JUDGMENT OF THE GENERAL COURT (Second Chamber)
2 March 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark FOR HONOR – Earlier EU word mark HONOR – Relative ground for refusal – 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‑171/21,
Ubisoft Entertainment, established in Carentoir (France), represented by J.‑B. Bourgeois, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Huawei Technologies Co. Ltd, established in Shenzhen (China),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 25 January 2021 (Case R 1297/2020-4), relating to opposition proceedings between Huawei Technologies and Ubisoft Entertainment,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 March 2021,
having regard to the response lodged at the Court Registry on 27 July 2021,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 29 October 2015, the applicant, Ubisoft Entertainment, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 9, 16, 28 and 41 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 9: ‘Apparatus for recording, transmission, reception, reproduction and processing of sound and images; magnetic, optical, numerical and electronic data carriers; magnetic, optical and numerical discs; computer programs; digital personal organiser, computer memories; printed circuits; computers; computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes; telephone and telecommunications apparatus; recorded computer programs; games software; computer software (recorded programs); software for playing video, computer and on-line games; software incorporating computer games; computer software for video and audio games; multimedia and interactive software; computer software on mobile telephones and electronic tablets; audio visual games on computer hardware platforms; magnetic, optical and digital media for computer programs; cd roms; compact discs; electronic publications, downloadable; software featuring music and motion picture sound tracks; cinematographic films; mouse mats; parts and fittings for all the aforesaid’;
– Class 16: ‘Paper, cardboard; printed matter; adhesives (bands, tapes, glues) for stationery purposes; photographs, stationery, printed matter; artists’ materials; paint brushes; office requisites; instructional and teaching material (except apparatus); printing blocks; photograph stands; paper or cardboard media for watercolours; photoengravings, watercolours, architects’ models, engravings, lithographic works of art, prints, painting materials; office equipment (except furniture), office requisites (except furniture), writing materials, bookmarks, bags (envelopes, pouches) of paper or plastics, for packaging, posters, advertisement boards of paper or cardboard, albums, comic books, almanacs, video game pamphlets, calendars, graphic prints, stickers, newspapers, books, booklets, manuals, prospectuses, graphic reproductions, document reproductions’;
– Class 28: ‘Apparatus for electronic games (other than those adapted for use with television receivers only); audio visual games on computer hardware platforms; toy action figures; modeled toy figurines; game tables; dolls; clothes for dolls; automatic games apparatus, other than coin-operated and those adapted for use with television receivers only; electronic game consoles; game apparatus for use with television receivers only; teaching materials in the form of games’;
– Class 41: ‘Education; tuition; tuition; providing of training; entertainment; sporting and cultural activities, organisation of competitions relating to video games, education and/or entertainment; arranging and conducting of colloquiums, conferences and congresses, organisation of exhibitions for cultural or educational purposes; organisation of exhibitions in the field of entertainment; publishing of entertainment, educational and instructional texts; publication of magazines, publication of newspapers, publishing of books, publishing of newspapers, publishing of magazines, publishing of books; providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment; games offered online (on a computer network); games via cellular telephones; games via cellular telephones or for use on the aforesaid telephones; production of films (other than publicity films), shows, movie studios, film rental, rental of video and sound recordings; entertainment services in the nature of an amusement park attraction, namely, a themed area; amusement park and theme park services; operating fairground rides and funfair services; organisation of shows; leisure services; production of radio and television programmes, cinema and television entertainment, recording of audio (recording studios) or video (filming) on magnetic data carriers; education; tuition; tuition; providing of training; entertainment; sporting and cultural activities; organisation of competitions relating to video games, education and/or entertainment; arranging and conducting of colloquiums, conferences and congresses, organisation of exhibitions for cultural or educational purposes; organisation of exhibitions in the field of entertainment; publishing of entertainment, educational and instructional texts; publication of magazines, publication of newspapers, publishing of books, publishing of newspapers, publishing of magazines, publishing of books; providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment; games offered online (on a computer network); providing games by mobile telephone communication; provision of games by or for use on cellular telephones; production of films, shows, movie studios, film rental, rental of video and sound recordings; recordings for cinema, television, dvd, compact discs; entertainment services in the nature of an amusement park attraction, namely, a themed area; amusement park and theme park services; operating fairground rides and funfair services; organisation of shows, leisure services, production of radio, television, film and television entertainment programmes, creation of images, sounds or words, recording of sounds (recording studios) or images (filming) on magnetic data carriers, professional consultancy relating to entertainment’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2016/010 of 18 January 2016.
5 On 15 April 2016, the other party to the proceedings before the Board of Appeal of EUIPO, Huawei Technologies Co. Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the earlier EU word mark HONOR, filed on 8 August 2014 and registered on 30 December 2014 under No 13 157 334, covering goods and services in Classes 9, 35 and 38 corresponding, for each of those classes, to the following description:
– Class 9: ‘Communication equipment; telecommunications devices; computers; tablet computers; hand held computers and personal computers; gateways; set-top boxes; routers; earphones; modems; portable power packs; speakers; apparatus for transmission of sound; chargers for phones, computers, hand-held computers and tablet computers; power bank for phones, computers, hand-held computers and tablet computers; portable sound boxes; devices for hands free use of mobile phones and computers; wearable devices for displaying phone’s short messages, answering calls and operating phones, computers, hand-held computers and tablet computers; protective cases for phones; tablet computer and computers; batteries; phone holders, tablet computer holders; parts, fittings and accessories for communication equipment, telecommunications equipment, computers, tablet computers, hand held computers and personal computers’;
– Class 35: ‘Retail services in relation to communication equipment, telecommunications devices, computers, tablet computers, hand held computers and personal computers, gateways, set-top boxes, routers, earphones, modems, portable power packs, speakers, apparatus for transmission of sound; retail services in relation to chargers for phones, computers, hand-held computers and tablet computers; retail services in relation to power bank for phones, computers, hand-held computers and tablet computers; retail services in relation to portable sound boxes, devices for hands free use of mobile phones and computers, wearable devices for displaying phone’s short messages, answering calls and operating phones, computers, hand-held computers and tablet computers; retail services in relation to protective cases for phones, tablet computer and computers; retail services in relation to batteries, phone holders, tablet computer holders; retail services in relation to parts, fittings and accessories for communication equipment, telecommunications equipment, computers, tablet computers, hand held computers and personal computers’;
– Class 38: ‘Communication services; wireless communication services; computer communication services; computer network communication services; mobile telephone communication’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 respectively).
8 By decision of 24 April 2020, the Opposition Division partially upheld the opposition and refused the application for registration in respect of the following goods and services:
– Class 9: ‘Apparatus for recording, transmission, reception, reproduction and processing of sound and images; magnetic, optical, numerical and electronic data carriers; magnetic, optical and numerical discs; computer programs; digital personal organiser, computer memories; printed circuits; computers; computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes; telephone and telecommunications apparatus; recorded computer programs; games software; computer software (recorded programs); software for playing video, computer and on-line games; software incorporating computer games; computer software for video and audio games; multimedia and interactive software; computer software on mobile telephones and electronic tablets; audio visual games on computer hardware platforms; magnetic, optical and digital media for computer programs; cd roms; compact discs; software featuring music and motion picture sound tracks; mouse mats; parts and fittings for all the aforesaid’;
– Class 28: ‘Apparatus for electronic games (other than those adapted for use with television receivers only); audio visual games on computer hardware platforms; automatic games apparatus, other than coin-operated and those adapted for use with television receivers only; electronic game consoles; game apparatus for use with television receivers only; teaching materials in the form of games’;
– Class 41: ‘Providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment; games offered online (on a computer network); games via cellular telephones; games via cellular telephones or for use on the aforesaid telephones; providing games by mobile telephone communication; provision of games by or for use on cellular telephones’.
9 On 24 June 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10 By decision of 25 January 2021 (‘the contested decision’), the Fourth Board of Appeal of EUIPO, first, declared the appeal inadmissible in so far as it was directed against the goods and services in respect of which the opposition had been rejected and, second, dismissed the appeal in so far as it was directed against the goods and services referred to in paragraph 8 above.
11 In the first place, the Board of Appeal examined the ground of opposition to registration of the mark applied for based on Article 8(1)(b) of Regulation No 207/2009. In that regard, first, it found that the goods and services covered by the signs at issue were aimed at the general public and professionals in the European Union, whose level of attention varied from average to high, and decided to take into consideration the English-speaking part of that public. Secondly, the Board of Appeal stated that the goods and services in question, namely (i) the goods and services in Classes 9, 28 and 41 covered by the mark applied for and referred to in paragraph 8 above, and (ii) the goods and services covered by the earlier mark in Classes 9 and 38 were, in part, identical and, in part, similar to varying degrees. Thirdly, it found that the signs at issue had a high degree of visual, phonetic and conceptual similarity. Fourthly, the Board of Appeal found that the word element ‘honor’ had no meaning in relation to the goods and services covered by the earlier mark and that the distinctiveness of the latter mark was normal. Fifthly, it concluded that, under the principle of interdependence, in view of the high degree of similarity between the signs at issue and the normal degree of inherent distinctiveness of the earlier mark, there was a likelihood of confusion for the English-speaking part of the relevant public, regardless of its level of attention, for goods and services which were, in the present case, identical or similar to varying degrees.
12 In the second place, as is apparent from paragraph 44 of the contested decision, given that the opposition had been upheld on the basis of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001), the Board of Appeal found that there was no need to examine the ground of opposition based on Article 8(5) of that regulation (now Article 8(5) of Regulation 2017/1001).
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs and reimburse the applicant for all the costs incurred for the purposes of the opposition and appeal proceedings, including the costs of the appeal.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The applicable law
15 As a preliminary point, it should be noted that, as regards the applicable substantive rules in the present case, given the date on which the application for registration at issue was filed, namely 29 October 2015, which is determinative for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
16 Since the relevant substantive provisions which are applicable in the present case are identical in the versions resulting from Regulation No 207/2009 and Regulation 2017/1001 respectively, the fact that the Board of Appeal and the parties referred to the provisions of the latter regulation has no bearing for the purposes of the present proceedings and those pleadings must be interpreted as being based on the relevant provisions of Regulation No 207/2009 (see, to that effect, judgment of 5 October 2020, nanoPET Pharma v EUIPO – Miltenyi Biotec (viscover), T‑264/19, not published, EU:T:2020:470, paragraph 23).
17 However, as regards procedural provisions, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
Admissibility
The admissibility of the second part of the applicant’s second head of claim
18 By the second part of its second head of claim, the applicant claims that EUIPO and the other party to the proceedings before the Board of Appeal should be ordered to reimburse the applicant for all the costs incurred for the purposes of the opposition and the appeal, including the costs of the appeal.
19 EUIPO contends that that part of the plea is inadmissible in so far as it includes the costs relating to the opposition proceedings.
20 In that regard, it must be noted that, under Article 190(2) of the Rules of Procedure of the General Court, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, in so far as the applicant’s claim also concerns the costs relating to the proceedings before the Opposition Division, which are not recoverable costs, that claim is inadmissible (see, by analogy, judgment of 21 April 2005, Ampafrance v OHIM – Johnson & Johnson (monBeBé), T‑164/03, EU:T:2005:140, paragraph 27).
21 The second part of the applicant’s second head of claim regarding the costs must therefore be rejected as inadmissible in so far as it relates to the costs incurred for the purposes of the opposition proceedings.
The admissibility of the plea alleging infringement of Article 8(5) of Regulation No 207/2009
22 In support of the action, the applicant expressly relied on an infringement of Article 8(1)(b) of Regulation No 207/2009 and an infringement of Article 8(5) of that regulation.
23 EUIPO contends that the purpose of an action brought before the Court under Article 72 of Regulation 2017/1001 is to review the legality of the decisions of the Boards of Appeal and that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. In the present case, since the Board of Appeal did not examine the ground of opposition referred to in Article 8(5) of Regulation No 207/2009, the plea alleging infringement of that article is inadmissible.
24 In the present case, it is apparent from paragraph 44 of the contested decision that the Board of Appeal upheld the opposition only in so far as it was based on Article 8(1)(b) of Regulation No 207/2009 and did not examine the ground of opposition based on Article 8(5) of that regulation. It is not for the Court to rule on an issue which was not examined by the Board of Appeal (see, to that effect, judgment of 29 March 2012, You-Q v OHIM – Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 80 and the case-law cited).
25 It follows that the plea alleging infringement of Article 8(5) of Regulation No 207/2009 must be declared inadmissible.
26 Therefore, only the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 will be examined as to its substance.
Substance
27 In support of its plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant disputes, in essence, the Board of Appeal’s assessments relating to the comparison of the goods and services, the comparison of the signs and the overall assessment of the likelihood of confusion.
28 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
29 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 that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 26 June 2014, Basic v OHIM – Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 21 and the case-law cited).
30 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 26 June 2014, basic, T‑372/11, EU:T:2014:585, paragraph 22 and the case-law cited).
31 It is in the light of those considerations that it must be examined whether, as the applicant claims, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by finding that, in the present case, there could be a likelihood of confusion with regard to the goods and services in question.
The relevant public
32 The Board of Appeal found, in paragraphs 12 and 41 of the contested decision, that the relevant public consisted of both the general public and the professional public of the European Union, whose level of attention ranged from average to high depending on the price and degree of sophistication of the goods and services in question, and decided to take into account only the English-speaking part of that public.
33 The applicant submits that the goods and services which the Board of Appeal found to be similar are aimed at the general public of the European Union, whose level of attention ranges from average to above average, since they are specialised goods and services which may be expensive.
34 In that regard, it should noted that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 21 October 2015, Petco Animal Supplies Stores v OHIM – Gutiérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 43 and the case-law cited).
35 In the present case, in the light of the nature of the goods and services in question, the Board of Appeal was correct in finding that the relevant public consisted of both the general public and the professional public, whose level of attention ranged from average to high.
36 Nor did the Board of Appeal err in law or make an error of assessment in relying on the perception of the English-speaking part of the relevant public, given that the word elements of the signs at issue belong to English vocabulary. In order for registration of an EU trade mark to be refused, it suffices that a relative ground for refusal under 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).
The comparison of goods and services
37 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia , their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
38 It should be noted that the principles applicable to the comparison of the goods also apply to the comparison between the goods and services. It is true that, by their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary or that the services may have the same purpose or use as the goods, and thus compete with each other. It follows that, in certain circumstances, goods and services may be found to be similar (see judgment of 7 September 2016, Victor International v EUIPO – Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited). In particular, it follows from the case-law that there is a similarity between goods and the retail services which relate to those goods (see judgment of 5 July 2012, Comercial Losan v OHIM – McDonald’s International Property (Mc. Baby), T‑466/09, not published, EU:T:2012:346, paragraph 24 and the case-law cited).
– The similarity between the goods in Class 9 covered by the mark applied for and the goods covered by the earlier mark in the same class
39 The Board of Appeal found, in the first place, that the applicant was specifically complaining that the Opposition Division had refused to register the mark applied for in so far as it covered ‘games software’, ‘software for playing video, computer and on-line games’, ‘software incorporating computer games’, ‘computer software for video and audio games’ and ‘audio visual games on computer hardware platforms’, in Class 9. In that regard, the Board of Appeal stated that those goods could not be used independently and had to be downloaded, used and be provided with the hardware which was indispensable for the operation of the goods. It therefore found that those goods and computer hardware could be regarded as complementary. Furthermore, the Board of Appeal found that ‘video gaming software’ could have the same manufacturers as the computer hardware used to operate that software, namely consoles, mobile phones and personal computers, it could be aimed at the same public and be sold in the same retail outlets, even though that software could also be purchased independently from video game publishers. Thus, according to the Board of Appeal, those goods were similar to the ‘computers’ in Class 9 covered by the earlier mark.
40 In the second place, as regards the other goods in Class 9 covered by the mark applied for and in respect of which the opposition was upheld, the Board of Appeal, first, endorsed the Opposition Division’s findings that ‘computer programs’, ‘recorded computer programs’, ‘computer software (recorded programs)’, ‘multimedia and interactive software’, ‘computer software on mobile telephones and electronic tablets’, ‘software featuring music and motion picture soundtracks’ and ‘parts and fittings for all the aforesaid’ were similar to the ‘computers’ in Class 9 covered by the earlier mark, in so far as they could share the same manufacturers, the same distribution channels and the same public. In addition, the Board of Appeal considered that they were complementary.
41 Secondly, the Board of Appeal endorsed the Opposition Division’s finding that ‘apparatus for recording, transmission, reception, reproduction and processing of sound and images’, ‘digital personal organiser[s]’ and ‘parts and fittings for all the aforesaid’ included the ‘computers’ in the same Class 9 covered by the earlier mark or overlapped with them, with the result that they could be regarded as identical. Similarly, ‘telephone and telecommunications apparatus’ and ‘parts and fittings for all the aforesaid’ covered by the mark applied for were included in the general category of ‘telecommunications devices’ in Class 9 covered by the earlier mark and were therefore identical to the latter.
42 Thirdly, the Board of Appeal found that ‘magnetic, optical, numerical and electronic data carriers’, ‘magnetic, optical and numerical discs’, ‘magnetic, optical and digital media for computer programs’, ‘cd roms’, ‘compact discs’ and ‘parts and fittings for all the aforesaid’ were highly similar to ‘computers’ in the same Class 9, covered by the earlier mark, in that they could have the same producers and distribution channels, target the same public and be complementary.
43 Fourthly, the Board of Appeal stated that ‘computer memories’ and ‘printed circuits’ played an important role in the functioning of ‘computers’ in the same Class 9, covered by the earlier mark, and that ‘computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes, and parts and fittings for all the aforesaid’ were closely connected to ‘computers’ because they were complementary. Therefore, according to the Board of Appeal, those goods were complementary to the ‘computers’ covered by the earlier mark. In addition, they could have shared the same manufacturers and the same distribution channels. Accordingly, the Board of Appeal concluded that those goods could be regarded as similar.
44 Fifthly, the Board of Appeal found that ‘mouse mats’ and ‘parts and fittings for all the aforesaid’ had a low degree of similarity to ‘computers’ in Class 9, covered by the earlier mark, in so far as they could be sold in the same specialised shops, be aimed at the same public and be regarded as complementary.
45 The applicant submits that the approach taken by the Board of Appeal in finding that there was a similarity between ‘games software’ and computer hardware, based on the fact that the former could not be used without the latter, was too broad and led to the creation of links of similarity between totally different goods. However, those goods differ, not only in their nature and purpose, but also in their distribution channels, since video games are generally downloaded through very specific distribution channels, and differ in their manufacturers and in their methods of use. In addition, they are not in competition with each other. In order to substantiate its argument that the fact that one product is indispensable for the use of another product cannot lead to a finding of similarity between those products, the applicant draws an analogy between, on the one hand, computers, and, on the other, rare metals and rare earth elements, which are necessary for computers to function. Thus, according to the applicant, the fact that the goods are used together is insufficient for a finding of similarity.
46 EUIPO disputes the applicant’s arguments.
47 As a preliminary point, it should be noted that, as observed by EUIPO, as regards the examination, referred to in paragraphs 40 to 44 above, which the Board of Appeal carried out in respect of the comparison of the goods in Class 9 covered by the mark applied for, other than the goods referred to in paragraph 39 above, with the goods in Class 9 covered by the earlier mark, the applicant has not put forward any specific argument or any explanation as to why the Board of Appeal’s findings are incorrect.
48 For the reasons given, correctly, by the Board of Appeal in paragraphs 18 to 23 of the contested decision, the Board of Appeal’s findings concerning the comparison of the goods referred to in paragraph 47 above must be upheld.
49 As regards ‘games software’, ‘software for playing video, computer and on-line games’, ‘software incorporating computer games’, ‘computer software for video and audio games’ and ‘audio visual games on computer hardware platforms’ in Class 9 covered by the mark applied for, it should be noted that, in accordance with settled case-law, complementary goods or services are those which are closely connected in the sense that one of those goods or services is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for the production of those goods or the provision of those services (see judgment of 9 April 2014, Comsa v OHIM – COMSA (COMSA), T‑144/12, not published, EU:T:2014:197, paragraph 44 and the case-law cited).
50 That implies that complementary goods can be used together, which presupposes that they are intended for the same public (see, to that effect, judgment of 12 July 2012, Hand Held Products v OHIM – Orange Brand Services (DOLPHIN), T‑361/11 not published, EU:T:2012:377, paragraph 48 and case-law cited).
51 In the present case, it should be noted that ‘computers’ in Class 9 covered by the earlier mark make it possible to play ‘games software’ in the same class covered by the mark applied for and are therefore indispensable or important for the use of that software. Furthermore, it must be pointed out that, as the Board of Appeal correctly found in paragraph 17 of the contested decision and as stated in paragraph 35 above, those goods are aimed at the same public, which consists, inter alia, of the general public. Thus, a relationship of functional complementarity may be established between ‘games software’ in Class 9 covered by the mark applied for and ‘computers’ in the same class covered by the earlier mark within the meaning of the case-law cited in paragraphs 49 and 50 above (see, to that effect, judgment of 18 June 2009, LIBRO v OHIM – Causley (LiBRO), T‑418/07, not published, EU:T:2009:208, paragraph 55).
52 Furthermore, it should be noted that, as the Board of Appeal correctly found in paragraph 17 of the contested decision, ‘games software’ covered by the mark applied for and ‘computers’ covered by the earlier mark may share the same distribution channels and be sold by the same undertakings (see, to that effect, judgment of 18 June 2009, LiBRO, T‑418/07, not published, EU:T:2009:208, paragraph 55).
53 It is therefore necessary to endorse the Board of Appeal’s finding, in the contested decision, that ‘games software’ in Class 9, covered by the mark applied for, and ‘computers’ in the same class, covered by the earlier mark, are similar.
54 The applicant’s other arguments are not such as to call into question that conclusion.
55 In the first place, it should be noted that the approach taken by the Board of Appeal, based on the functional link between the goods concerned, is not ‘significantly too broad’, as the applicant submits by referring to the fact that such an approach would lead to the creation of links between completely different goods, for example between, on the one hand, computers, and, on the other, rare metals and the rare earth elements which are necessary for computers to function. In that regard, it should be noted that the existence of complementarity between the goods concerned is one of the relevant factors to be taken into account in the comparison of the goods and that the Board of Appeal took into account other factors, such as the public, distribution channels and manufacturers. Furthermore, it should be noted, as observed by EUIPO, that, contrary to the example given by the applicant, first, the difference in nature between the goods to be compared in the present case is markedly less than the difference between computers, rare metals and rare earth elements and, second, the goods in question in the present case are aimed at the same public.
56 In the second place, as regards the applicant’s argument that ‘video games’ are generally downloaded through very specific distribution channels, it is sufficient to note that, as follows from paragraph 52 above, they may also share the same distribution channels with ‘computers’. In any event, in accordance with the case-law cited in paragraph 37 above, the distribution channels of the goods concerned are only one of a number of factors to be taken into account in the assessment of the similarity of the goods.
57 Accordingly, the Board of Appeal was correct in finding, in the contested decision, that there was a similarity between ‘games software’, ‘software for playing video, computer and on-line games’, ‘software incorporating computer games’, ‘computer software for video and audio games’ and ‘audio visual games on computer hardware platforms’ in Class 9, covered by the mark applied for, and ‘computers’ in the same class, covered by the earlier mark.
– The similarity between the goods in Class 28 covered by the mark applied for and the goods in Class 9 covered by the earlier mark
58 Endorsing the Opposition Division’s findings, the Board of Appeal found that the goods in Class 28 covered by the mark applied for and in respect of which the opposition was upheld, namely ‘apparatus for electronic games other than those adapted for use with television receivers only’, ‘audio visual games on computer hardware platforms’, ‘automatic games apparatus, other than coin-operated and those adapted for use with television receivers only’, ‘electronic game consoles’ and ‘game apparatus for use with television receivers only’ were similar to ‘computers’ in Class 9 covered by the earlier mark. According to the Board of Appeal, those goods covered by the mark applied for include ‘game consoles’ which are essentially designed for playing games. The ‘computers’ covered by the earlier mark could also be used to play games and be equipped with specific components in order to make them suitable for games. Thus, those goods could be aimed at the same public, have the same manufacturers and use the same distribution channels.
59 According to the Board of Appeal, the same reasoning applies to ‘teaching materials in the form of games’, which may also consist of ‘video games’ that can be used on computers. They share the same manufacturers, the same public and the same distribution channels as ‘computers’, which makes them similar.
60 The applicant submits that, for the same arguments as those set out in paragraph 45 above, the goods in Class 28 covered by the mark applied for differ from the goods covered by the earlier mark. It also argues that the fact that apparatus for electronic games may include game consoles does not mean that the English-speaking part of the relevant public, which is well informed of the existence of the marks at issue and the goods which they cover, will be confused, because the mark associated with video games differs from the mark covering computer games.
61 EUIPO observes that the applicant does not dispute that the goods in Class 28 covered by the mark applied for may include game consoles, which are designed primarily to play games, and that computers may also be used to play games, in particular when they are fitted with specific components for that purpose. EUIPO adds that, as such, the goods in question are aimed at the same public, may have the same manufacturers and may be distributed through the same distribution channels.
62 In the present case, it should be noted that most of the goods in Class 28 covered by the mark applied for and in respect of which the opposition was upheld, namely ‘apparatus for electronic games other than those adapted for use with television receivers only’, ‘audio visual games on computer hardware platforms’, ‘automatic games apparatus, other than coin-operated and those adapted for use with television receivers only’, ‘electronic game consoles’ and ‘game apparatus for use with television receivers only’ and ‘computers’ in Class 9, covered by the earlier mark, in particular when fitted with specific adapted components, may have the same use, namely for playing games.
63 Furthermore, as the Board of Appeal stated in paragraph 25 of the contested decision, those goods may share the same manufacturers and have the same distribution channels (see, by analogy, judgment of 19 April 2016, Novomatic v EUIPO – Granini France (HOT JOKER), T‑326/14, not published, EU:T:2016:221, paragraph 54).
64 The same is true of ‘teaching materials in the form of games’, which are also capable, as their wording indicates and as the Board of Appeal correctly found in paragraph 26 of the contested decision, of consisting of ‘video games’ which can be used on computers. As such, that material could, as follows from what is set out in paragraphs 51 and 52 above, be complementary to the ‘computers’ in Class 9 covered by the earlier mark and share with them the same manufacturers as well as the same distribution channels.
65 Contrary to what the applicant submits, the fact that the English-speaking part of the relevant public is informed of the existence of the marks at issue and of the goods which they cover does not, in the light of the relevant factors referred to above, preclude the goods in Class 28 covered by the mark applied for, in respect of which the opposition was upheld, and the ‘computers’ in Class 9 covered by the earlier mark, from being regarded as similar.
66 It is therefore necessary to endorse the Board of Appeal’s finding, in the contested decision, as to the existence of a similarity between the goods in Class 28 covered by the mark applied for and in respect of which the opposition was upheld, and the ‘computers’ in Class 9 covered by the earlier mark.
– The similarity between the services in Class 41 covered by the mark applied for and the goods in Classes 9 and 38 covered by the earlier mark
67 In the first place, the Board of Appeal stated that the applicant specifically disputed the Opposition Division’s findings concerning the refusal of registration in respect of ‘providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment’ and ‘games offered online (on a computer network)’ in Class 41 covered by the mark applied for. In that regard, confirming the Opposition Division’s decision, the Board of Appeal found that those services were similar, at least to a low degree, to ‘computers’ in Class 9 covered by the earlier mark. The Board of Appeal found that those services explicitly indicated their relationship to ‘computers’ in order to achieve their objective of entertainment, providing information or training. Thus, according to the Board of Appeal, there was functional complementarity between those services and ‘computers’. Furthermore, in the same way as ‘video games’, they could be aimed at the same public.
68 In the second place, the Board of Appeal found, as regards ‘games via cellular telephones’, ‘games via cellular telephones or for use on the aforesaid telephones’, ‘providing games by mobile telephone communication’, and ‘provision of games by or for use on cellular telephones’, that they were complementary to ‘telecommunications devices’ in Class 9, covered by the earlier mark. Those services are provided by telephone or are intended to be used on telephones. Furthermore, despite their different nature, they may be aimed at the same public and may have the same distribution channels. Thus, the Board of Appeal found that those services and ‘telecommunication devices’ in Class 9 covered by the earlier mark were similar. According to the Board of Appeal, those services were also similar to ‘communication services’, ‘wireless communication services’, ‘computer communication services’, ‘computer network communication services’ and ‘mobile telephone communication’ services in Class 38 covered by the earlier mark.
69 The applicant submits that ‘providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment’ and ‘games offered online (on a computer network)’ are not similar to the goods in Class 9 covered by the earlier mark, in so far as the former are aimed at entertainment, whereas the latter cover various types of electronic devices such as computers, tablets, telephones, routers, modems and speakers and telecommunication devices. According to the applicant, those services covered by the mark applied for differ from the goods covered by the earlier mark in terms of their nature, purpose, method of use, distribution channels and points of sale. Furthermore, those services and goods are neither complementary nor in competition with each other and are not likely to come from the same undertakings.
70 EUIPO disputes the applicant’s arguments.
71 As a preliminary point, it should be noted, as observed by EUIPO, that the applicant has not put forward specific arguments explaining to what extent the Board of Appeal’s findings relating to the similarity between ‘games via cellular telephones’, ‘games via cellular telephones or for use on the aforesaid telephones’, ‘providing games by mobile telephone communication’, ‘provision of games by or for use on cellular telephones’ and ‘telecommunication apparatus’ in Class 9 or ‘communication services’, ‘wireless communication services’, ‘computer communication services’, ‘computer network communication services’ and ‘mobile telephone communication’ services in Class 38 covered by the earlier mark were incorrect.
72 For the reasons given, correctly, by the Board of Appeal in paragraph 30 of the contested decision, its findings relating to the similarity of those goods and services must be upheld.
73 As regards ‘providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment’ and ‘games offered online (on a computer network)’, it should be noted, as the Board of Appeal found in paragraph 28 of the contested decision, that it is apparent from the wording of those services that they are specifically intended to be used with computers in order to meet their objective, namely training, providing information and entertainment. Thus, there is a similarity between those services and the computers covered by the earlier mark because they are complementary, some being indispensable or important for the use of others.
74 Furthermore, even though they are not the same in nature, ‘providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment’, and ‘games offered online (on a computer network)’, all supplied in the field of computing, may cover the same consumer circles and use the same distribution channels as ‘computers’ in Class 9 covered by the earlier mark.
75 Consequently, the Board of Appeal did not make an error of assessment in finding that ‘providing computer and telecommunications technology training, information on on-line computer games and other on-line entertainment’ and ‘games offered online (on a computer network)’ were similar, at least to a low degree, to ‘computers’ in Class 9 covered by the earlier mark.
76 It follows from the foregoing considerations that the Board of Appeal was correct to find, in the contested decision, that the goods and services in question were, in part, identical and, as to the remainder, similar to varying degrees.
The comparison of the signs at issue
77 As a preliminary point, it should be noted that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. As the Court’s case-law indicates, the visual, aural and conceptual aspects are relevant (see judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
78 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
– The visual comparison of the signs
79 The Board of Appeal stated, in paragraph 33 of the contested decision, that, as regards the earlier mark, the word element ‘honor’, which is the American spelling of the English word ‘honour’, means, according to an online dictionary, ‘high respect’ or ‘great esteem’ or indicates adherence to a code of conduct. However, in the absence of a pronoun, the English-speaking part of the relevant public would not perceive it as a way of addressing a judge, but rather as an abstract name or a virtue that is incapable of categorising goods or services in a descriptive manner. Thus, according to the Board of Appeal, the word element ‘honor’ was distinctive in respect of all the goods and services in Classes 9 and 38 covered by the earlier mark.
80 As regards the mark applied for, the Board of Appeal found, in paragraph 34 of the contested decision, that the word ‘honor’ had the same meaning as that set out in paragraph 79 above and that the element ‘for’ had a lesser impact, since it is a common preposition. According to the Board of Appeal, the expression ‘for honor’, taken as a whole, would be perceived by the English-speaking part of the relevant public as indicating that high respect, great esteem or adherence to a code of conduct were intended and that, as an abstract expression, it was distinctive for the goods and services in Classes 9, 16, 28 and 41 covered by the mark applied for.
81 Furthermore, the Board of Appeal found, in paragraph 35 of the contested decision, that the word elements of the mark applied for were represented in a stylised graphic font, in shades of brown, with staggered glyphs and sharpened glyphs, and that the letters ‘o’ and ‘r’ of the word ‘honor’ were conjoined. It noted that, although striking, the stylisation and depth were decorative and served only to highlight clearly discernible word elements, and that it was apparent from the case-law that, when signs consist of word and figurative elements, the word elements have, in principle, a stronger impact on the consumer. Thus, according to the Board of Appeal, the word element ‘honor’, which was also the largest element in the mark applied for, would have the greatest impact on the consumer.
82 The Board of Appeal from concluded from that, in paragraph 36 of the contested decision, that the signs coincided visually as regards the word element ‘honor’, which was the only element of the earlier mark, was entirely included in the mark applied for, and was distinctive. According to the Board of Appeal, it was also the element on which the consumer would focus his or her attention, given its size, length and position within the mark applied for. The Board of Appeal found that the signs at issue differed in the presence of the word ‘for’ in that mark, and that that word had limited, if any, impact since it is a common preposition, and found that the signs at issue differed in the stylisation of the word elements constituting that mark, that stylisation being purely decorative. The Board of Appeal therefore concluded that there was a high degree of visual similarity between the marks at issue.
83 The applicant submits that the marks at issue differ in appearance, due to both the position of the element ‘honor’ and the number of words forming the marks. Furthermore, it submits that the mark applied for is represented in a stylised font and that, even though it shares the element ‘honor’ with the earlier mark, the element ‘for’ is in first position in the mark applied for.
84 EUIPO disputes the applicant’s arguments.
85 As a preliminary point, it should be noted that the earlier mark is a word mark consisting of the single element ‘honor’, whereas the mark applied for is a figurative mark consisting of two word elements, ‘for’ and ‘honor’, written in capital letters, in a stylised font, in shades of brown, the edges of which are outlined in black in order to create a slight depth effect. The element ‘for’ appears in the upper part of the mark applied for, whereas the common element ‘honor’, the letters ‘o’ and ‘r’ of which are conjoined, is written in a slightly larger size, in the lower part of the mark applied for.
86 In the first place, it should be noted that, as follows from paragraph 78 above, the global assessment of the likelihood of confusion must, as regards the comparison of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components.
87 According to case-law, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38 and the case-law cited).
88 In order to assess the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).
89 In the present case, it should be noted, first, that the applicant does not dispute the Board of Appeal’s findings as to the meaning of the word elements forming the signs at issue and their distinctiveness. In the light of the material in the file, there is no need to call into question those findings.
90 Secondly, it should be noted, as the Board of Appeal found in paragraph 35 of the contested decision, that the attention of the English-speaking part of the relevant public will, first of all, focus on the element ‘honor’ of the mark applied for, on account of it being larger than the element ‘for’, and because of its length and central position in the sign. The element ‘for’, written in a smaller font, occupies a secondary position in that mark. It must therefore be held that, because of the size of the element ‘honor’ in the overall impression of the mark applied for, the Board of Appeal correctly concluded in the contested decision, without being challenged by the applicant, that, visually, that element ‘honor’ was the most prominent element in that mark.
91 In the second place, it should be noted that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
92 Furthermore, it must also be noted that, according to settled case-law, where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have a significant number of letters in the same position in common and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different fonts, in italics or bold, in lower case or upper case, or in colour (see, to that effect, judgment of 9 September 2019, SLL Service v EUIPO – Elfa International (LUMIN8), T‑680/18, not published, EU:T:2019:565, paragraph 32 and the case-law cited).
93 In the present case, it must be noted that the element ‘honor’ constitutes both the earlier mark and the longest word element of the mark applied for. Thus, the marks at issue have five letters in common in the same position. It must therefore be held that they share a significant number of letters within the meaning of the case-law cited in paragraph 92 above.
94 Furthermore, it should be noted, as the Board of Appeal stated in paragraph 35 of the contested decision, that the graphic characteristics of the mark applied for have a limited impact, since the stylisation and depth of the letters forming that mark are directly and intrinsically linked to the word elements ‘for’ and ‘honor’ and merely highlight them (see, to that effect, judgment of 9 February 2017, International Gaming Projects v EUIPO – adp Gauselmann (TRIPLE EVOLUTION), T‑82/16, not published, EU:T:2017:66, paragraph 37). Since the figurative elements of the mark applied for are directly and intrinsically linked to its word elements and are weakly distinguished by their originality, those word elements will be easily and immediately identifiable by the relevant public (see, to that effect, judgment of 9 February 2017, TRIPLE EVOLUTION, T‑82/16, not published, EU:T:2017:66, paragraphs 37 and 38).
95 As regards the applicant’s argument that the word element ‘for’ should, in essence, have been given greater importance than the word element ‘honor’ during the comparison of the signs at issue, in so far as it is the first word forming part of the mark applied for, that argument cannot be accepted.
96 It is true that it follows from the case-law that, in general, consumers attach more importance to the initial part of a sign (see, to that effect, judgment of 12 September 2012, Ertmer v OHIM – Caterpillar (erkat), T‑566/10, not published, EU:T:2012:419, paragraph 36). However, that is not always the case (see, to that effect, judgment of 22 May 2012, Nordmilch v OHIM – Lactimilk (MILRAM), T‑546/10, not published, EU:T:2012:249, paragraph 39 and the case-law cited). The comparison between two signs must be carried out according to the particular circumstances of each case (see judgment of 4 May 2016, Bodegas Williams & Humbert v EUIPO – Central Hisumer (BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN), T‑193/15, not published, EU:T:2016:266, paragraph 54 and the case-law cited).
97 In the present case, first, the position of the word element ‘honor’ under the word element ‘for’ in the mark applied for is attenuated by the fact that the element ‘honor’ takes up more space than the element ‘for’ within that mark. Secondly, those elements both appear in the same colours, with the result that the element ‘for’ is not liable to draw more attention than the element ‘honor’ (see, to that effect, judgment of 9 February 2017, TRIPLE EVOLUTION, T‑82/16, not published, EU:T:2017:66, paragraph 41).
98 It follows that the Board of Appeal was correct to conclude, in the contested decision, that the two marks at issue had a high degree of visual similarity, since they coincided in the word element ‘honor’, which is the only element of the earlier mark and is entirely reproduced in the mark applied for.
– The phonetic comparison of the signs
99 As regards the phonetic comparison of the signs at issue, the Board of Appeal found, in paragraph 37 of the contested decision, that they were similar to a high degree on account of their common word element ‘honor’, which was distinctive and took longer to pronounce than the word ‘for’.
100 The applicant criticises that assessment by arguing that the signs at issue differ in terms of their rhythm, sound and number of syllables, and differ in the word element ‘for’ within the mark applied for, which has no equivalent in the earlier mark and which contributes to the phonetic difference between the signs at issue.
101 EUIPO disputes the applicant’s arguments.
102 In that regard, it must be noted, first, that the signs at issue coincide in the word element ‘honor’, which is the only element of the earlier word mark and the pronunciation of which by the English-speaking part of the relevant public, in the mark applied for, will not be altered by the presence of the word element ‘for’. Secondly, the common element ‘honor’ represents two of the three syllables of the mark applied for.
103 It follows that, although the word element ‘for’ is indeed present only in the mark applied for, that element is not such as to call into question the finding, made in paragraph 37 of the contested decision, that the signs at issue, assessed overall by the English-speaking part of the relevant public, are phonetically similar to a high degree because of their common word element ‘honor’ (see, to that effect, judgment of 9 February 2017, TRIPLE EVOLUTION, T‑82/16, not published, EU:T:2017:66, paragraphs 46 and 47).
– The conceptual comparison of the signs
104 As regards the conceptual comparison of the signs at issue, the Board of Appeal stated, in paragraph 38 of the contested decision, that those signs were associated with the identical meaning of their common element ‘honor’, and that the preposition ‘for’ in the mark applied for merely reinforced and announced the word ‘honor’ which it described. The Board of Appeal therefore found that there was a high degree of conceptual similarity.
105 The applicant disputes that finding. It takes the view that the marks at issue have different meanings, in so far as the earlier mark refers to ‘high respect’ or ‘great esteem’, whereas the mark applied for refers to an act of ‘glory’ and therefore, conceptually, has a different meaning.
106 EUIPO disputes the applicant’s arguments.
107 In the present case, it should be noted, as the Board of Appeal found, that both marks contain the element ‘honor’. It should also be noted that the Board of Appeal was correct to find, in paragraph 33 of the contested decision, without being contradicted by the applicant on that point, that the word ‘honor’, which constitutes the earlier mark and the second element of the mark applied for, is the American spelling of the word ‘honour’ and means, according to an online dictionary, ‘high respect’ or ‘great esteem’ or indicates adherence to a code of conduct, and that the word ‘for’ is a common English preposition. Thus, the expression ‘for honor’, taken as a whole, will be perceived by the English-speaking part of the relevant public, as the Board of Appeal correctly found, as indicating that a high respect, great esteem or adherence to a code of conduct are intended, and the presence of the preposition ‘for’ highlights the element ‘honor’. It follows that the two marks, taken as a whole, have a similar meaning because of their common element ‘honor’.
108 The applicant has not put forward any specific argument to cast doubt on that conclusion. It suggests only that, conceptually, the marks at issue have different meanings, in so far as the earlier mark refers to ‘high respect’ or ‘great esteem’, whereas the mark applied for refers to an act of ‘glory’. That claim is not, however, substantiated by specific evidence capable of calling into question the Board of Appeal’s conclusion that there is a high degree of conceptual similarity between the marks at issue. The applicant has not demonstrated, to what extent, in the present case, the presence of the element ‘for’ in the mark applied for would lead to a different meaning.
109 In the light of all of the above, it must be held that the Board of Appeal was correct in concluding, in the contested decision, that there was a high degree of visual, phonetic and conceptual similarity between the marks at issue.
The distinctiveness of the earlier mark
110 The Board of Appeal found, in paragraph 42 of the contested decision, that the word ‘honor’ which constituted the earlier mark had no meaning in relation to the goods and services covered by that mark and that the distinctiveness of that mark was therefore normal.
111 That assessment which, moreover, is not disputed by the applicant, must be upheld.
The overall assessment of the likelihood of confusion
112 The Board of Appeal found, in paragraphs 43 and 44 of the contested decision, that, in view of the high degree of visual, phonetic and conceptual similarity between the signs at issue, the identity or varying degrees of similarity between the goods and services covered by those signs and the normal degree of inherent distinctiveness of the earlier mark, which was reproduced entirely in the mark applied for, there was, in the present case, a likelihood of confusion on the part of the English-speaking part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
113 The applicant submits that the goods and services covered by the mark applied for differ from the goods and services covered by the earlier mark and that the marks at issue are visually and phonetically similar to an average degree and conceptually similar to a low degree. It adds that the English-speaking part of the relevant public displays a level of attention varying from average to above average and that the earlier mark has an average degree of distinctiveness. According to the applicant, since the similarity of the goods and services is a necessary condition for the application of Article 8(1)(b) of Regulation No 207/2009, any likelihood of confusion must be ruled out.
114 EUIPO disputes the applicant’s arguments.
115 In that regard, it should be noted that a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services covered by these marks. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C- 39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
116 In the present case, it should be noted that, in view of the fact that the goods and services in question are identical or are similar to varying degrees (see paragraph 76 above), the high degree of visual, phonetic and conceptual similarity between the marks at issue (see paragraph 109 above), and the average degree of inherent distinctiveness of the earlier mark (see paragraphs 110 and 111 above), the Board of Appeal correctly found, in the contested decision, that, in accordance with the case-law cited in paragraph 115 above, there was a likelihood of confusion that the English-speaking part of the relevant public might think that the goods and services in question came from the same undertaking or from economically linked undertakings, in spite of the relevant public’s higher than average level of attention in respect of some of those goods and services. Since consumers have an imperfect recollection of trade marks, it is very likely that, in view of the presence and position of the element ‘honor’ common to the marks at issue, the English-speaking part of the relevant public, even if it displays a high level of attention when purchasing some of the goods and services in question covered by those marks, might be led to believe that those goods and services come from the same undertaking or from economically linked undertakings.
117 It follows from the foregoing that the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected, with the result that the present action must be dismissed in its entirety.
Costs
118 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Ubisoft Entertainment to pay the costs.
Tomljenović | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 2 March 2022.
E. Coulon | | M. van der Woude |