JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
27 September 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark NorthSeaGrid — Earlier EU word and figurative marks nationalgrid — 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‑70/17,
TenneT Holding BV, established in Arnhem (Netherlands), represented by K. Limperg, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ngrid Intellectual Property Ltd, established in London (United Kingdom), represented by F. Traub, Solicitor,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 November 2016 (Case R 1607/2015-5) relating to opposition proceedings between Ngrid Intellectual Property and TenneT Holding,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas (Rapporteur) and A. Marcoulli, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 31 January 2017,
having regard to the response of EUIPO lodged at the Court Registry on 7 April 2017,
having regard to the response of the intervener lodged at the Court Registry on 7 April 2017,
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 22 December 2017 and 5 January 2018,
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
I. Background to the dispute
1 The applicant, TenneT Holding BV, is the parent company of TenneT TSO BV. The latter is a transmission system operator responsible for the transport and distribution of electricity and the operation of high-tension networks. It is designated by law as the national electricity transmission system operator of the Netherlands.
2 The intervener, Ngrid Intellectual Property Ltd, is a wholly owned subsidiary of National Grid Commercial Holdings Ltd, which is itself owned by the holding company National Grid plc. The latter is, among other things, owner of the electricity transmission system in the United Kingdom.
3 On 15 October 2013, the applicant 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)).
4 Registration as a mark was sought for the following figurative sign:
5 The goods and services in respect of which registration was sought are in Classes 4, 35 and 37 to 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 4: ‘Electrical energy’;
– Class 35: ‘Administrative management of transport and distribution of electricity; negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’;
– Class 37: ‘Construction and repair; installation services; all of the aforesaid services in particular relating to networks for transport and distribution of electricity’;
– Class 38: ‘Telecommunication services, in particular related to transport and distribution of electricity’;
– Class 39: ‘Transport, distribution and storage, in particular of electricity’.
6 The EU trade mark application was published in Community Trade Marks Bulletin No 1/2014 of 3 January 2014.
7 On 24 February 2014, the intervener 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 all the goods and services referred to in paragraph 5 above.
8 The opposition was based on the following earlier marks:
– the EU figurative mark registered on 16 January 2009 under No 4533089 for goods and services in Classes 1, 35 and 37 to 39, reproduced below:
– the EU figurative mark registered on 28 January 2009 under No 4481065 for goods and services in Classes 1, 35 and 37 to 39, reproduced below:
– the EU word mark nationalgrid, registered on 16 January 2009 under No 4807624 for goods and services in Classes 1, 35 and 37 to 39;
– the EU word mark ngrid, registered on 23 October 2007 under No 4933073 for goods and services in Classes 1, 35 and 37 to 39;
– the EU word mark BlueGrid, registered on 7 October 2009 under No 6741649 for goods and services in Classes 7, 9, 35, 37 and 39;
– the EU figurative mark registered on 5 February 2009 under No 6918461 for goods and services in Classes 7, 9, 35, 37 and 39, reproduced below:
– the EU word mark GreenGrid, registered on 20 April 2012 under No 6741656 for goods and services in Classes 7, 9, 35, 37 and 39;
– the EU figurative mark registered on 21 April 2012 under No 6928899 for goods and services in Classes 7, 9, 35, 37 and 39, reproduced below:
– the EU word mark NATURAL GRID, registered on 11 January 2013 under No 11124898 for goods and services in Classes 7, 9, 35, 37 and 39;
– the UK word mark NATIONAL GRID, registered on 9 June 2005 under No 2393930 for goods and services in Classes 1, 35 and 37 to 39;
– the UK word mark SUPERGRID, registered on 23 December 2008 under No 2505433 for goods and services in Classes 9, 37, 39 and 42;
– the UK figurative mark registered on 23 December 2008 under No 2505453 for goods and services in Classes 9, 37, 39 and 42, reproduced below:
– the non-registered figurative UK mark covering services corresponding to the following description: ‘Electricity; administrative management of transmission and distribution of electricity; wholesale of electricity; construction and repair of electricity transmission cables; installation services in relation to electricity transmission cables; transport, distribution and storage of electricity’ and reproduced below:
9 The grounds for opposition based on EU trade marks No 4533089, No 4481065 and No 4807624 were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001). The intervener relied on a reputation acquired by those marks in the UK for all of the goods and services covered by them.
10 The grounds for opposition based on UK trade mark No 2393930 were those referred to in Article 8(1)(a) of Regulation No 207/2009 (now Article 8(1)(a) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009. The intervener relied on a reputation acquired by that mark in the UK for all of the goods and services covered by it.
11 The ground for opposition based on EU trade marks No 4933073, No 6741649, No 6918461, No 6741656, No 6928899 and No 11124898 and on UK trade marks No 2505433 and No 2505453 was that referred to in Article 8(1)(b) of Regulation No 207/2009.
12 The ground for opposition based on the non-registered UK figurative mark was that referred to in Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) and the common-law action for passing-off. The intervener relies on a reputation acquired in the United Kingdom.
13 On 17 June 2015, the Opposition Division rejected the opposition in its entirety.
14 On 10 August 2015, the intervener 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 Opposition Division’s decision.
15 By decision of 21 November 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO, in the first place, found that the sign NATIONAL GRID described an electricity network that had ‘national’ character, that is, that served a nation as a whole as opposed to one part. It added that that sign had inherently weak distinctiveness in English. However, it considered that the intervener enjoyed a reputation in the United Kingdom among its business customers in the UK and among a number of its equivalent transmission system operators in the rest of Europe (Denmark, Germany, France, Austria and Norway), with some awareness among the general public in the United Kingdom. By contrast, it stated that there was no convincing evidence that the mark NATIONAL GRID was more generally known throughout the European Union.
16 In the second place, and in line with its assessments of the intervener’s reputation, the Board of Appeal explained, first, that the relevant public for the purposes of the application of Article 8(1)(b) of Regulation No 207/2009 included the applicant’s business customers in the United Kingdom, its equivalent transmission system operators in the rest of Europe and the general public in the United Kingdom. It added that the relevant public also included the general public in all the Member States, the majority of which would see no descriptive meaning in the word ‘grid’. Next, regarding Article 8(5) of Regulation No 207/2009, the Board of Appeal took the view that the scope of the intervener’s action based on this provision was limited to the goods and services for which a reputation existed under the sign NATIONAL GRID, and that that reputation extended to consumers in the United Kingdom and businesses involved in the distribution and transmission of electricity in the other Member States. It stated that, for that group, the word ‘grid’ was descriptive. Lastly, the Board of Appeal considered that, for the purposes of Article 8(4) of Regulation No 207/2009 and the tort of passing-off, the UK population in respect of which the mark NATIONAL GRID enjoyed a reputation was composed of UK businesses and, to a certain extent, the general public in the United Kingdom.
17 In the third place, the Board of Appeal assessed the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, in particular concerning, first, the earlier EU figurative marks No 4533089 and No 4481065 and, second, the mark NATIONAL GRID. In that regard, it noted, inter alia, that the goods and services designated by the mark applied for and referred to in paragraph 5 above were directed at the general public and at business users, with the exception of the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35, which were directed solely at business users. Furthermore, it considered that there was no likelihood of confusion on the part of consumers who understood English and business consumers in the sector, who would understand the meaning of all the words making up the signs at issue. By contrast, it decided that there was a likelihood of confusion on the part of the average non-English-speaking consumers, who would understand the word ‘national’ and the expression ‘north sea’ but would not understand the word ‘grid’. It clarified that this likelihood of confusion concerned the goods in Class 4, the services in Classes 37 to 39 and the services ‘administrative management of transport and distribution of electricity’ in Class 35, designated by the mark applied for. It added that the other earlier marks relied on by the intervener, namely EU trade marks No 4933073, No 6741649, No 6918461, No 6741656, No 6928899 and No 11124898, were less similar to the mark applied for than the earlier figurative marks No 4533089 and No 4481065 and the mark NATIONAL GRID. It concluded from this that, in respect of those other marks, there would not be a likelihood of confusion as regards the services in addition to those in respect of which a likelihood of confusion had already been identified.
18 In the fourth place, the Board of Appeal rejected the opposition based on Article 8(5) of Regulation No 207/2009 on the ground that it had not been proven that use of the mark applied for would take unfair advantage of, or be detrimental to, the earlier trade mark’s distinctive character or repute.
19 In the fifth place, the Board of Appeal found that Article 8(1)(a) of Regulation No 207/2009 was not applicable on the ground that the signs at issue were not identical. It added that applying Article 8(4) of Regulation No 207/2009 would be of no additional benefit to the intervener as compared with applying Article 8(1)(b) of that regulation.
20 As a result, the Board of Appeal, in the first place, annulled the decision of the Opposition Division and refused registration of the mark applied for in respect of the goods and services in Classes 4 and 37 to 39 referred to in paragraph 5 above and for the services ‘administrative management of transport and distribution of electricity’ in Class 35. By contrast, in the second place, it decided that the mark applied for could be registered for the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35.
II. Forms of order sought
21 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
22 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
23 In support of its action, the applicant raises two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation No 207/2009, and the second alleging infringement of Article 8(5) of that regulation.
24 It is necessary, first of all, to examine the scope of the applicant’s action, then the sole plea raised by the intervener, alleging infringement of Article 8(5) of Regulation No 207/2009, before analysing the substance of the case.
A. The scope of the action
(a) The scope of the request for annulment of the contested decision
25 By its first head of claim, the applicant has asked the Court to annul the contested decision, without giving further clarification.
26 However, in reply to the questions put by the Court by way of measures of organisation of procedure, the applicant stated that its action was not directed against the contested decision in so far as the latter had decided that the mark applied for could be registered for the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35 designated by the mark applied for.
27 Accordingly, it must be held that, in the present case, the applicant asks the Court to annul only paragraph 1 of the operative part of the contested decision, in which the Board of Appeal refused registration of the mark applied for in respect of the goods and services in Classes 4 and 37 to 39, referred to in paragraph 5 above, and the services ‘administrative management of transport and distribution of electricity’ in Class 35. By contrast, the applicant does not ask the Court to annul paragraph 2 of the operative part of the contested decision, in which the Board of Appeal held that the mark applied for could be registered in respect of the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35.
(b) The second plea raised by the applicant, alleging infringement of Article 8(5) of Regulation No 207/2009
28 In support of its second plea, the applicant claims that the Board of Appeal erred in law by finding that the earlier figurative marks and the mark NATIONAL GRID were similar to the mark applied for within the meaning of Article 8(5) of Regulation No 207/2009.
29 EUIPO contends, in its response, that this plea must be held to be inadmissible on the ground that, in essence, the Board of Appeal, in the contested decision, rejected the opposition brought by the intervener on the basis of Article 8(5) of Regulation No 207/2009 and, therefore, decided in favour of the applicant in that regard.
30 In reply to the questions put by the Court by way of measures of organisation of procedure, the applicant conceded that, as EUIPO stated, it was not affected by the rejection of the opposition brought by the intervener on the basis of Article 8(5) of Regulation No 207/2009 and that, as a result, it was not necessary for an examination of the infringement of Article 8(5) of that regulation to be included in the present action.
31 In those circumstances, the view must be taken that the applicant has withdrawn its second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009.
B. The sole plea raised by the intervener, alleging infringement of Article 8(5) of Regulation No 207/2009
32 The intervener submits in its response, in essence, that the Board of Appeal erred in finding that the registration of the mark applied for would not be contrary to Article 8(5) of Regulation No 207/2009. The intervener claims that the mark applied for, if it were registered, would take unfair advantage of, and be detrimental to, the distinctive character and the repute of the earlier marks.
33 In that regard, it is important to note that the intervener’s argument must be understood as an independent plea in law under Article 173(3) of the Rules of Procedure of the General Court. In addition, in the contested decision the Board of Appeal analysed and rejected the plea relied on by the intervener and based on the contention that registration of the mark applied for would be contrary to Article 8(5) of Regulation No 207/2009.
34 In its response the intervener did not seek the annulment or alteration of the contested decision. On the contrary, it contended that the Court should dismiss the action brought by the applicant.
35 Therefore, the plea relied on by the intervener is incompatible with the form of order which it is seeking and, since that plea does not support its form of order, it must be rejected (see, to that effect, judgments of 12 June 2007, Budějovický Budvar and Anheuser-Busch v OHIM (BUDWEISER and AB GENUINE Budweiser KING OF BEERS), T‑57/04 and T‑71/04, EU:T:2007:168, paragraph 220; of 21 October 2008, Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 34; and of 29 January 2013, Fon Wireless v OHIM — nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 33).
C. Substance
1. Preliminary observations
36 It should be noted that, in the contested decision, the Board of Appeal found it appropriate, in the first place, to compare the mark applied for with the following earlier marks: figurative marks No 4533089 and No 4481065 and the mark NATIONAL GRID. In the second place, the Board of Appeal found that the conclusion which it had reached on the basis of those three earlier marks could be applied to the other earlier EU marks relied on by the intervener.
37 In that respect, first, regarding the earlier figurative mark No 4481065, filed on 9 June 2005, it must be noted that that mark was not renewed and therefore expired on 9 June 2015. The contested decision, however, was adopted on 21 November 2016. It follows that, in the contested decision, the Board of Appeal was wrong to take the view that the mark applied for should be compared with mark No 4481065.
38 Second, it is important to point out that the contested decision refers, without further qualification, to the mark NATIONAL GRID, which might be a reference to the earlier UK word mark No 2393930 on which the intervener had based its opposition. However, the Opposition Division found that proof of the existence of that mark had not been provided and that the opposition had to be rejected in so far as it was based on that mark. Moreover, the intervener did not contest the Opposition Division’s assessment before the Board of Appeal. As a result, the earlier UK word mark No 2393930 cannot be considered to be the mark NATIONAL GRID referred to in the contested decision.
39 Third, still with regard to the mark NATIONAL GRID, it must be noted that the EU word mark nationalgrid No 4807624, which was included among the EU marks relied on by the intervener in support of its opposition, is not referred to in the grounds for the contested decision. However, it should be noted that there is a closeness between the mark referred to as NATIONAL GRID and the earlier EU word mark nationalgrid No 4807624, linked to the presence of the words ‘national’ and grid’ in each of them. In addition, EUIPO explained, in its response, that the Board of Appeal had compared the mark applied for with the EU word mark nationalgrid No 4807624. In reply to a written question from the Court, the applicant stated that it agreed that it was likely that the mark NATIONAL GRID referred to in paragraph 42 of the contested decision corresponded to the EU word mark nationalgrid No 4807624.
40 In any event, given the closeness of the mark referred to as NATIONAL GRID and the mark nationalgrid, it should be noted that the Board of Appeal’s omission, referred to in paragraph 39 above, is, in the present case, irrelevant to the conclusion regarding the likelihood of confusion. The assessment of a likelihood of confusion between the mark applied for and the word mark nationalgrid would not give rise to a conclusion different from that resulting from the assessment of such likelihood between the mark applied for and the mark referred to as NATIONAL GRID. In that regard, it is important to note that the lack of a space between the words ‘national’ and ‘grid’ in the word mark nationalgrid would not prevent either the English-speaking or the non-English-speaking relevant public from identifying and understanding the word ‘national’ in that mark and from perceiving the word mark nationalgrid in the same way as the mark referred to as NATIONAL GRID.
41 For those reasons, the Court will assess whether the Board of Appeal was right to find that there was a likelihood of confusion between, on the one hand, the mark applied for and, on the other hand, figurative mark No 4533089 (‘the earlier figurative mark’) and EU word mark nationalgrid No 4807624 (‘the earlier word mark’) (together, ‘the earlier marks’).
42 In addition, there is no reason to call into question the Board of Appeal’s finding, which, moreover, is not contested by the applicant, that the goods and services designated by the mark applied for are identical to the goods covered by the earlier marks.
2. The relevant territory and the relevant public, and the latter’s level of attention
43 In the first place, it should be noted that, inasmuch as the earlier marks on which the intervener based its claim are EU trademarks, the Board of Appeal was correct to find that the relevant territory in the present case was the territory of the European Union.
44 Where the protection of the earlier trade mark extends to the whole 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).
45 In the second place, it is important to note that, according to the case-law, in the overall 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 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
46 In the contested decision, the Board of Appeal found that the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35 and designated by the mark applied for, constituted, by their very nature, services intended for commercial undertakings and not for the general public. By contrast, the Board of Appeal took the view that the other goods and services designated by the mark applied for were directed both at the general public and at business users.
47 The applicant claims that the Board of Appeal erred in finding that non-professional customers formed part of the relevant public.
48 In that regard, first, it is clear that ‘electrical energy’ in Class 4 is consumed both by the general public and by professionals, as the Board of Appeal noted. Second, the Board of Appeal did not make an error of assessment, with regard to their wording, in finding that the services in Classes 38 and 39 designated by the mark applied for did not exclude the general public. ‘Telecommunication’ services in Class 38 designated by the mark applied for are not limited to telecommunications in the context of transport and distribution of electricity. In addition, the services ‘transport, distribution and storage’ in Class 39 designated by the mark applied for are not limited to transport, distribution and storage of electricity. Third, as regards the services ‘administrative management of transport and distribution of electricity’ in Class 35, the Board of Appeal was correct to note that any consumer, whether professional or non-professional, could benefit from the distribution and transport of electricity. Fourth, as regards the ‘construction and repair’ services and ‘installation services’ in Class 37, it is important to note that, with regard to the wording of the trade mark application, they do not concern only networks for the transport and distribution of electricity.
49 Those assessments are not called into question by the arguments put forward by the applicant.
50 First, it should be noted that, in the context of opposition proceedings, it is the description of the goods covered by the marks at issue and not the goods actually marketed under those marks that must be taken into account (see, to that effect, judgment of 7 April 2016, Industrias Tomás Morcillo v EUIPO — Aucar Trailer (Polycart A Whole Cart Full of Benefits), T‑613/14, not published, EU:T:2016:198, paragraph 27 and the case-law cited). Since the specific circumstances in which the goods or services in question are marketed may vary over time and depending on the wishes of the applicant, those circumstances cannot be taken into account for the purposes of the prospective analysis of the likelihood of confusion. That examination must, therefore, as regards the goods or services for which registration of a trade mark is applied for, be performed in the light of the wording of the list of goods or services for which registration is applied for as it appears in the registration application or, where appropriate, as delimited in the course of the proceedings (order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 57).
51 As explained in paragraph 48 above, it is not apparent from the description of the goods and services designated by the mark applied for that those goods and services are intended for professionals only.
52 Accordingly, the applicant cannot validly rely on the fact that it does not provide its goods and services to the general public and that its circle of clients consists solely of professionals.
53 Second, given that the list of goods and services designated by the mark applied for is not worded in such a way as to restrict the relevant public or the destination of the goods and services in question, the applicant is not justified in claiming that the general public is not the ‘average consumer’ of those goods and services. Nor is the applicant justified in claiming, and indeed does not demonstrate, that the general public forms a negligible part of the relevant public.
54 Third, the applicant’s argument that the parties never contested, before EUIPO, the fact that the average consumer of the goods and services in respect of which registration is requested consisted of the average professional client, must be rejected.
55 It is important to note that during the administrative procedure, in its observations of 15 August 2014, the intervener submitted that the goods and services in question were directed at professional consumers in the energy sector and the general public. Moreover, it must be noted that, in its decision, the Opposition Division also took the view that the relevant public consisted of professional consumers in the energy sector as well as the general public.
56 In those circumstances, the applicant’s argument has no basis in fact and the latter had the opportunity during the administrative procedure to claim, inter alia, that the goods and services designated by the mark applied for, with the exception of the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35, were not directed at the general public.
57 As a result, it must be held that the Board of Appeal was right to find that the goods and services designated by the mark applied for, with the exception of the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35, were directed at both the general public and professionals.
58 Lastly, it should be noted that, as was held in paragraph 27 above, the applicant is not asking the Court to annul the contested decision in so far as it authorised registration of the mark for the services ‘negotiation and settlement of commercial transactions for third parties relating to the delivery of electricity’ in Class 35. Since all the other goods and services designated by the mark applied for were directed both at the general public and at businesses, the public with the lower level of attention must be taken into account, namely the general public (judgments of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21; of 29 April 2015, Chair Entertainment Group v OHIM — Libelle (SHADOW COMPLEX), T‑717/13, not published, EU:T:2015:242, paragraph 27; and of 30 September 2016, Flowil International Lighting v EUIPO — Lorimod Prod Com (Silvania Food), T‑430/15, not published, EU:T:2016:590, paragraph 19).
59 Accordingly, it must be held that the likelihood of confusion must be examined by reference to the general public. In addition, the Board of Appeal correctly noted that, given the sophisticated nature of the goods and services in question, the general public’s level of attention was likely to be slightly higher than average.
3. Comparison of the signs at issue
60 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of 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 assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
61 The assessment of the similarity between two marks involves more than taking just one component of a composite trade mark and comparing it with another mark. Instead, 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 may 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). That may be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
(a) The distinctive and dominant elements of the signs at issue
62 The applicant claims that the distinctive and dominant element of the signs at issue is the word ‘northsea’, in the case of the mark applied for, and the word ‘national’, in the case of the earlier marks.
63 According to the applicant, in the first place, the justification put forward by the Board of Appeal for departing from the principle that the consumer normally attaches more importance to the initial part of the words is insufficient. The only justification, it seems, is the presence of the common word ‘grid’, which is highlighted in each of the signs at issue. However, that element is not represented in an identical way in both those signs.
64 In the second place, visually, it is the element ‘northsea’ which is highlighted in the mark applied for. That element is represented in bold letters, placed in the centre of the mark applied for and depicted in a colour different from the other elements of that mark. Accordingly, in the view of the applicant, it is clear that, visually, the element ‘northsea’ is the distinctive and dominant element of the mark applied for. By comparison, in the earlier figurative mark, the element ‘grid’ is highlighted by the use of bold type.
65 In the third place, conceptually, it is also the element ‘northsea’ which is the distinctive and dominant element of the mark applied for. In that regard, the applicant considers that the Board of Appeal’s finding that the distinctive character of the words ‘national’ and ‘northsea’ is tempered by the descriptive meaning of those words is difficult to understand, since those words have no descriptive meaning in connection with the goods and services concerned.
66 In that regard, it must be noted that, for the purposes of assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of other components. In addition, and as an incidental point, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (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).
67 With regard to assessing whether an element of a mark is distinctive, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of the element in question and to ask whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
68 It is settled case-law that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods or services in question by citing the name rather than describing the figurative element of the mark (judgment of 21 January 2015, Schwerdt v OHIM — Iberamigo (cat&clean), T‑587/13, not published, EU:T:2015:37, paragraph 24 and the case-law cited).
69 It must also be noted that, although as a general rule the public will not consider a descriptive element forming part of a mark to be the distinctive and dominant element in the overall impression produced by that mark, the fact remains that the low level of distinctiveness of an element of a mark does not necessarily mean, when its size or its position in the sign is taken into account, that that element is negligible in the overall impression produced by that mark (judgment of 8 February 2011, Lan Airlines v OHIM — Air Nostrum (LINEAS AEREAS DEL MEDITERRANEO LAM), T‑194/09, EU:T:2011:34, paragraph 30).
70 It is in the light of those considerations that it is necessary to assess whether there are any distinctive and dominant components in the mark applied for and in the earlier marks.
(1) The mark applied for
71 It should be noted that the mark applied for consists of the word element ‘northseagrid’ and a figurative element.
72 As regards the figurative element of the mark applied for, it represents a kind of relief map, a seabed or the surface of the sea, green in colour, strewn with some small blue dots. That element is situated to the left of the mark applied for and also above the three first letters of the word element ‘northseagrid’.
73 In that regard, the Board of Appeal did not commit an error of assessment in noting that that figurative element was not lacking in imagination and that it had inherent distinctiveness. Furthermore, as the Board of Appeal stated, that figurative element does not dominate the mark at issue. However, it must be noted that, given its position in the sign, its size, its colour and the fact that it is not lacking in imagination, that figurative element cannot be characterised as negligible.
74 As regards the word element of the mark applied for, in the first place, it should be noted that the element ‘northsea’ is represented in bold and in a colour different from that of the element ‘grid’. Thus, the graphic representation of the elements that comprise the word element of the mark applied for suggests that the element ‘northsea’ and the element ‘grid’ can be separated.
75 In the second place, and as the Board of Appeal states, it should be noted, first, that, in English, the word ‘grid’ may refer to, inter alia, an electrical distribution system serving a large area, in particular by means of high-tension lines.
76 Furthermore, there is no reason to call into question the Board of Appeal’s assessment, which is, moreover, confirmed by the applicant, that, in view of its meaning, the word ‘grid’ will be descriptive for the English-speaking part of the relevant public.
77 The Board of Appeal also correctly considered that the word ‘grid’ did not form part of basic English, that it would be devoid of meaning for consumers who did not understand English and that, therefore, it would be distinctive for that part of the relevant public.
78 Second, the Board of Appeal rightly noted that the expression ‘north sea’ referred, in English, to ‘an arm of the Atlantic Ocean lying between the mainland of Europe and the east coast of Britain’.
79 In addition, as the Board of Appeal found, the element ‘northsea’ will be understood by the English-speaking public and it may also have meaning for the non-English-speaking public in some Member States.
80 First, the Board of Appeal was correct to find that the words ‘north’ and ‘sea’ belonged to basic English. Second, the Board of Appeal did not make an error of assessment in finding that the term ‘northsea’ would be known by a not insignificant part of the relevant public, given the geographical significance, size and importance of that location as a provider of gas and oil as well as for purposes of fishing. Third, and as the Board of Appeal noted, the existence of equivalent terms or close equivalents in other languages such as German (Nordsee), Dutch (Noordzee), Danish (Nordsøen) and Swedish (Nordsjön) will facilitate the understanding of a significant part of the general public in the European Union. The existence of equivalent terms in several languages of the European Union is, indeed, recognised by the applicant in its application.
81 In addition, in the contested decision, the Board of Appeal considered that the element ‘northsea’ had a descriptive meaning and that its distinguishing effect was mitigated.
82 In this regard, it should be noted that, according to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraphs 24 and 25 and the case-law cited).
83 It is clear from the case-law that terms are descriptive where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with those goods or services in the mind of the relevant class of persons (see, to that effect, judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 48 and the case-law cited).
84 However, geographical names which are unknown to the relevant class of persons — or at least unknown as the designation of a geographical location — or names in respect of which, because of the type of place which they designate, such persons are unlikely to believe that the category of goods or services concerned originates there or was conceived of there, are not descriptive (see judgment of 15 January 2015, MONACO, T‑197/13, EU:T:2015:16, paragraph 49 and the case-law cited).
85 Lastly, a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 15 January 2015, MONACO, T‑197/13, EU:T:2015:16, paragraph 50 and the case-law cited).
86 It is on this basis that the Court has already held that words referring to a geographical place were not descriptive of the goods or services in question (see, to that effect, judgments of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraph 29; of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 51; and of 19 April 2016, 100% Capri Italia v EUIPO — IN.PRO.DI (100% Capri), T‑198/14, not published, EU:T:2016:222, paragraph 77).
87 In the present case, first, it is important to note that, as regards the English-speaking public, the element ‘northsea’ will be associated with the noun ‘grid’ which describes, essentially, a network distributing electricity, particularly by means of high-tension lines.
88 Accordingly, it must be found that the English-speaking part of the relevant public, which will understand the two parts of the word element of the mark applied for, will immediately perceive, without further thought, that the ‘electrical energy’ in Class 4 and the services in Classes 35 and 37 to 39 designated by the mark applied for are provided by a network that runs through the North Sea.
89 It follows that the element ‘northsea’ of the mark applied for will be perceived by the relevant English-speaking public as a descriptive and weakly distinctive element within that mark.
90 Second, as regards the relevant non-English-speaking public, it should be noted, first, that the element ‘northsea’ will be associated with the element ‘grid’, which is meaningless for that part of the relevant public. However, as is clear from the case-law referred to in paragraphs 83 to 86 above, the mere fact that a word has geographical significance does not establish that that word is descriptive for the general public of the European Union.
91 Next, the explanations provided by the Board of Appeal, according to which the North Sea is known to provide gas and oil as well as for purposes of fishing, do not demonstrate that the North Sea is reputed for the goods and services designated by the mark applied for and that it is currently associated, in the mind of the general public of the European Union, with those goods and services (see, to that effect, judgment of 14 September 2017, Aldi Einkauf v EUIPO — Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 61).
92 Lastly, it should be noted that the element ‘northsea’ does not refer to a specific territory but a marine area or maritime space. Thus, the Board of Appeal did not explain, nor a fortiori demonstrate, how that element was sufficiently directly and specifically related to the goods and services designated by the mark applied for that the non-English-speaking general public of the EU would immediately perceive, without further thought, that word as being a description of the goods or services or of one of their characteristics.
93 As a result, first, it must be noted that, for the part of the relevant public which is English speaking, each of the words forming the word element ‘northseagrid’ will have a descriptive meaning. It follows that, for that category of the relevant public, neither of the two elements making up the word element of the mark applied for will have greater distinctiveness than the other.
94 Second, as regards the part of the relevant public which is not English speaking but which understands basic English, it must be considered that the element ‘northsea’ will have a normal distinctive character equivalent to the element ‘grid’.
95 In the third place, it should be noted that, in the mark applied for, the element ‘northsea’ is represented in bold and in a different colour from that of the element ‘grid’. Unlike the element ‘grid’, which is represented in light green, the element ‘northsea’ is represented in dark blue and in bold type. The colours used in the mark applied for therefore create a contrast which contributes to highlighting the element ‘northsea’.
96 In that regard, it should be added that it is true that the element ‘grid’ features in a lighter colour than that of the element ‘northsea’. However, contrary to the assessment carried out by the Board of Appeal, that lighter colour does not allow the inference that it is highlighted in the mark applied for. That fact allows the inference only that the word element of the mark applied for can be separated into two parts, namely ‘northsea’ and ‘grid’.
97 Moreover, the other characteristics of the mark applied for confirm that it is the element ‘northsea’ that is highlighted in the mark applied for.
98 It must be noted that the typeface of the element ‘northsea’ is of a size similar to that used for the element ‘grid’, and the element ‘northsea’ is longer than the element ‘grid’.
99 In addition, it is important to note that the element ‘northsea’ features in the centre of the mark applied for and is the first part of the word element of which it forms part. According to case-law, the consumer generally pays greater attention to the beginning of a mark than to the end, the first part of a mark normally having greater visual and phonetic impact on the consumer than the final part (see, to that effect, judgments of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51, and of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 62 and the case-law cited).
100 It follows that, for the English-speaking public, for whom the elements ‘northsea’ and ‘grid’ will both be descriptive, the element ‘northsea’ will have a greater impact than the element ‘grid’. However, the element ‘grid’ will nonetheless not be negligible.
101 As regards the non-English-speaking public, it is important to bear in mind that the element ‘northsea’ has normal distinctiveness. In addition, the element ‘northsea’ is highlighted in the mark applied for given its typography and the colours used in the mark applied for, its position and its size. However, although the element ‘northsea’ has a greater impact in the mark applied for than the element ‘grid’, the latter will nonetheless not be negligible.
102 In the light of the foregoing, it must be held that the overall impression conveyed to the relevant English-speaking and non-English-speaking public by the mark applied for is not dominated by one of its components. In addition, none of the elements comprising the mark applied for is negligible for the English-speaking public or the non-English-speaking public.
103 The applicant’s argument that the element ‘northsea’ is dominant in the mark applied for must therefore be rejected.
104 As a result, it is appropriate to compare the signs at issue in the light of the mark applied for taken as a whole, while taking into account the respective weight of each of its elements.
(2) The earlier figurative mark and the earlier word mark
105 In the first place, it should be noted that the graphic representation of the word element comprising the earlier figurative mark suggests that the element ‘national’ and the element ‘grid’ can be separated.
106 In the second place, for the reasons set out in paragraph 75 above, the word ‘grid’ will be descriptive for the English-speaking part of the relevant public and it will be clearly distinctive for the relevant non-English-speaking public.
107 Moreover, the word ‘national’ in the earlier marks means ‘relating to or maintained by a nation or a country’. As the applicant acknowledges, that word will be recognised and understood in numerous Member States given the existence of an identical or similar word in various languages of the European Union.
108 Lastly, in the contested decision, the Board of Appeal considered that the word ‘national’ had a descriptive meaning.
109 In that regard, it must be noted that the word ‘national’, when associated with the element ‘grid’, which is itself descriptive, may in fact be understood as an element descriptive of the geographical area or extent of the production or provision of the goods and services covered by the earlier marks. The relevant public will immediately realise that the goods and services covered by the earlier marks have been provided by means of a network, national in scope, which serves a whole country and not one part.
110 However, the element ‘national’ is not obviously descriptive of the goods and services in question if that element is considered in isolation or associated with an element that has no meaning for the relevant public. In any event, it should be noted that, in the light of its normal and widespread use, the word ‘national’ must be considered banal. That word is, therefore, weakly distinctive, or even devoid of any distinctive character, in the earlier marks.
111 In the third place, as regards the earlier word mark, it is important to note that, for the English-speaking public, the two word elements which make up that mark are descriptive. In those circumstances, the element ‘national’, even though it is placed at the beginning of the sign and is longer than the element ‘grid’, will have the same impact on the perception of the sign by the relevant public as the element ‘grid’.
112 For the part of the relevant public which is not English speaking, the element ‘grid’ will be distinctive since it will not be understood. By contrast, the element ‘national’ is weakly distinctive, or even devoid of any distinctive character. Thus, the element ‘national’ will have less impact than the element ‘grid’. However, the element ‘national’ will nonetheless not be disregarded, on account of its position in the sign and its length compared with the element ‘grid’.
113 In the fourth place, as regards the earlier figurative mark, it must be noted that it consists solely of the stylised word element ‘nationalgrid’.
114 It should be noted in this connection that, in that mark, the element ‘national’ is written in standard blue letters and the element ‘grid’ is written in darker blue bold typeface. Thus, although the element ‘national’ is at the beginning of the earlier figurative mark, the element ‘grid’, owing to the typography and colours used, is highlighted in that mark.
115 It follows that, for the English-speaking public, for whom the two elements comprising the earlier figurative mark are descriptive, the element ‘grid’ will have a greater impact than the element ‘national’. However, the element ‘national’, which features at the beginning of that mark and is longer than the element ‘grid’ will nonetheless not be disregarded by that public.
116 As regards the non-English-speaking public, for whom the element ‘grid’ is distinctive, that element is more likely to make an impression on the consumer. However, although the element ‘national’ will have a weak impact, it will nonetheless not be disregarded by the non-English-speaking public. The element ‘national’ is at the beginning of the earlier figurative mark, it is longer than the element ‘grid’ and it is the only element which will be understood by that public.
117 In the light of the foregoing, it must be held that the overall impression conveyed to the relevant English-speaking and non-English-speaking public by the earlier marks is not dominated by one of their components. Furthermore, none of the elements making up the earlier figurative mark and the earlier word mark is negligible for the English-speaking public or the non-English-speaking public.
118 The applicant’s argument that the element ‘national’ is dominant in the earlier marks must therefore be rejected.
119 As a result, it is appropriate to compare the signs at issue with the earlier marks, each taken as a whole, while taking into account the respective weight of each of their elements.
120 It is in the light of the foregoing that it is appropriate to undertake a visual, phonetic and conceptual comparison of the signs at issue.
(b) Visual comparison
121 The applicant claims that the signs at issue are overall visually very different.
122 In the present case, in the first place, it should be noted that, in the contested decision, the Board of Appeal assessed the existence of a likelihood of confusion between the mark applied for, which is a composite mark, on the one hand, and the earlier figurative mark and the earlier word mark, on the other hand. According to case-law, 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).
123 In the second place, it is important to note that, as the applicant claims, the signs at issue are different in many respects. First, the mark applied for contains a figurative element which the earlier marks do not. Second, the first part of the word element of the mark applied for, namely the element ‘northsea’, is different from the element ‘national’ which appears at the beginning of the earlier marks. Third, the mark applied for is characterised by the use of the colour green as regards its figurative element and the element ‘grid’. By contrast, the earlier figurative mark is exclusively blue in colour and the earlier word mark has no particular colour. Fourth, the earlier word mark presents no particular stylisation. In addition, in the earlier figurative mark, the element ‘grid’ is written in blue and in bold typeface while the first part, made up of the element ‘national’, is not written in bold typeface. By comparison, in the mark applied for, it is the element ‘northsea’ which is presented in bold typeface. Furthermore, that initial element is dark blue while the element ‘grid’ is written in light green. Fifth, the word mark ‘northseagrid’ shows capital letters at the beginning of each syllable ‘North’, ‘Sea’ and ‘Grid’. By contrast, the word element ‘nationalgrid’ of the earlier figurative mark does not include any capital letters.
124 However, the differences listed in paragraph 123 above are not sufficient to offset in full the similarities between the signs at issue resulting from the presence of the common element ‘grid’ and the initial letter ‘n’, as well as the colour blue in the figurative signs at issue. In that regard, it is important to note that, admittedly, in the mark applied for it is the element ‘northsea’ which is highlighted and not the element ‘grid’. However, the element ‘grid’ is not negligible in the mark applied for and its presence is therefore perceptible in each of the signs at issue, where it features in the same position. In addition, it must be added that although the element ‘grid’ is highlighted in the earlier figurative mark, that is not the case in the earlier word mark.
125 Therefore, in the light of the similarities which characterise the signs at issue, the applicant cannot claim that the signs are visually ‘very different’. Given the differences observed between those signs, they must be found, when viewed as a whole, to be visually similar to a low degree.
(c) Phonetic comparison
126 In the contested decision, the Board of Appeal found that there was some similarity between the signs at issue.
127 In that regard, it should be noted that, as the applicant claims, the pronunciation of the word element of the signs at issue coincides only in the pronunciation of a single syllable, namely the syllable ‘grid’.
128 By contrast, the signs at issue differ in the pronunciation of their first parts, namely ‘national’ and ‘northsea’, respectively.
129 More precisely, it is important to note that the element ‘national’ of the earlier marks consists of three syllables, ‘na’, ‘tio’ and ‘nal’. By comparison, the initial part of the mark applied for consists of only two syllables, namely ‘north’ and ‘sea’. In addition, admittedly, the first part of each of the signs at issue has the letter ‘n’ in common. However, the other letters which form the first part of the signs at issue have very different sounds. Lastly, it is the initial part of the word element of the signs at issue that will be pronounced first by the consumers, with the result that consumers will attach more importance to it.
130 It follows that, given the extent of the differences which characterise the first part of the signs at issue, considered as a whole, those signs must be found to be phonetically similar to a low degree.
(d) Conceptual comparison
131 The applicant claims that the signs at issue are different overall from a conceptual point of view. With regard to the English-speaking public, the first element of each of the signs — namely ‘national’ and ‘northsea’ — enables those signs to be distinguished conceptually. Regarding the part of the general public with less command of English and which would not understand the meaning of the element ‘grid’, the initial words ‘national’ and ‘northsea’ would, the applicant submits, have meaning because they are very similar in a number of languages. Thus, the first words of the signs at issue enable those signs to be distinguished conceptually.
132 In the contested decision, the Board of Appeal considered, as regards the English-speaking consumers, that the element ‘northsea’ made it possible to draw a conceptual distinction between the marks so far as concerns the English-speaking public who would understand the element ‘grid’.
133 As regards the relevant non-English-speaking public, the Board of Appeal stated that the word ‘grid’ had no meaning and that the elements ‘northsea’ and ‘national’ had a meaning that would be understood by the non-English-speaking part of the relevant public with a basic understanding of English. It is also clear from the part of the contested decision dealing with the assessment of likelihood of confusion that, according to the Board of Appeal, the relevant non-English-speaking public will be decisively influenced by the presence of the element ‘grid’, which is clearly distinctive for the goods and services in question. The Board of Appeal took the view that the element ‘grid’ would not be ignored or overlooked by the non-English-speaking public because, first, it was highlighted in each of the signs at issue, second, the word elements were more distinctive than the figurative element of the mark applied for, third, the fact that consumers normally attach more importance to the first part of words cannot apply in every case and, fourth, the elements ‘national’ and ‘northsea’ of the signs at issue had a descriptive meaning and their distinguishing effect was mitigated.
134 In the present case, in the first place, it should be noted that the English-speaking public will understand the meaning of each of the words that form the word elements of the signs at issue. Thus, it will understand, first, that the word element of the mark applied for means ‘electricity network of the North Sea’ and, second, that the earlier marks mean ‘national electricity network’ or, as the Board of Appeal noted, an electricity network that serves a ‘nation’ as a whole.
135 It follows that that part of the relevant public will perceive the identical meaning of the common element in the signs at issue, namely the element ‘grid’. However, for that part of the relevant public, the element ‘grid’ is as weakly distinctive as the elements ‘northsea’ and ‘national’. Accordingly, the element ‘northsea’ of the mark applied for and the element ‘national’ of the earlier marks will enable a conceptual distinction to be made between the signs at issue.
136 Therefore, in the light of the similarities but above all the differences that characterise the signs at issue, it should be held that, taken as a whole, those signs are conceptually similar to a low degree for the English-speaking part of the relevant public.
137 In the second place, as regards the relevant non-English-speaking public, it is important to note that the element ‘grid’, common to the signs at issue, will have no meaning and therefore no weight conceptually.
138 However, according to case-law, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, the consumer will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57). Furthermore, it is possible for the relevant consumer to break down a word sign even if only one of the elements making up that sign is familiar to him (see judgment of 1 June 2016, Mega Brands v EUIPO, T‑292/12 RENV, not published, EU:T:2016:329, paragraph 34 and the case-law cited).
139 Thus, on the one hand, the element ‘national’, which will be understood by the non-English-speaking public, will evoke the concept of nation and will refer to the national level.
140 On the other hand, as regards the mark applied for, the element ‘northsea’ will refer to an arm of the Atlantic Ocean lying between the mainland of Europe and the east coast of Great Britain and, more generally, the maritime world. In addition, the figurative element of the mark applied for will reinforce the idea that is conveyed by the element ‘northsea’, since that figurative element may be perceived as a seabed or the surface of the sea (see paragraph 72 above).
141 Therefore, the word ‘national’ of the earlier marks will refer, in the mind of the non-English-speaking public, to a concept different from that conveyed by the element ‘northsea’ in the mark applied for.
142 Accordingly, by breaking down the word element in the signs at issue, it cannot be concluded that there is a conceptual similarity between them (see, to that effect, judgment of 10 February 2015, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 85).
(e) Conclusion on the comparison of the signs
143 In the light of the foregoing, it must be found, following an overall assessment, that, for the English-speaking part of the relevant public, the signs at issue are weakly similar so far as concerns the visual, phonetic and conceptual aspects. Therefore, overall, the signs at issue will be perceived as being similar to a low degree by that part of the relevant public.
144 As regards the non-English-speaking part of the relevant public, it must be noted that the signs at issue will be perceived as being similar to a low degree as concerns the visual and phonetic aspects and as being conceptually different.
4. Global assessment of the likelihood of confusion
145 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
146 As regards the English-speaking public, it must be held that, despite the identity of the goods and services in question, the visual, phonetic and conceptual similarities of the signs at issue are not sufficient to give rise to a likelihood of confusion on the part of that section of the relevant public, which has a higher than average level of attention. Since that part of the relevant public will view the common element ‘grid’ as descriptive, it will have no difficulty in identifying the visual, phonetic and conceptual differences that characterise the signs at issue and which are linked, in particular, to the differences observed at the beginning of the signs at issue, namely the elements ‘northsea’ and ‘national’. Furthermore, the English-speaking general public will note the figurative element of the mark applied for which has inherent distinctiveness, which contributes to the visual differences between the signs and will reinforce, conceptually, the message conveyed by the element ‘northsea’.
147 As regards the non-English-speaking general public, it must be noted that, admittedly, the goods and services in question are identical and that the signs at issue have visual and phonetic similarities linked to the presence of the common element ‘grid’. However, the differences observed between the mark applied for, on the one hand, and the earlier figurative mark and earlier word mark, on the other hand, makes it possible to rule out the existence of a likelihood of confusion on the part of that public, which shows a high level of attention and takes time to study those marks.
148 The mark applied for can be distinguished from the earlier marks by the presence of the element ‘northsea’, which is highlighted in that mark. In addition, unlike the element ‘national’ in the earlier marks, the element ‘northsea’ has a normal distinctive character and a meaning which will be perceived and kept in mind by the non-English-speaking public. The element ‘northsea’, which will leave a particular impression on the relevant non-English-speaking public, will therefore support the essential function of the mark applied for, which is to guarantee to that part of the relevant public the identity of the origin of the goods and services designated by that mark by allowing it to distinguish, without any possibility of confusion, that product or service from those of the intervener. Moreover, the figurative element of the mark applied for, which has an inherent distinctive character, reinforces the differences between the signs at issue. Thus, the differences observed between the mark applied for and the earlier marks, particularly as regards their respective initial parts, counteract the presence of the common element ‘grid’ which is at the end of their word element and is shorter than the first parts. Therefore, in the mark applied for, the word element ‘northseagrid’ will be remembered by the relevant public while, in the earlier marks, it is the element ‘grid’ which will be remembered. In addition, the finding that there is no likelihood of confusion between the mark applied for and the earlier marks is not called into question by the level of distinctiveness of the earlier marks. As the Board of Appeal noted, the earlier marks have not acquired an enhanced degree of distinctiveness or a reputation as regards the non-English-speaking general public.
149 Moreover, with regard to the other marks relied on by the intervener in support of its opposition under Article 8(1)(b) of Regulation No 207/2009, it is not necessary to call into question the Board of Appeal’s finding that those other marks have a lower level of similarity in relation to the mark applied for than the earlier figurative mark and the earlier word mark. It should be added that, if the first part of the other marks invoked by the intervener had a greater distinctive character than the element ‘national’, such a finding would accentuate the differences between the signs at issue and would not change the assessment that the element ‘northsea’ of the mark applied for is highlighted and has normal distinctive character.
150 The Board of Appeal therefore acted correctly in excluding a likelihood of confusion, on the part of the English-speaking general public, between the mark applied for and the earlier marks for the goods and services in Classes 4 and 37 to 39 referred to in paragraph 5 above and for the services ‘administrative management of transport and distribution of electricity’ in Class 35.
151 By contrast, the Board of Appeal erred in finding that there was a likelihood of confusion, on the part of the non-English-speaking general public, between the mark applied for and the earlier marks for the goods and services in Classes 4 and 37 to 39 referred to in paragraph 5 above and for the services ‘administrative management of transport and distribution of electricity’ in Class 35.
152 The applicant’s plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must therefore be upheld.
153 In the light of all of the foregoing, paragraph 1 of the operative part of the contested decision, which annuls, by reason of the existence of a likelihood of confusion, the Opposition Division’s decision inasmuch as it applies to ‘electrical energy’ in Class 4 and the services ‘administrative management of transport and distribution of electricity’ in Class 35, ‘construction and repair; installation services; all of the aforesaid services in particular relating to networks for transport and distribution of electricity’ in Class 37, ‘telecommunication services, in particular related to transport and distribution of electricity’ in Class 38 and ‘transport, distribution and storage, particularly of electricity’ in Class 39, must be annulled.
154 It will be for the Board of Appeal to take into consideration the grounds of the present judgment in its assessment of the other grounds of opposition put forward by the intervener.
IV. Costs
155 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.
156 In the present case, EUIPO and the intervener have been unsuccessful. Therefore, EUIPO is ordered to pay, in addition to its own costs, those incurred by the applicant, in accordance with the form of order sought by the latter. The intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls paragraph 1 of the operative part of the decision of the Fifth Board of Appeal of EUIPO of 21 November 2016 (Case R 1607/2015-5) relating to opposition proceedings between Ngrid Intellectual Property Ltd and TenneT Holding BV;
2. Orders EUIPO to pay, in addition to its own costs, those incurred by TenneT Holding BV;
3. Orders Ngrid Intellectual Property to bear its own costs.
Tomljenović | Bieliūnas | Marcoulli |
Delivered in open court in Luxembourg on 27 September 2018.