JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
12 July 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark MANDO — Earlier international and national figurative marks MAN — Earlier national word mark Man — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑792/17,
MAN Truck & Bus AG, established in Munich (Germany), represented by C. Röhl, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by J. Ivanauskas and D. Walicka, and subsequently by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being
Halla Holdings Corp., established in Yongin-si (South Korea), represented by M.‑R. Hirsch and C. de Haas, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 September 2017 (Case R 1677/2016-1), relating to opposition proceedings between MAN Truck & Bus and Halla Holdings,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,
Registrar: E. Hendrix, administrator,
having regard to the application lodged at the Court Registry on 5 December 2017,
having regard to the response of EUIPO lodged at the Court Registry on 9 March 2018,
having regard to the response of the intervener lodged at the Court Registry on 20 March 2018,
having regard to the decision of 7 December 2018, joining Cases T‑698/17 and T‑792/17 for the purposes of the oral part of the procedure,
having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 4 and 8 January 2019,
further to the hearing on 5 February 2019,
gives the following
Judgment
I. Background to the dispute
1 On 18 October 2012, the intervener, Halla Holdings Corp., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a trade mark was sought for the following figurative sign:
3 The goods and services in respect of which registration was sought are in, inter alia, Classes 7, 9, 11, 12, 35 and 37 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond for each of those classes, to the following description:
– Class 7: ‘Car lifts, kick starters for motorcycles, bicycle assembling machines, machine tools, drilling machines (for metalworking), milling machines (for metalworking), hydraulic presses (for metalworking), forging moulds, drilling machines, machining centers, drilling machines (except for woodworking), lathes (except for woodworking), lathes (for metalworking), air condensers, superchargers, condensers (steam) (parts of machines), control mechanisms for machines/engines or motors, control cables for machines/engines or motors, shock absorbers for machine other than for vehicles, spiral springs other than for vehicles, rail antishocking materials other than for vehicles, spring buffers other than for vehicles, spring hydraulic buffers other than for vehicles, airsprings other than for vehicles, lamellar springs other than for vehicles, shock absorber plungers (parts of machines), dashpot plungers (parts of machines), braking devices for machine other than for vehicles, disk brakes other than for vehicles, band brakes (machine elements not for land vehicles), brake linings other than for vehicles, brake shoes other than for vehicles, brake segments other than for vehicles, block brakes (machine elements not for land vehicles), conical brakes other than for vehicles, brakes for industrial machines, brake pads other than for vehicles, pressure reducers (parts of machines), grease rings (parts of machines), grease boxes (parts of machines), rings other than for land vehicles (parts of machines), roller bearings, bearings (parts of machines), ball-bearings, brushes (parts of machines), springs (parts of machines), universal joints (Cardan joints), lubricators (parts of machines), vehicle washing installations, automatic washing machines for vehicles, automatic parking installations, machines for parking management (except for electric applications), parking machines, rubber processing machines, rubber forming machines, rubber manufacturing machines, rubber mixing machines, plastic processing machines, plastic working machines, plastic manufacturing machines, stators (parts of machines), alternators, alternating current servo motors, starters for motors and engines, starter alternators, motors (except for land vehicles), current generators, dynamo brushes, servomotors, driving motors other than for vehicles, servo motors other than for vehicles, electric motors other than for vehicles, DC motors other than for vehicles, driving motors other than for land vehicles, motors other than for land vehicles, motors (electric) other than for land vehicles, planetary gear motors, bicycle dynamos, electric starter motors, igniting magnetos, electrostatic generators, direct current motors, DC generators, carbon brushes (electricity)’;
– Class 9: ‘Optical apparatus and instruments, optical lenses, optical goods, multiple purpose cameras, multiframe view cameras, digital cameras, camera containing a linear image sensor, infrared cameras, accelerometers, acceleration sensors, range finders, speed indicators, speed checking apparatus for vehicles, kilometer recorders for vehicles, automatic indicators of low pressure in vehicle tires (tyres), pressure sensors, automatic pressure control apparatus, pressure measuring apparatus, temperature sensors, gyrometers, bicycle speedometers, alarms, attenuators, voltage regulators for vehicles, transformers (electricity), switches (electric), light dimmers (regulators) (electric), regulating apparatus (electric), adapters (electricity), inverters (electricity), control panels (electricity), armatures (electricity), resistances (electric), converters (electric), connections (electric), contacts (electric), coils (electric), current converters, electric current switches, electric current control devices, current limiters, voltage stabilizing power supply, voltage stabilizers, voltage regulators, power switches, electromagnetic coils, current rectifiers, rectifier modules, electric apparatus for commutation, commutators, power transformers for amplification, circuit breakers, differential switches, choking coils (impedance), condensers (capacitors), battery charge devices, accumulators (electric) (for vehicles), battery cases, accumulators (electric), wavemeters, car video recorders, detectors, interfaces for detectors, high-frequency apparatus, radar apparatus, microwave antennae, antennas for wireless communications apparatus, direction finders, navigation apparatus for vehicles (on-board computers), aerials, antennae filters, remote control apparatus, satellite navigational apparatus, car navigators, car aerials, telecommunication machines and implements, transmitters (telecommunication), transmitting sets (telecommunication), frequency converters, radar receivers with amplifiers, car antennae, communications apparatus for vehicles, telecommunications transmitters, apparatus for transmission of communication, navigational instruments, portable communications apparatus, ultrasonic sensors, diodes, semi-conductors, semi-conductor memories, semi-conductor memory units, semiconductor elements, semi-conductor wafers, semiconductor power elements, light emitting diodes (LED), wafers (silicon slices), printed circuit boards, testing apparatus for testing printed circuit boards, electronic circuit board, connectors for electronic circuits, integrated circuits, circuit boards provided with integrated circuits, integrated circuit module, chips (integrated circuits), transistors, printed circuits, circuit boards’;
– Class 11: ‘Water purifiers for household purposes, heating apparatus, water heaters, hot air apparatus, refrigerating chambers, refrigerating containers, air conditioners, filters for air conditioning, air conditioning installations, air conditioning apparatus, fans (air-conditioning), fans (parts of air conditioning installations), heating and cooling systems for motor cars, air conditioners for automobiles, ventilation (air-conditioning) installations and apparatus for automobiles, heaters for automobiles, bicycle lights, bicycle lamps, lighting apparatus and devices for bicycles, air purifiers (for household purposes), air sterilizers, air purifying apparatus and machines, humidifiers, electric refrigerators (for household purposes), water purifiers for household purposes (electric), dehumidifiers (for household purposes), electric refrigerators’;
– Class 12: ‘Horns for motor cars, anti-theft devices for motor cars, wheel rims for motor cars, cycles, parts and accessories for cycles, cycle rims, wheels for motorcycles, cycle spokes, cycle stands, cycle frames, cycle handle bars, cycle hubs, two-wheeled motor vehicles, air bags (safety devices for automobiles), steering wheels for automobiles, reversing alarms for automobiles, parts and accessories for automobiles, electric cars, tandem bicycles, mopeds, touring bicycles, delivery bicycles, bicycles, bicycle rims, wheels for bicycles/cycles, bicycle spokes, frames (for luggage carriers) (for bicycles), bicycle stands, bicycle frames, bicycle handle bars, parts and accessories for bicycles, handlebars, shock absorbing springs for motor cars, spiral springs for vehicles, shock absorbing springs for vehicles, spring-assisted hydraulic shock absorbers for vehicles, air springs for vehicles, suspension shock absorbers for vehicles, shock absorbing springs for vehicles, suspension shock absorbers for vehicles, shock absorbers for automobiles, brakes for motor cars, brake linings for motor cars, brake shoes for motor cars, brake segments for motor cars, disk brakes for vehicles, band brakes for vehicles, brakes for vehicles, brake facings for vehicles, brake linings for vehicles, brake shoes for vehicles, brake systems for vehicles, braking systems for vehicles and parts thereof, brake segments for vehicles, brake shoes for vehicles, block brakes for vehicles, conical brakes for vehicles, non-skid devices for vehicle tires (tyres), braking devices for vehicles, cycle brakes, band brakes (for land vehicles), block brakes (for land vehicles), brake pads for automobiles, brakes for bicycles/cycles, bicycle brakes, gearboxes for motor cars, crankcases for components for motor cars (other than for engines), clutch mechanisms for motor cars, torque converters for motor cars, gears for cycles, reduction gears for land vehicles, gears for land vehicles, gear boxes for land vehicles, transmission shafts for land vehicles, gears for vehicles, cranks for cycles, bearings for land vehicles, axis for land vehicles, couplings for land vehicles, axle journals, trailer couplings, electric motors for motor cars, motors for cycles, alternating current (AC) motors for land vehicles, driving motors for land vehicles, motors for land vehicles, servomotors for land vehicles, motors (electric) (for land vehicles), direct current (DC) motors for land vehicles’;
– Class 35: ‘Import-export agencies, administrative processing of purchase orders, wholesale services for freezers, retail services for hot-water heating apparatus, wholesale services for automobiles, commercial intermediary services in the field of bicycles, retail services for tires (tyres) and tubes, wholesale services for antifreeze, retail services for liquid fuels, commercial intermediary services in the field of parts of vehicles, commercial intermediary services in the field of articles of vehicles, commercial intermediary services in the field of renewal parts of vehicles, trade agency, trade consultancy, trade brokerage, offer services (trade)’;
– Class 37: ‘Air conditioning apparatus installation and repair, heating equipment installation and repair, freezing equipment installation and repair, vehicle breakdown assistance (repair), vehicle greasing, motor vehicle maintenance and repair, repair of bicycles, repair of generators, provision of coin-operated car washing machines, rental of car washing apparatus, car wash, vehicle polishing, anti-rust treatment for vehicles, vehicle wash, vehicle cleaning, automobile cleaning and car washing, automobile decoration, tuning of motor vehicles’.
4 The application for the mark was published on 3 January 2013.
5 On 3 April 2013, the applicant, MAN Truck & Bus AG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier international registrations and earlier national marks:
– international registration No 542 763 of 25 August 1989 of the figurative mark, reproduced below, designating Austria, Bulgaria, Germany, Spain, France, Hungary and the Czech Republic for goods and services in Classes 7, 12 and 37 and corresponding, for each of those classes, to the following description:
– Class 7: ‘Motors and engines for boats and for stationary applications, as well as parts thereof’;
– Class 12: ‘Trucks, motor coaches and buses, street maintenance vehicles, as well as parts thereof, motors and engines for land vehicles’;
– Class 37: ‘Repair and maintenance of motor vehicles and of motors and engines’;
– international registration No 542 762 of 25 August 1989 of the figurative mark, reproduced below, designating Austria, Germany and France for the same goods and services in Classes 7, 12 and 37 as the previous mark;
– international registration No 863 418 of 24 June 2005 of the figurative mark, reproduced below, designating the European Union for, inter alia, services in Class 35 corresponding to the following description: ‘Advertising of any kind using all available media such as TV, radio, Internet, press and means such as advertising films, posters, pictures, photos, calendars, clothing, publications, brochures, catalogues, datasheets, operator’s and maintenance manuals, magazines, journals, handbooks, mobile and stationary advertisement carriers for products such as clothing articles, footwear, headwear of all types and for services which are rendered in conjunction with the trading, sales, marketing, servicing and using of the aforementioned products’;
– the German word mark Man, registered on 16 July 1953 under No 641 584 and renewed on 1 December 2011 for, inter alia, goods in Classes 7, 9 and 11 corresponding to the following description:
– Class 7: ‘Fittings for motor vehicles, namely injection pumps, carburettors; charge fans, tipping, loading and unloading devices attached to the motor vehicle, parts for motor vehicles, parts for cars, large containers of aluminium and other light metals; components of steam and gas power installations, namely boilers, superheaters, economisers, steam accumulators, steam condensers, mechanical heaters, steam machines, steam engines, steam turbines; components of generator installations, namely compressed-gas generators, suction-gas generators and ventilator gas generators, gas machines; internal combustion engines; water turbines; hydraulic installations and components therefor, namely pumps, pump stations, water raisers, hydraulic presses, press pumps, hydraulic controls; material-testing machines, compressors, fans, machines and apparatus for freezing and chilling installations, refrigerating machines, coils, spray condensers; machines and apparatus for brewery and malt-house installations, machines and apparatus for barley-cleaning apparatus and barley-separating apparatus, for malt-cleaning apparatus and malt-milling apparatus, for malt kilns, for brewhouses and for water-cooling installations for breweries; printers, book printers, colour printers, labelling machines; mechanical and pneumatic transport installations, conveyor belts, bucket elevators, silos, apron conveyors, mechanically driven sieving apparatus; cranes, elevators, conveyors, transfer tables, turntables, capstans, feeder machines, loading bridges, coal tippers, shavings extractors and dust extractors; pipelines; cleaning apparatus, namely machines, pumps, containers, vessels, filters, pipelines, fittings and apparatus for purifying liquids and gases; storage batteries’;
– Class 9: ‘Physical, chemical, optical and electro-technical apparatus, surveying weighing, signalling, measuring and checking (supervision) apparatus’;
– Class 11: ‘Apparatus for lighting, heating, cooking, drying and ventilating, water supply and sanitary purposes’; and
– German figurative mark, reproduced below, registered on 2 February 1979 under No 981 579 and last renewed on 1 June 2007, for, inter alia, goods in Classes 7, 9, 11 and 12 corresponding to the following description:
– Class 7: ‘Gas-, air- and water-conveyors, namely plunger pumps, eccentric rotor pumps, lobe pumps, vane pumps, rotary pumps, pressure lifts, rams, jet pumps and bellows; brake linings; shaped metal parts worked mechanically or by hand; cutlery; hand-operated or machine-operated industrial and agricultural tools, namely saws, saw blades, files (tools), drills, pliers, hammers, lathe tools, countersinking tools, milling tools, knives, scribers, rasps, spades and hoes; pneumatic tools, tools for electric and oxy-fuel welding and cutting; agricultural machines and apparatus for attaching to vehicles and apparatus for operating said goods; armatures; chains; vehicle frames and bridge roadways; armatures for machines; engines, namely steam engines, heat engines, dynamo machines, steam motors, gas motors, internal combustion engines, explosion engines, hot-air motors, pneumatic motors, wind motors, spring-force motors, water motors, electric motors, steam turbines, water turbines, fuel turbines, and jet engines arid rocket engines and parts therefor; drive apparatus and machines for bridges, dock gates and lock gates and parts therefor; work machines, namely pumps, compressors, bellows, current generators, generators, compressed-air, vacuum and ventilator gas generators and parts therefor; mechanical, hydraulic, pneumatic and electric presses and parts therefor; materials testing machines, apparatus and machines for materials testing with atomic radiation; refrigerators, printers, book-printing machines, rotogravure printers and offset printers, colour printers, stamping presses (stereotype), longitudinal and transverse cutting apparatus, paint mills, folding apparatus; bookbinding machines; escalators, elevators; pulling, bending and folding machines; lifting and conveying machines for solid, liquid and gaseous substances; winches, capstans, cranes, hydraulic, pneumatic and mechanical power lifts, excavators, suction dredgers, bellows, conveyor troughs, bucket conveyors, conveyor belts, trolleys, chutes, stackers, grinding machines, shredding machines, shaker grates, shaker machines, sieving and sorting machines; mobile and stationary machines for clearing and piling bulk goods; feeder machines, loading bridges, transfer tables, turntables, coal tippers, rams, stampers, shavings extractors and dust extractors, silos for granular and fibrous goods, gates for silos of this type; shaping and casting machines and flasks for casting, concrete finishing machines, pressing machines, brick-making machines; machine tools, namely lathes, drills, saws, planes, milling machines, cutting and centring machines and automated tools and parts therefor; presses, die-forging machines, welding apparatus, melting apparatus, superheaters, flow apparatus; machines for rolling sheet metal and plastics; struts, stamps, conveyor cages and setting clamps, and parts therefor, for mining; mills, drum mills, crushers, agitators; slipways and parts therefor; bearings, foundations, machine stands and frames, bearing brushes, grease boxes, burners and combustion chambers and parts therefor, filters and starters for motor vehicles and machines; parts of machines, namely joints; sound and vibration dampers; lubricating devices, accumulators; printers’ type, printing plates, casting machines for printing plates, melting furnaces for printing purposes, ink pumps, feeding machines and delivery machines; boilers, economisers and steam accumulators, waste-steam collectors, exhaust-gas boilers, recuperative and regenerative heat exchangers, condensers, heaters, and parts therefor for steam and gas power plants and for combined heat and power plants; blast furnaces and parts therefor, namely furnace casings, run-off devices, closures and distributors for charge, elevators and bellows; generators and parts therefor; hydraulic installations, namely pumps and accumulators and hydraulic controls, and parts therefor; docks; hydraulic works, namely locks, pumping stations, weirs and parts therefor and drive machines therefor; machines and apparatus for use in forestry; furniture, upholstery for incorporation in rail vehicles and ready-made metal cabins; printers’ type, printing blocks; vehicle fittings, namely canisters of plastic or metal, lubricating apparatus, lifting jacks, identification plates; electric and non-electric soldering and welding apparatus’;
– Class 9: ‘Life-saving and fire-extinguishing apparatus and instruments; physical, chemical, electrotechnical, thermal and acoustic apparatus, surveying, nautical, weighing, signalling, measuring, calibration and checking (supervision) apparatus; antennas and lightning conductors; cables and masts for high-voltage lines; safety and warning apparatus’;
– Class 11: ‘Apparatus for lighting, water-heating, heating, cooking, refrigerating, drying, humidifying, ventilating, extracting and dedusting purposes; mechanical apparatus for producing artificial ice, air-conditioning apparatus; fans; gas-, air- and water-supply installations; bath and toilet installations; absorption and adsorption apparatus; parts for the aforesaid goods; lamps, headlights; fittings and pipelines for liquid and gaseous fluids; chimneys; boilers; burners for gaseous and liquid fuels; heating bodies; insulators; lights, decorative lights; furnaces, incinerators, waste incinerators and industrial furnaces’;
– Class 12: ‘Wheeled vehicles for rails and roads, having their own drive or driven remotely; lorries, motor buses, trolley buses, vans (vehicles), electrocars, rail traction vehicles driven by internal combustion engines, electric motors or steam engines; vehicle trailers for transporting goods and passengers and for rail and road vehicles; special-purpose rail and road vehicles; refuse collection vehicles, sweeping machines, dump cars, self-unloaders, tow trucks; rescue vehicles, ambulances, emergency service vehicles, fire engines and fittings therefor, namely pumps, ladders, parachutes, rescue chutes and stretchers; armoured and non-armoured military vehicles; combined rail and road vehicles or combined land and water vehicles; road rollers; tractors for agricultural and forestry purposes; trains, trolleys, trams, bogies, refrigerated lorries and tankers; moveable narrow-gauge railways, overhead railways, mountain railways, cog railways, elevated railways and parts thereof, and parts and vehicles for fixed narrow-gauge railways, overhead railways, mountain railways and cog railways; tracked vehicles, pontoons, floating docks, ferries, floating cranes, floating bridges; parts for vehicles, namely vehicle chassis, frames and superstructures, coach frames, axles, wheels, motors and engines, transmissions, brakes, couplings, windows, canopies, injection pumps, carburettors, tipping, loading and unloading apparatus, springs for vehicles, oil and fuel filters, exchange filter cartridges, suction and exhaust apparatus, exhaust turbochargers for internal combustion engines of vehicles, silencers, saddles, seats, windscreen wipers, steering wheels, shock absorbers, indicators, mudguards, bumper bars, starter motors, dashboards, measurement instruments, generators, headlights, ignition apparatus, vehicle fittings, propellers and radiators and radiator housings; sterns, timbers (frames), watertight compartments, keels, masts and hatchcovers for ships; apparatus for protecting corners and edges (bumpers, fenders) for stationary structures and vehicles; electric vehicle parts; goods of wood, namely containers and vessels, boards, rods, bars, casings, beadings, wedges and models; frames for vehicle seats; gearboxes and gear parts of celluloid or laminated or unlaminated plastics; vehicles’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). In addition, with regard to international registrations Nos 542 763 and 542 762, the opposition was also based on Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) in so far as those registrations designated Austria and Germany.
8 By decision of 15 August 2016, the Opposition Division rejected the opposition.
9 On 12 September 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 14 September 2017 (Case R 1677/2016-1) (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division to the extent that it had rejected the opposition under Article 8(5) of Regulation No 207/2009, and remitted the case to the Opposition Division for further consideration in respect of that ground. It dismissed the appeal as to the remainder.
11 As regards, in particular, the alleged infringement of Article 8(1)(b) of Regulation No 207/2009, the First Board of Appeal rejected the appeal for the following reasons:
– as regards the international registration No 542 763 designating Austria, Germany, Bulgaria, Spain, France, Hungary and the Czech Republic, the relevant public was the professional or specialist public of specialist vehicles and engines and motors as well as the vehicle-owning general public. The visual similarity of the marks was low and there was an average degree of phonetic similarity. By contrast, conceptually, they were different and not comparable. Taking account of the differences between the marks, the lesser importance of the phonetic similarity in the case given the way in which the goods were marketed, and the greater attention than average of the relevant public, the degree of similarity of the marks was insufficient to conclude that there was a likelihood of confusion, even for goods that are identical, and even if the earlier mark enjoyed a reputation in Germany and Austria;
– as regards international registration No 542 762 designating Germany, Austria and France, it was necessary to apply the same reasoning as that set out in the previous paragraph regarding international registration No 542 763;
– the same approach applied to international registration No 863 418 designating the European Union, which covers services within Class 35, with the clarification that no reputation had been invoked as regards those services;
– as regards the German word mark Man, which covers goods in Classes 7, 9 and 11, the relevant public was simultaneously the specialist public and the general public with an average level of attention. There was no likelihood of confusion given that the visual and phonetic differences between the marks outweighed their similarities;
– likewise, as regards the German figurative mark No 981 579, which covers goods within Classes 7, 9, 11 and 12, there was also no likelihood of confusion with the mark applied for.
II. Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision in so far as it rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009;
– order EUIPO to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
14 The intervener submits that the Court should:
– dismiss the application;
– uphold the contested decision;
– order the applicant to pay the costs.
III. Law
A. Admissibility of the intervener’s second head of claim
15 By its second head of claim, the intervener asks the Court to confirm the contested decision.
16 Given that confirming the contested decision amounts to rejecting the action, the intervener’s head of claim must be understood as seeking, in essence, the dismissal of the action (judgments of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, not published, EU:T:2016:69, paragraph 19, and of 20 February 2018, Deutsche Post v EUIPO — bpost (BEPOST), T‑118/16, not published, EU:T:2018:86, paragraph 15). The intervener’s second head of claim is therefore intertwined with the first head of claim, which seeks the dismissal of the action.
B. Substance
17 In support of the action, the applicant puts forward a single plea in law, alleging the infringement of Article 8(1)(b) of Regulation No 207/2009.
18 In essence, first, the applicant alleges that the Board of Appeal incorrectly defined the relevant public and its level of attention. Second, it alleges that the Board of Appeal made a number of errors in defining the visual and conceptual similarity of the trade marks. Third, in the determination of the likelihood of confusion, the applicant submits that the Board of Appeal failed sufficiently to take account of the exceptional distinctive character of the earlier marks, connected with their reputation throughout the European Union and the fact that the relevant public would identify the earlier marks in the mark applied for. Fourth, the applicant submits that the Board of Appeal failed to take account of the detriment to other functions of the earlier marks, such as the functions of communication, investment or advertising, as well as the function of the trade mark as an indication of quality.
19 EUIPO and the intervener dispute the applicant’s arguments.
1. Preliminary observations
20 Article 8(1)(b) of Regulation No 207/2009 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 an 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.
21 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T–162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
22 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, the likelihood of confusion presupposes both that the trade mark applied for and the earlier trade mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier trade mark was registered, those conditions being cumulative (see judgment of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 41 and the case-law cited).
23 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
24 The question whether the Board of Appeal was correct to conclude that there was no likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations. In that regard, it is necessary to examine:
– in the first place, the likelihood of confusion with the two earlier international registrations Nos 542 763 and 542 762, which cover goods and services in Classes 7, 12 and 37;
– in the second place, the likelihood of confusion with the earlier international registration No 863 418 which covers services in Class 35;
– in the third place, the likelihood of confusion with the earlier national word and figurative marks, the first of which covers the goods in Classes 7, 9 and 11 and the second of which covers the goods in Classes 7, 9, 11 and 12.
2. The likelihood of confusion between the mark applied for and the earlier international registrations Nos 542 763 and 542 762, which cover goods and services in Classes 7, 12 and 37
(a) The relevant public
25 The Board of Appeal held, first, that the relevant public for the goods in Classes 7 and 12 was made up only of specialists and professionals and, second, that the relevant public for the services in Class 37 also included the vehicle-owning general public.
26 The applicant challenges the findings of the Board of Appeal regarding the goods in Classes 7 and 12 on the ground that, in accordance with the judgment of 12 November 2002, Arsenal Football Club (C‑206/01, EU:C:2002:651), it is necessary to take into account any conceivable situation in which the mark is used in order to define the relevant public. Thus, the relevant public would also include the general public, because the goods covered would all be used and seen on roads every day. Furthermore, the general public uses pick-up trucks, motorhomes, minibuses and converted cars, which are classified as trucks or buses. Motors and engines for land vehicles and boats, and parts for trucks are also a part of everyday life for the general public given that it uses those vehicles and purchases parts for them.
27 EUIPO and the intervener dispute the applicant’s arguments.
28 In this case, it follows from the case-law that, 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 should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited). The average consumer may belong to a specialist public, a professional public or the general public, depending on the circumstances.
29 Moreover, only the public that is common to the goods and services at issue must be taken into consideration when comparing the marks. The relevant public is composed of consumers likely to use both the goods covered by the earlier trade mark and those covered by the contested trade mark (judgment of 19 July 2016, Alpha Calcit v EUIPO — Materis Paints Italia (CALCILITE), T‑742/14, EU:T:2016:418, paragraph 44).
30 In the light of those principles, first, it must be held that the goods in Classes 7 and 12 covered by the earlier international registrations at issue, namely ‘Motors and engines for boats and for stationary applications, as well as parts thereof’ (Class 7) and ‘Trucks, motor coaches and buses, street maintenance vehicles, as well as parts thereof, motors and engines for land vehicles’ (Class 12) have a certain technical nature. That is the case for, inter alia, the parts at issue, which, contrary to what the applicant implied at the hearing, do not relate only to vehicles for individuals, but also to engines for boats and for stationary applications, and also to trucks, motor coaches and buses, street maintenance vehicles.
31 In that context, even if it is not inconceivable that a member of the general public might purchase one or other of those goods, the applicant has not shown that those few members of the general public who do so constitute a non-negligible part of the relevant public.
32 Furthermore, the relevant public is composed of consumers of the goods covered, who will make a choice between the goods and the marks (see, to that effect, judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 40). Thus, the general public that, on a daily basis, observes or uses the goods in Classes 7 and 12, including trucks and buses, without needing to select one of those goods on the basis of its mark cannot be regarded as part of the relevant public.
33 In that context, the general public which takes a boat or a bus as a means of transport could at most be regarded, as EUIPO submits, as the consumer of transport services offered by the undertakings operating those vehicles, since it is not called upon to choose its means of transport on the basis of its mark.
34 Moreover, the applicant’s assertion that smaller vehicles such as pick-up trucks, motorhomes, minibuses and converted cars are included in the concept of bus or truck is not substantiated either in the applicant’s arguments or in the case file. In any event, such a broad interpretation would conflict with the clear wording of the goods covered by the earlier international registrations in question.
35 Consequently, the Board of Appeal did not err in concluding that the goods concerned in Classes 7 and 12 were aimed at specialists and professionals, including mechanics and boat builders, and undertakings transporting people or goods.
36 As regards, secondly, the services in Class 37, which include the repair and maintenance of vehicles and engines, it is not contested and must be held that such services are aimed at both specialists and professionals, inter alia in the road sector, as well as the vehicle-owning general public, which must regularly repair and maintain its vehicles.
37 In conclusion, the applicant’s arguments alleging that the relevant public was incorrectly defined must be rejected.
(b) The level of attention of the relevant public
38 It is clear from paragraphs 25 and 33 of the contested decision that, according to the Board of Appeal, the level of attention of the relevant public is higher than average for all of the goods and services covered in Classes 7, 12 and 37.
39 The applicant submits that the level of attention of the relevant public cannot be regarded as very high. It submits that the judgment of 12 November 2002, Arsenal Football Club (C‑206/01, EU:C:2002:651) makes clear that it is necessary to take into account the after-sales context in which the relevant public, which uses goods without having purchased them, does not necessarily demonstrate a high level of attention. Similarly, according to the applicant, particularly close attention is not paid to lower cost goods, such as spare parts, which are in fact observed in passing on account of their everyday use by specialists in workshops.
40 EUIPO and the intervener dispute the applicant’s arguments.
41 In the present case, as regards the goods in Classes 7 and 12, it must be observed that, having regard to the technical and costly nature of those goods, which are aimed, in principle, at a specialist and professional public, that public will only purchase those goods after a careful examination of their properties, composition and other characteristics (see, to that effect, judgment of 19 November 2014, Evonik Oil Additives v OHIM — BRB International (VISCOTECH), T‑138/13, not published, EU:T:2014:973, paragraph 48).
42 As regards, more specifically, spare parts, it must be observed that they are used in order for the engines or machines to function or be maintained; that is to say, they are goods that are generally technically complex and expensive. Since those goods are intended to be used in connection with such goods, the relevant public will pay particular attention to them when making their purchase, being careful to avoid the possibility of them causing serious damage to those goods (see, to that effect, judgment of 19 November 2014, VISCOTECH, T‑138/13, not published, EU:T:2014:973, paragraph 48). Consequently, contrary to the applicant’s submission, even if spare parts are priced relatively modestly, the relevant public will have a level of attention that is higher than average.
43 In that context, the applicant cannot rely on the judgment of 12 November 2002, Arsenal Football Club (C‑206/01, EU:C:2002:651), in order to show that the public which uses and sees the goods in an after-sales context does not necessarily have a high level of attention and that it is appropriate also to take into account that lesser level of attention.
44 First, as EUIPO correctly submitted at the hearing, the judgment of 12 November 2002, Arsenal Football Club (C‑206/01, EU:C:2002:651), concerned an action against counterfeiting and not a request for the registration of the mark Arsenal. That case did not therefore involve a prospective analysis of a possible likelihood of confusion in the mind of the relevant public, but the determination of whether the use, for identical goods, of a mark identical to the Arsenal mark was a prohibited use, notwithstanding the indication at the point of sale that the counterfeit goods were not official goods.
45 Secondly, as EUIPO correctly stated at the hearing, the judgement of 12 November 2002, Arsenal Football Club (C‑206/01, EU:C:2002:651) does not state that, where the level of attention of the relevant public may be lower in an after-sales context than at the critical moment of purchase of the goods or services concerned, that lesser level of attention must be given priority consideration. On the contrary, in its judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraph 47), the Court held that the judgment of 12 November 2002, Arsenal Football Club (C‑206/01, EU:C:2002:651) did not express a general rule that, for the purposes of an assessment of the likelihood of confusion, there was no need to refer specifically to the particularly high level of attention displayed by consumers when purchasing a certain category of goods.
46 Furthermore, the Court held that the fact that the relevant public was able to perceive the goods and the marks relating to them in circumstances unconnected with any act of purchase and to display, in such circumstances, a lower level of attention on such occasions did not preclude the taking into account of the particularly high level of attention exhibited by the average consumer when he prepared and made his choice between different goods in the category concerned (judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 41). Therefore, even if it had been necessary to find that the relevant public could include the public which observes the goods at issue on a daily basis, or which was occasionally confronted with them on the roads, the Board of Appeal did not err in applying, for the purposes of the assessment of the likelihood of confusion, the level of attention higher than average shown by consumers at the time of purchase of those goods.
47 As regards the services in Class 37, it must be observed that the relevant public, including the general public, will be concerned to use the services which are most appropriate for the best standard of maintenance of the vehicles and engines at issue, even if some of those services are less expensive. In that regard, the applicant has not produced any evidence, either in the case file or at the hearing, which could invalidate that conclusion.
48 Consequently, the Board of Appeal did not err in finding that the relevant public, namely the professional or specialist public and the vehicle-owning general public, displayed a level of attention that was higher than average.
(c) Comparison of the goods and services
49 It is clear from the contested decision that the Board of Appeal did not carry out a detailed examination of the degree of similarity of each of the numerous goods and services covered. Nevertheless, in paragraph 34 of that decision, in the assessment of the likelihood of confusion, it took into account the possibility that those goods and services might be identical. In so doing, it upheld the findings of the Opposition Division which, for reasons of procedural economy, also had not carried out a detailed analysis of all those goods and services and had based its decision on the possibility of their being identical.
50 In that regard, in considering that the goods or services could be identical, the Board of Appeal based its decision on the premiss most favourable to the applicant, which claimed that there was a likelihood of confusion between the marks. In the light of the case file, it must be held that the Board of Appeal was fully entitled to base its decision on such a premiss, which, moreover, is not contested by the applicant.
(d) The comparison of the signs
51 The Board of Appeal held that the signs were visually similar to a low degree and of average similarity phonetically. By contrast, it concluded that, conceptually, the signs were not comparable or were dissimilar.
52 First, the applicant submits that the mark applied for and the earlier international registrations are of at least average visual similarity. The element ‘man’ is easily recognised as it is separated from the element ‘do’ by the specific graphic design used between the letter ‘n’ and the letter ‘d’. In addition, the Board of Appeal did not take into account the fact that the earlier registrations MAN, which have enhanced distinctive character owing to their reputation, are entirely contained within the mark applied for and, moreover, appear at the beginning thereof. As regards the international registration No 542 763, the arch placed over the word ‘man’ should not have been taken into consideration. Furthermore, taking into account the fact that the marks are short, their small differences are insufficient to reject any visual similarity.
53 Secondly, the applicant submits that there is average degree of conceptual similarity between the marks. The element ‘man’ will be perceived in isolation in the trade mark applied for by the relevant public because it has a meaning in all languages.
54 EUIPO and the intervener dispute the applicant’s arguments.
55 In the present case, it is clear from the case-law that the global assessment of the likelihood of confusion must, in relation to 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).
56 Furthermore, the assessment of the similarity between two marks means more than taking just one component of a compound 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42).
(1) The visual similarity
57 In the present case, it must be observed that the mark applied for comprises a term composed of five letters, namely ‘m’, ‘a’, ‘n’, ‘d’ and ‘o’, whereas the word element of the earlier registrations is composed of only three letters, namely ‘m’, ‘a’ and ‘n’. In that regard, as the Board of Appeal correctly found, the earlier international registrations MAN and the mark applied for, MANDO, display some degree of visual similarity to the extent that they have the word element ‘man’ in common.
58 However, the mark applied for and the earlier international registrations each constitute or contain a short term, composed of five and three letters respectively. Furthermore, they differ due to the presence of the string of letters ‘do’, which appears in the second part of the mark applied for. It is apparent from the case-law that even insignificant differences between signs are capable of creating a different overall impression where those signs are made up of short words (judgment of 27 March 2014, Oracle America v OHIM — Aava Mobile (AAVA MOBILE), T‑554/12, not published, EU:T:2014:158, paragraph 47; see also, to that effect, judgments of 4 February 2015, El Corte Inglés v OHIM — Apro Tech (APRO), T‑372/12, not published, EU:T:2015:70, paragraph 34, and of 26 May 2016, Sfera Joven v EUIPO — Las banderas del Mediterráneo (NOOSFERA), T‑99/15, not published, EU:T:2016:321, paragraph 54).
59 In that regard, it must be observed that the difference in the overall impression created by each of the terms ‘man’ and ‘mando’ is all the greater since, first, the string of letters, ‘do’, in the mark applied for represents almost half of that mark and, second, the term ‘mando’ forms a unique term that the relevant public has no reason to break down into two parts, namely ‘man’ and ‘do’. That addition therefore constitutes a difference that the relevant public will easily observe, such that, as the Board of Appeal found in paragraph 27 of the contested decision, the visual similarity is low.
60 That finding is not called into question by the applicant’s arguments.
61 First, contrary to the submissions made by the applicant, the graphic design used for the letter ‘d’ that connects it to the letter ‘n’ does not permit the view that the relevant public will separate the element ‘man’ from the element ‘do’ and will perceive the element ‘man’ in isolation. It must be held that the letter ‘d’ remains clearly discernible and is not confused with the letter ‘n’ that precedes it.
62 Secondly, as regards the fact that the term ‘man’ is entirely included in the beginning of the mark applied for, it is true that, according to the case-law, where the earlier mark is entirely included in trade mark applied for, that is, as a general rule, an indication of similarity of the marks (see, to that effect, judgment of 17 January 2017, QuaMa Quality Management v EUIPO — Microchip Technology (medialbo), T‑225/15, not published, EU:T:2017:10, paragraph 58 and the case-law cited). The Board of Appeal nevertheless applied that case-law correctly. First, it considered, first of all, that the marks were similar precisely because of the presence in them of the element ‘man’. Second, it found that, having regard to the presence of the additional string of letters ‘do’ in the mark applied for, the degree of that similarity was low, since the stylisation of the earlier registrations was a further differentiating factor.
63 Furthermore, the Board of Appeal correctly stated that, while it is true that the consumer normally attaches more importance to the first part of words, that factor cannot apply in every case (see judgment of 21 May 2015, Formula One Licensing v OHIM — Idea Marketing (F1H2O), T‑55/13, not published, EU:T:2015:309, paragraph 37 and the case-law cited). That is the case, inter alia, where, as in the present case, the mark applied for is short. The relevant public will focus on the term ‘mando’ as a whole. Given the short and simple structure of the mark applied for, it is unlikely that the relevant public will break the term ‘mando’ down into two words, namely ‘man’ and ‘do’ (see, to that effect, judgment of 12 November 2009, Spa Monopole v OHIM — De Francesco Import (SpagO), T‑438/07, EU:T:2009:434, paragraph 24).
64 Moreover, the EU Courts have acknowledged that, although the consumer often attaches importance to the first part of words, his visual attention may focus just as much on the last letters of the signs (see judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO — Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 49 and the case-law cited). It cannot be deduced merely from the position of the string of letters ‘do’ at the end of the term ‘mando’ that that element will necessarily attract less attention than the string of letters ‘man’.
65 Thirdly, the Board of Appeal did not disregard the string of letters ‘man’, nor did it find that the string of letters ‘do’ was the dominant element the mark applied for. On the contrary, it based the similarity of the marks specifically on the presence of the string of letters ‘man’ in each of them. Nevertheless, in its global assessment, it correctly held that that was not the only element of which trade mark applied for was composed, and that the letters ‘d’ and ‘o’ also had to be taken into account. Therefore, having regard to the fact that the mark applied for is one fairly short word and that the two syllables of which it is composed are not separated by any space, hyphen or other typographic element that allows them to be disassociated, it was fully entitled to find that the relevant public would perceive the mark applied for as an indivisible whole and not to undertake and examination of each of its details.
66 In that regard, the fact that the earlier registrations MAN were able to enjoy a reputation in Germany and Austria and to have, as a result, a highly distinctive character does not invalidate the finding in the preceding paragraph. The reputation of an earlier mark or its particular distinctive character must be taken into consideration for the purposes of assessing the likelihood of confusion, and not for the purposes of assessing the similarity of the marks at issue, which is an assessment made prior to that of the likelihood of confusion (see judgment of 11 December 2014, Coca-Cola v OHIM — Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 54 and the case-law cited).
67 In any event, even if the relevant public were to break down the mark applied for and perceive the element ‘man’ as dominant owing to its reputation in Germany and Austria, that would not be the only factor to take into account in the assessment of the similarity of the marks. Indeed, as is clear from the case-law cited in paragraph 56 above, it is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (see, to that effect, judgment of 10 October 2012, Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, not published, EU:T:2012:535, paragraph 78). However, the letters ‘d’ and ‘o’ cannot be regarded as having negligible importance in the mark applied for, since they make up almost half of it.
68 Fourthly, in the assessment of visual similarity, the Board of Appeal could take into account the arch placed over the term ‘man’ in the international registration No 542 763, contrary to the applicant’s submission. Even if that element has weak distinctive character owing to its commonplace form, it cannot be regarded as completely negligible because of the important place that it occupies over the word element ‘man’. In addition, the Board of Appeal did not give great weight to that figurative element in its reasoning, but merely regarded it as another factor of differentiation between the signs.
69 Fifthly, the applicant’s argument that the stress placed on the element ‘man’ in the mark applied for, which concerns its pronunciation, is manifestly irrelevant as regards the visual comparison of the signs.
70 Sixthly, as regards the applicant’s argument based on EUIPO’s decision-making practice, it is true that EUIPO must, having regard to the general principles of equal treatment and good administration, take into account the decisions previously taken in respect of similar applications and consider with special care whether it should decide in the same way or not, since the way in which those principles are applied must be consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 61).
71 However, in the present case, the earlier decisions of EUIPO cited by the applicant in the application, which concern opposition procedures relating to marks such as SHE and SHEQU, UBI and Ubium, MAG and MAGNA, SKY and SKYFi, and AXA and AXACT, relate to marks that are entirely different to those at issue. The applicant does not specify how the elements making up the marks concerned by those decisions are comparable to those of the mark applied for and, consequently, to what extent the Board of Appeal should have taken them into account.
72 Finally, as regards the judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (SKYPE) (T‑183/13, not published, EU:T:2015:259), relied on by the applicant at the hearing, it must be held that that judgment concerned different signs and specific communication, messaging and telecommunication services that were addressed to an anglophone public, with the result that the facts that gave rise to that judgment were manifestly different from those of the present case. Consequently, the applicant’s argument that the SKYPE case is exactly identical to the present case must be rejected.
(2) The phonetic similarity
73 As regards the phonetic comparison of the marks, the Board of Appeal was fully entitled to find that the marks at issue had an average degree of similarity owing to the pronunciation of the syllable ‘man’ of the mark applied for, since the term ‘man’ corresponded to the earlier registrations.
74 In that regard, the intervener’s argument that the signs are phonetically different because the earlier international registrations will be pronounced like the English word ‘man’, whereas the term ‘mando’ will be pronounced like the words ‘panda’, ‘bandana’ or the term making up the mark MANGO, is not substantiated and must therefore be rejected.
(3) The conceptual similarity
75 In the present case, the applicant submits that, because of its meaning in all languages, the term ‘man’ will be perceived in isolation in the mark applied for. In that regard, it is not disputed between the parties that, as the Board of Appeal stated in the contested decision, the term ‘man’ is part of basic English vocabulary and means a male human being. That term is also close to the German noun ‘Mann’, which has the same meaning. Thus members of the relevant public who speak German and those who have a basic knowledge of English may understand the earlier registrations as meaning ‘man’ [‘male human being’]. For members of the relevant public who do not have such knowledge, the term ‘man’ will be devoid of meaning.
76 Furthermore, as is clear from paragraphs 59 and 63 above, the relevant public has no reason to break the mark applied for down into two elements, namely ‘man’ and ‘do’, but will perceive it rather as a unique term. It is not disputed that, as the Board of Appeal found in paragraphs 29 and 37 of the contested decision, for the relevant public in Germany, Austria, Bulgaria, France, Hungary and the Czech Republic the term ‘mando’ is a fanciful word that does not have any meaning. It follows that, for the relevant public in those States which speaks German or which has a basic knowledge of English and will understand the term ‘man’ as meaning ‘male human being’, the marks are conceptually different (see, to that effect, judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20, and of 25 January 2018, Brunner v EUIPO — CBM (H HOLY HAFERL HAFERL SHOE COUTURE), T‑367/16, not published, EU:T:2018:28, paragraph 90). For the other members of that public, which will not associate any meaning, either with the mark applied for or with the earlier international registrations, it is not possible to make a conceptual comparison of the marks (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO — Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO — Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).
77 As regards the relevant Spanish public, it is not disputed between the parties that the term ‘mando’ has a specific meaning and translates into French as ‘j’envoie, j’ordonne’ [and into English as ‘I send, I order’]. Therefore, for that public, the mark applied for, which has a clear meaning, and the earlier international registrations, since they have another meaning (man), are conceptually different in accordance with the case-law cited in the preceding paragraph. For the relevant Spanish public, which would not attribute any meaning to the term ‘man’, the marks are not conceptually similar (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 55).
(e) The likelihood of confusion
78 The Board of Appeal considered that, taking into account the differences between the signs, the lesser importance of the phonetic similarity in the case and the relevant public’s greater attention than average, as regards the goods and services in Classes 7, 12 and 37, the degree of similarity of the marks was insufficient to conclude that there was a likelihood of confusion, even for goods that were identical, and even if the earlier mark enjoyed a reputation in Germany and Austria.
79 The applicant disputes the Board of Appeal’s assessment of the likelihood of confusion, in essence for three reasons. First, the Board of Appeal examined the likelihood of confusion on the basis of a similarity which was both incorrectly assumed to be exclusively phonetic and insufficient. When purchasing goods such as those at issue in the present case, the marks are, as a general rule, discussed orally and referred to by name. This is likewise true of goods in the after-sales context. Second, the Board of Appeal did not duly take into account the exceptional distinctive character of the earlier marks connected with their reputation in Germany and Austria. Third, the specialist public will pay greater attention to the marks and will recognise the international registrations MAN in the mark applied for.
80 EUIPO and the intervener dispute the applicant’s arguments.
81 In the present case, according to the case-law, 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 the similarity of the goods or services designated. Thus, a low degree of similarity between the marks may be offset by a high degree of similarity between the goods or services designated (see, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and Others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
82 As regards, first, the importance of the phonetic similarity of the signs, it must be observed that the Board of Appeal did not base its decision exclusively on that assessment when rejecting any likelihood of confusion. It is clear from the contested decision that the likelihood of confusion was rejected on the grounds that, first, the overall similarity between the marks, including visual similarity, was not sufficiently high and that, second, the level of attention of the relevant public was higher than average.
83 In addition, the visual, phonetic or conceptual aspects of the signs at issue do not always carry the same weight. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the marks or the conditions under which the goods or services covered by the mark are marketed. Thus, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark designating those goods visually (see judgments of 21 February 2013, Esge v OHIM — De’Longhi Benelux (KMIX), T‑444/10, not published, EU:T:2013:89, paragraph 37 and the case-law cited, and of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 68, and the case-law cited).
84 As EUIPO correctly submits, it is highly unlikely that the relevant public would purchase the goods and services at issue after only hearing the name of the mark. On the contrary, as is clear from the case-law cited in paragraph 41 above, in view of the generally technical or expensive nature of the goods at issue, the relevant public will examine them carefully, particularly visually, before opting for one or the other of them. Furthermore, even though the purchase of the goods at issue may be made on the basis of an oral recommendation or following discussion, that oral communication will take place, where necessary, with qualified sales personnel who are capable of informing customers about the various brands (see, to that effect, judgments of 21 February 2013, KMIX, T‑444/10, not published, EU:T:2013:89, paragraph 38).
85 It must be added to that point that the Board of Appeal was entitled, as was stated in paragraph 45 above, to refer primarily to the behaviour of consumers at the time they purchase the goods and services at issue, without having to take into account such behaviour in an after-sales context. The applicant cannot therefore claim, as it did at the hearing, that it is necessary to place oneself in that context in order to assess the importance of the phonetic similarity.
86 As regards services for the maintenance and repair of motor vehicles and motors in Class 37, it must be observed that they generally require the consumer to visit the premises of a professional of that mark, who has the required expertise and the necessary spare parts to repair and maintain those vehicles and motors, if necessary, so that the consumer will, in principle, encounter that mark visually.
87 Secondly, as regards the highly distinctive character of the earlier international registrations, relied on by the applicant, it is clear from the contested decision that that was indeed taken into account by the Board of Appeal in its overall assessment of the likelihood of confusion. It was nevertheless fully entitled to find, that that distinctive character, despite being high, did not make it possible to conclude that there was a likelihood of confusion.
88 First, the enhanced distinctive character resulting from the reputation of the earlier registrations at issue does not help to confer on the element ‘man’ a dominant character or independent distinctiveness, inasmuch as, as is stated in paragraphs 63 and 65 above, the relevant public has no reason to break the mark sought down into two parts, namely ‘man’ and ‘do’, but will perceive it rather as a whole (see, to that effect, judgment of 21 May 2015, F1H2O, T‑55/13, not published, EU:T:2015:309, paragraph 50).
89 Second, it is true, as the applicant states, that there may be a likelihood of confusion notwithstanding a low degree of similarity between the marks where the goods or services covered by them are very similar and the earlier mark is highly distinctive (see judgment of 7 May 2009, Waterford Wedgwood v Assembled Investments (Proprietary), C‑398/07 P, not published, EU:C:2009:288, paragraph 33 and the case-law cited). However, as EUIPO correctly observes, it does not follow from that case-law that, where there is great similarity between the goods or the services and a high distinctive character of the earlier mark, a likelihood of confusion must be found in all circumstances. Although the enhanced distinctive character of the earlier marks must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (judgment of 20 February 2018, BEPOST, T‑118/16, not published, EU:T:2018:86, paragraph 66).
90 It must be observed, in the present case, that the possibility that the earlier international registrations have enhanced, or even highly, distinctive character owing to their reputation in Germany and Austria, does not at all alter the finding that, for the relevant public that displays a level of attention higher than average and that will perceive the mark applied for as a whole, the differences between the marks are clearly discernible. Thus, it must be held that the fact that the earlier marks have enhanced distinctive character cannot offset the fact that there is no likelihood of confusion between the marks within the meaning of Article 8(1)(b) of Regulation No 207/2009, taking into account the visual, phonetic, and even conceptual, differences between the marks.
91 Thirdly, the fact that the specialist public may possibly recognise the MAN marks in the mark applied for, does not mean that it will confuse those registrations with the mark applied for. On the contrary, as is stated in the preceding paragraph, a global assessment of the likelihood of confusion shows that the relevant public, which displays a higher than average level of attention taking into account the technical nature of some of the goods and services at issue and that will therefore examine them carefully, will observe the mark applied for as a whole and will discern the visual, phonetic and even conceptual differences between the marks to a greater extent than a public that displays only and average or low level of attention.
92 Having regard to the foregoing considerations, the Board of Appeal did not err in finding that there was no risk of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the mark applied for and the earlier international registrations Nos 542 763 and 542 762.
3. The likelihood of confusion between the mark applied for and the earlier international registration No 863 418, covering services in Class 35
93 The Board of Appeal held that the conclusion that there was no likelihood of confusion as regards the earlier international registration Nos 542 763 and 542 762 could be extended to all the Member States other than those covered by those registrations. According to it, that conclusion also applied to the earlier international registration No 863 418. The contested decision does not therefore contain any reasoning specific to that international registration and the services in Class 35 that it covers.
94 According to settled case-law, compliance with the duty to state reasons is a matter of public policy that must be raised, if necessary, of the Court’s own motion (see, to that effect, judgments of 20 February 1997, Commission v Daffix, C‑166/95 P, EU:C:1997:73, paragraph 24, and of 23 October 2002, Institut für Lernsysteme v OHIM — Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 59). In the present case, although the applicant has not invoked a failure to state reasons in the application, the Court considers it necessary to examine of its own motion the question whether the contested decision is sufficiently reasoned. The parties were questioned by way of measures of organisation of the procedure on the adequacy of the statement of the reasons given in the contested decision.
95 In that regard, the applicant pointed out that the Board of Appeal had not defined the relevant public and its level of attention, nor examined the degree of similarity of the goods and the services. In addition, it is not certain that the reasoning set out by the Board of Appeal in respect of the earlier international registrations Nos 542 763 and 542 762 also applies to the services in Class 35.
96 EUIPO responds that the contested decision should be understood to mean that the considerations relating to the relevant public, its level of attention and the similarity of the goods in Classes 7, 12 and 37 also apply in relation to the earlier international registration No 863 418 and the services in Class 35. Furthermore, there is also no likelihood of confusion as regards that registration, taking into account the fact that that likelihood rests principally on the differences between the signs.
97 It should be noted that, according to the first sentence of Article 75 of Regulation No 207/2009 (now Article 94(1) of Regulation 2017/1001), decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that deriving from Article 296 TFEU, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable the persons concerned to ascertain the reasons for it and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65).
98 In the present case, it must be held that the Court is not able to exercise its review of the legality of the assessments made by the Board of Appeal as to whether there was a likelihood of confusion as regards the earlier international registration No 863 418 and the services in Class 35 covered by it, which relate to advertising using various kinds of media.
99 First, the Board of Appeal did not define expressly either the relevant public or its level of attention. It is true that the contested decision could be interpreted as meaning that the Board of Appeal extended the reasoning relating to the goods and services in Classes 7, 12 and 37, covered by the earlier international registrations Nos 542 763 and 542 762 to the advertising services in Class 35. By proceeding in that way, the Board of Appeal would have considered that those services were targeted simultaneously at a specialist and professional public, as well as the general public, whose level of attention is higher than average.
100 However, it must be observed that the Board of Appeal did not carry out any specific analysis in order to establish whether, taking into account the description of the services in Class 35, which cover ‘Advertising of any kind using all available media’, the reasoning set out in relation to the goods and services in Classes 7, 12 and 37 covered by the mark applied for, which are very different in nature, could in fact apply to those advertising services.
101 Secondly, as regards the assessment of the likelihood of confusion, it is clear from the contested decision that, as regards the earlier registrations Nos 542 762 and 542 763, the Board of Appeal had based the absence of a likelihood of confusion not only on the differences between the signs, but also on the level of attention of the relevant public, which was higher than average, and the limited impact of the phonetic similarity, taking into account the means of marketing the goods and services in Classes 7, 12 and 37 concerned.
102 However, the Board of Appeal provided no indication as to the reasons why the reasoning set out in relation the earlier registrations Nos 542 762 and 542 763, recalled in the preceding paragraph, could be applied to the services in Class 35 covered by the earlier international registration No 863 418.
103 It follows that, even if it had been appropriate to proceed on basis of the premiss that, like the earlier international registrations Nos 542 762 and 542 763, the services in Class 35 covered by the mark applied for and the earlier registration No 863 418 were identical, and that the signs at issue displayed a low degree of visual similarity, an average degree of phonetic similarity and no conceptual similarity, the Board of Appeal provided no indication at all that enables the Court to understand to what extent the relevant factors, taken globally, did not make it possible to conclude that there was a likelihood of confusion in respect of the earlier registration No 863 418.
104 Such an inadequacy in the statement of reasons, as regards considerations having decisive importance in the context of the contested decision, makes it impossible to understand, in a clear and unequivocal manner, the conclusion attached to the reasoning followed by the Board of Appeal in its assessment of the likelihood of confusion as regards the earlier registration No 863 418.
105 Moreover, the arguments advanced by EUIPO, in response to the Court’s questions and at the hearing, could not, even if proved, mitigate that lack of reasoning in the contested decisions since EUIPO is not allowed, in the course of the proceedings, to advance supplementary reasons for a decision vitiated by a defective statement of reasons under Article 296 TFEU (judgment of 18 March 2016, Karl-May-Verlag v OHIM — Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 61).
106 It follows that the contested decision is inadequately reasoned as regards, at the very least, the definition of the relevant public and its level of attention and the global assessment of the likelihood of confusion as regards the earlier registration No 863 418. Therefore, it is necessary to annul the contested decision on the ground that the Board of Appeal’s statement of reasons is inadequate as regards that registration, without it being necessary to examine the arguments relating to the substance raised by the applicant in its application.
4. The likelihood of confusion between the mark applied for and the earlier international registrations, which cover goods and services in Classes 7, 9, 11 and 12
107 As regards the earlier German marks, the applicant states that it submits the same arguments as it relied on in respect of the earlier international registration Nos 542 763 and 542 762. It clarifies, however, that it did not rely on a reputation for those marks and the goods and services that they cover and that, therefore, the arguments based on the consideration given to reputation do not apply here.
108 EUIPO and the intervener dispute the applicant’s arguments in the same way.
(a) The relevant public and its level of attention
109 The earlier German national marks cover the goods in Classes 7, 9 and 11 for the word mark Man and the goods in Classes 7, 9, 11 and 12 for the figurative mark MAN.
110 As regards the earlier national word mark Man, it is clear from the contested decision that, according to the Board of Appeal, the goods included in Class 7, which are components of motor vehicles or machines, turbines, motors or parts of such goods, are of interest to the specialist public only. The goods in Class 11, namely ‘Apparatus for lighting, heating, cooking, drying and ventilating’, and some goods in Class 9, namely ‘weighing, signalling, checking (supervision) [apparatus]’ include goods that could be of interest to the general public. The Board of Appeal concluded therefrom that the relevant public was composed of the specialist public for the goods in Class 7 and the specialist and general public for the goods in Classes 9 and 11.
111 Furthermore, for the purpose of assessing whether there was a likelihood of confusion, the Board of Appeal took into account the lower level of attention, namely that of the general public.
112 It is also clear, in essence, from paragraph 45 of the contested decision, that the Board of Appeal implicitly followed identical reasoning to that recalled in the two preceding paragraphs as regards the goods in Classes 7, 9, 11 and 12, covered by the earlier national figurative mark MAN, and therefore that it took into account the lower level of attention, namely that of the general public.
113 In that context, the applicant’s arguments that the Board of Appeal wrongly failed to take into account the level of attention of the general public manifestly have no factual basis.
114 Moreover, it must be recalled that, with regard to the assessment of the likelihood of confusion, consideration must be given to the public having the lowest level of attention (see, to that effect, judgment of 8 September 2010, Kido v OHIM — Amberes (SCORPIONEXO), T‑152/08, not published, EU:T:2010:357, paragraph 40). Consequently, even if some goods covered by the earlier national marks are in fact aimed at a specialist public which possibly displays a higher than average level of attention, the Board of Appeal did not err in basing its decision, in this case, on the perception of the general public whose level of attention is average.
(b) The comparison of the goods
115 It is stated in paragraph 43 of the contested decision that the earlier national word mark Man and the mark applied for covered goods in the same classes, and that the public for those goods would coincide. The Board of Appeal therefore implicitly considered that the goods covered were at least similar. In addition, as is clear from paragraph 112 below, the Board of Appeal based its decision on identical reasoning as regards the goods in Classes 7,9,11 and 12 covered by the earlier national figurative mark MAN.
116 Having regard to the case file, it must be held that that conclusion is not vitiated by any error.
(c) The comparison of the signs
117 According to the contested decision, the comparison of the signs did not differ from that made by the Board of Appeal as regards the earlier international registrations relied on by the applicant. It followed that, according to the Board of Appeal, the mark applied for and the earlier national marks had a low degree of visual similarity, an average degree of phonetic similarity, and were conceptually dissimilar or not comparable.
118 In that regard, the arguments relied on by the applicant in the application, which concern the visual, phonetic and conceptual comparison of the signs, have been examined in paragraphs 57 to 77 above and rejected in their entirety. Taking into account the fact that the national word mark Man and national figurative mark MAN are practically identical to the earlier international registration of the figurative mark No 542 762, which also covers Germany, the considerations set out in paragraphs 57 to 77 above may equally be applied to those earlier national marks.
119 Consequently, the Board of Appeal was fully entitled to find, as it did for the earlier international registrations, that the earlier national marks displayed a low degree of visual similarity and an average degree of phonetic similarity with the mark applied for, and that those marks were conceptually dissimilar or not comparable.
(d) The likelihood of confusion
120 In the contested decision, the Board of Appeal held that, irrespective of the fact that the relevant public was the general public having an average level of attention, there was no likelihood of confusion given that the visual and phonetic differences between the marks outweighed their similarities.
121 In that regard, taking into account the fact that the applicant raises the same arguments as it submitted in respect of the earlier international registrations Nos 542 762 and 542 763, with the exception of those relating to reputation, its argument must be understood as contesting, first, the insufficient role attributed by the Board of Appeal to the phonetic similarity of the marks and, second, the failure to take into account the fact that the specialist public will examine the mark more carefully and will recognise the earlier signs MAN and Man in the mark applied for.
122 In the present case, first, it must be noted that the applicant’s arguments relating to the goods in Classes 7 and 12, which are of a certain technical nature and are aimed at a public whose level of attention is higher than average, have already been rejected in paragraphs 81 to 86 above. As regards the goods in Classes 9 and 11, there is nothing in the case file or in the submissions made by the applicant at the hearing to indicate that the phonetic aspect would play a leading role in the marketing of those goods.
123 As regards, secondly, the applicant’s argument concerning the identification by the specialist public of the earlier signs MAN and Man in the mark applied for, it must be recalled that that argument has already been rejected in paragraph 91 above as regards the earlier international registrations Nos 542 762 and 542 763 on the ground that for that specialist public, which displays a level of attention higher than average and that will perceive the mark applied for as a whole, the differences between those marks are clearly discernible. Taking into account the fact that the earlier international registration Nos 542 762 and 542 763 and the earlier national marks do not display any important differences visually, the conclusion in paragraph 91 equally applies in relation to whether there is a likelihood of confusion with the latter marks.
124 In any event, a global assessment of the marks indicates that, visually, and phonetically and even conceptually, they display differences that are clearly discernible as regards their different lengths, the presence of the additional string of letters ‘do’ in the mark applied for and the fact that the relevant public in Germany will perceive the verbal element of the latter marks as a fanciful term which is not to be broken down into two distinct elements. Furthermore, in view of their specific technical function, the goods covered are generally purchased after an essentially visual examination, such that the average degree of phonetic similarity is of lesser importance than the low degree of visual similarity. That assessment also applies as regards the general public, which is reasonably observant and circumspect and will thus perceive the important differences pointed out above.
125 Consequently, the Board of Appeal did not err in finding that, as regards the earlier national marks, there was no likelihood of confusion with the mark applied for.
5. Detriment to the other functions of the earlier marks
126 The applicant submits furthermore that, when finding that there was no likelihood of confusion, the Board of Appeal relied solely on the possible detriment to the function of the earlier marks as an indication of origin. It thus failed to take into account the detriment to other functions of those marks, such as the functions of communication, investment or advertising, or the function as an indication of quality.
127 EUIPO challenges the admissibility of that argument on the ground that it was not raised by the applicant in the administrative procedure.
128 It must be recalled that, according to the case-law, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of matters produced for the first time before it (see judgment of 9 February 2017, International Gaming Projects v EUIPO — adp Gauselmann (TRIPLE EVOLUTION), T‑82/16, not published, EU:T:2017:66, paragraph 51 and the case-law cited).
129 In the present case, it is clear from the case file that, at stage of the procedure before the General Court, the applicant advanced for the first time the argument alleging detriment to the other functions of the mark. In that regard, contrary to what it submits in its written answers to the General Court’s questions, the applicant may not rely on arguments relating to the exploitation of the mark set out in pages 9 and 10 of its pleading setting out the grounds of the action before the Board of Appeal, inasmuch as those arguments concern an infringement of Article 8(5) of Regulation No 207/2009, which is not at issue in the present case. That conclusion applies equally as regards the arguments relied on in pages 31 and 32 of the pleading setting out the grounds of opposition and page 10 of the applicant’s observations on the response to the opposition, which states that the use of the mark applied for would take unfair advantage of the distinctive character or repute of the earlier marks within the meaning of the same provision.
130 The argument alleging a breach of the other functions of the mark is therefore a new argument that the applicant did not put forward before EUIPO and which the latter was not required to take into account of its own motion, since Article 76(1), in fine, of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001) restricts its examination to the facts, evidence and arguments provided by the parties. That argument is therefore inadmissible.
131 It follows from all the foregoing that the action must be upheld to the extent that it concerns the earlier international registration No 863 418 which covers services within Class 35. It must be dismissed as to the remainder.
Costs
132 Under Article 134(3) of the Rules of Procedure of the General Court, each party is to bear its own costs where each party succeeds on some and fails on other heads.
133 In this case, since the contested decision must be annulled only in part, it is appropriate to order the parties to bear their own costs.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 September 2017 (Case R 1677/2016-1) to the extent that it concluded that there was no likelihood of confusion between the figurative mark MANDO and the earlier international registration No 863 418 of the figurative mark MAN.
2. Dismisses the action as to the remainder.
3. Orders each party to bear its own costs.
Kanninen | Calvo-Sotelo Ibáñez-Martín | Reine |
Delivered in open court in Luxembourg on 12 July 2019.