.
122 First, the applicant claims that, although the additional elements of the contested mark cannot be disregarded, they will not divert the public’s attention away from the similarity created by the common word element ‘mbank’ and that the relevant public does not ignore the fact that the word element ‘embank’ of the contested mark incorporates in full the word element of the earlier marks ‘mbank’.
123 In that regard, it is sufficient to recall that it is apparent from paragraphs 105 to 107 above that the marks at issue do not share a common element ‘mbank’, but the word ‘bank’ and the letter ‘m’, and that the word element of the contested mark ‘embank’ will not be perceived as ‘incorporating’ the earlier word mark mBank. Furthermore, the applicant does not dispute that the word ‘bank’ is descriptive of the services at issue.
124 It must be held that the Board of Appeal was right to rely on the case-law according to which, where 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 itself low (see judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited).
125 The Board of Appeal also correctly recalled the case-law according to which, where the earlier trade mark and contested mark coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists (see judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53 and the case-law cited).
126 On the one hand, it should be borne in mind that the signs at issue have in common the element ‘bank’, which is descriptive of the services at issue and is therefore not distinctive. Thus, the impact resulting from the presence of that element in the signs at issue on the assessment of the likelihood of confusion will be particularly low. On the other, the only other component common to the signs at issue is linked to the presence of the single letter ‘m’, which will also have little impact on the global assessment of the likelihood of confusion in view of the other elements differentiating the signs at issue.
127 The applicant’s argument is therefore not capable of calling into question the Board of Appeal’s assessment that the impact of the similarity resulting from the presence of the letter ‘m’ and the descriptive element ‘bank’ in the signs at issue was low and was not decisive for the purposes of the global assessment of the likelihood of confusion.
128 Secondly, the applicant maintains that the relevant public only rarely has the chance to make a direct comparison between the different marks but must place its trust in the imperfect picture of them that it has kept in its mind and that consumers tend to remember similarities rather than dissimilarities between the signs.
129 It should be borne in mind that the relevant public, as regards services relating to its financial and economic assets, displays a high level of attention.
130 The General Court has already held that, in general, consumers of financial and banking services and of related goods select their banking institution carefully and after first carrying out research of the market and the offers available on it. Therefore, consumers will be much more aware of the differences between the signs at issue (see, to that effect, judgments of 13 July 2012, Caixa Geral de Depósitos v OHIM – Caixa d’Estalvis i Pensions de Barcelona (‘la Caixa’), T‑255/09, not published, EU:T:2012:383, paragraph 21, and of 2 March 2022, EUROBIC, T‑125/21, not published, EU:T:2022:102, paragraph 68 and the case-law cited).
131 Furthermore, the applicant’s argument is not capable of calling into question the Board of Appeal’s assessment that a careful selection of services which might result in a long-term contract left little, if any, room for the ‘imperfect recollection’ of a certain earlier mark. The applicant’s assertion does not take into account the specific nature of the services at issue.
132 Accordingly, the applicant’s arguments are not capable of calling into question the Board of Appeal’s assessment that the relevant public with a high level of attention will pay greater attention to the dissimilarities between the signs at issue.
133 In the third place, the applicant disputes the Board of Appeal’s assessment that, in view of the nature of the services at issue, the visual aspect of the marks is more important. It maintains that the Board should have given phonetic similarity a special weight because the services at issue are often advertised, offered and sold orally.
134 In that regard, the applicant asserts that most banking services are offered by telephone and that, although they can be chosen by sight, they are recommended and chosen orally in a significant number of cases. It claims that if the potential purchaser of the services in question may encounter the visual representation of the marks first, the phonetic element may play a decisive role in choosing those services.
135 In the contested decision, the Board of Appeal found that, in view of the nature of the services at issue, the visual aspect of the marks was more important. It stated that, in its standard use, the mark appeared on the company’s premises, in its documents and brochures or on the internet and that consumers would be less exposed to the phonetic use of the marks.
136 It is settled case-law that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight; it is appropriate to examine the objective conditions under which the marks may be present on the market (judgment of 6 October 2004, New Look v OHMI – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49; see also judgment of 13 July 2012, la Caixa, T‑255/09, not published, EU:T:2012:383, paragraph 78 and the case-law cited).
137 It is true that the phonetic aspect of the marks is not irrelevant in view of the fact that some financial services may be offered orally, in particular by telephone.
138 However, the General Court has already held that, for financial services in Class 36, the visual aspect predominates, since the relevant public will perceive signs on business signs, papers and prospectuses, when choosing a financial institution for its services and for the accompanying goods. In such a context, the visual aspect, and thus also the perception of graphic elements, in addition to word elements, is more important than the phonetic aspect. A contract with a bank is concluded in writing, not orally (judgment of 13 July 2012, la Caixa, T‑255/09, not published, EU:T:2012:383, paragraph 79).
139 Moreover, it should be noted that the applicant does not dispute the fact that the services in question are often used on the basis of written offers or on the internet. Furthermore, as noted by EUIPO, it has not adduced any evidence in support of its assertion that the majority of banking services are purchased by telephone.
140 Furthermore, the applicant cannot validly claim that the Board of Appeal’s assessment that the visual aspect is the most important is contradicted by previous decisions of the Boards of Appeal of EUIPO.
141 It must be borne in mind that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO (see judgment of 26 October 2017, Alpirsbacher Klosterbräu Glauner v EUIPO (Klosterstoff), T‑844/16, EU:T:2017:759, paragraph 51 and the case-law cited; see also, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
142 Likewise, as regards the decisions referred to by the applicant, one concerned services distinct from those at issue in the present case and the other did not contain an assertion that the phonetic aspect is more important than the visual aspect.
143 Accordingly, the applicant has not established that the Board of Appeal erred in granting, in the global assessment of the likelihood of confusion, more weight to the visual aspect of the signs at issue.
144 It follows that the fourth complaint must be rejected.
145 It follows from all of the foregoing that the applicant has not shown that the Board of Appeal made an error of assessment in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
146 It follows that the first plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
147 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders mBank S.A. to pay the costs.
Delivered in open court in Luxembourg on 12 July 2023.
V. Di Bucci | | S. Papasavvas |