JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
24 February 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark VROOM – Earlier national word mark POP & VROOM – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑56/20,
Bezos Family Foundation, established in Seattle, Washington (United States), represented by A. Klett, M. Schaffner and M. Lambert Maillard, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
SNCF Mobilités, établissement public à caractère industriel et commercial, established in Saint-Denis (France),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 20 November 2019 (Case R 1288/2019‑5), relating to opposition proceedings between SNCF Mobilités and Bezos Family Foundation,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, K. Kowalik-Bańczyk (Rapporteur) and G. Hesse, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 3 February 2020,
having regard to the response lodged at the Court Registry on 21 April 2020,
further to the hearing on 12 November 2020,
gives the following
Judgment
Background to the dispute
1 On 6 December 2017, the applicant, Bezos Family Foundation, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 word sign VROOM.
3 The goods in respect of which registration was sought are in Class 9 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education’.
4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2018/21 of 31 January 2018.
5 On 27 April 2018, SNCF Mobilités, établissement public à caractère industriel et commercial, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier French word mark POP & VROOM, which was filed on 4 November 2016 and registered on 3 March 2017 under No 4 312 202. The mark designates goods and services in Classes 9, 12, 35, 37, 38, 39 and 42 corresponding, for Classes 9 and 42, to the following description:
– Class 9: ‘Computer software and mobile applications for the bringing together of private individuals for car sharing and vehicle sharing purposes; Data processing equipment and computers for sending and broadcasting information to users in transit relating to transport and in particular to the management and conditions of rail, road and maritime traffic; Computer hardware and software, namely downloadable computer software for facilitating access to databases containing transport information; Computer software; Computer software, in particular for managing means of transport; Mobile applications; Multimedia; Electronic data terminals, apparatus and installations, in particular of a public, personal, portable or mobile nature; Computer software and devices for GPS navigation; Scientific apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images, in particular relating to RFID (radio-frequency identification) technology or NFC (near field communication) technology; Computer software and computer applications enabling localisation, management and reservation of car parks and parking spaces; USB charging ports; USB hardware; computer periphery devices; On-line publications in the form of reports, directories, brochures, reference material, leaflets, newsletters, newspapers, booklets, pamphlets, postcards, flyers, magazine supplements to newspapers, trade and professional magazines and books in the fields of transport, news, business, current affairs, entertainment, sport; Telecommunications terminals; Smart cards, cards with microprocessors; Magnetic, electronic and digital cards and badges; Smart cards; Magnetic, electronic and digital access cards; Magnetic, electronic and digital transport cards, in particular transport network identity cards; Credit cards, cash machine cards, payment cards; Prepayment cards; Electronic apparatus for verification of identity; Identity cards, encoded; Data encoders; Data decoders; Mechanisms for coin-operated apparatus; Scientific, photographic, optical, measuring, signalling, checking (supervision) and control apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Recording substrates [magnetic]; Remote terminals enabling instalments to be debited; Data processing apparatus and computers; Readers (computer), optical readers, readers of magnetic, electronic and digital cards; Smart card readers; Interactive information terminals; Remote terminals for recognising signals emitted by electronic components of a magnetic, electronic and/or digital badge or card; Electric and electronic train timetable indicators; Optical apparatus and instruments, namely spectacles, sunglasses and sports goggles; Cases adapted for mobile phones; Covers for mobile telephones; Batteries and cells; Charger; Chargers for electric batteries; Headphones; Stereo headphones; Telecommunications apparatus and equipment’;
– Class 42: ‘Computer software design; Design of computer software for processing information relating to rail, road and maritime traffic; Development (design), maintenance and repair of computer software and mobile applications for the bringing together of private individuals for car sharing and vehicle sharing purposes, downloadable computer software for accessing databases relating to transport, computer software for managing means of transport, computer software and applications for the location and reservation of car parks and parking spaces, GPS navigation devices; Development (design) of scientific apparatus and instruments, apparatus for recording, transmission, reproduction of sound or images, in particular relating to RFID (radio frequency identification) technology or NFC (near field communication) technology; Technical surveying, consultancy and advice in the field of computers for providing transportation information; Development (design) of computer software for managing means of transport; Design of computer programs for processing and supplying transportation information; Production (design) of hypertext links on a telecommunications network, and in particular on the Internet; Hosting computer sites; Research and engineering relating to transport; Research and engineering relating to the organisation of transport networks, convoys, timetables and transport conditions; Creation (design) of computer programs and/or computer software relating to transport, to the organisation and management of transport networks and to goods convoys; Research and engineering relating to the construction and management of storage premises and in particular warehouses and storage containers; Technical studies, in particular relating to transport, to the organisation of transport networks, convoys, timetables and transport conditions; Design, implementation and maintenance of computer programs and computer software in the field of transport; Surveying and technical studies relating to transport; Controls enabling authentication of payers having a card and/or badge’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
8 On 17 April 2019, the Opposition Division upheld the opposition and rejected the application for registration.
9 On 12 June 2019, 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 20 November 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal against the Opposition Division’s decision. More specifically, it found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, taking into account, inter alia, first, the average degree of visual and phonetic similarity of the marks at issue and, second, the identity of the goods in question.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision and reject the opposition;
– authorise registration of the EU trade mark VROOM;
– order EUIPO to pay the costs of the proceedings before the Court and before the Opposition Division and the Board of Appeal.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It complains that the Board of Appeal found that there was a likelihood of confusion even though, inter alia, the relevant public had, in essence, a high degree of attentiveness, the goods covered by the earlier mark and the mark applied for, respectively, are aimed at separate parts of the public, neither those goods nor those marks are similar, the earlier mark has weak distinctive character, and the applicant and SNCF Mobilités are not competitors.
14 EUIPO disputes the applicant’s arguments.
15 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means, inter alia, trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
16 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
The relevant public
17 According to the case-law, 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 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
18 In the present case, the Board of Appeal found that the relevant public was the French public, composed of both the general public and professionals, whose level of attention was, in essence, high.
19 The applicant claims that the ‘computer software’ and the ‘mobile applications’ designated by the earlier mark and the ‘computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education’, covered by the mark applied for, are intended for different parts of the public. First, the ‘computer software’ and ‘mobile applications’ designated by the earlier mark are intended for consumers wishing to use a transport and car sharing application. A significant part of the goods and services, in particular among those in Classes 9 and 42, covered by the mark applied for, is limited to the field of transport and SNCF Mobilités is an affiliate of a well-known railway company. Second, the ‘computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education’ covered by the mark applied for is intended, according to the applicant, for parents willing ‘to boost the development of their children’s education’. Since the applicant is a non-profit organisation, those parents are not part of the general public and cannot be considered to be professionals.
20 In that regard, first, as follows from the case-law set out in paragraph 17 above, the relevant public should be defined according to the categories of goods and services covered by the marks at issue. Consequently, neither the fact that the applicant is a non-profit organisation nor the fact that SNCF Mobilités is an affiliate of a railway company are relevant for the purposes of defining the relevant public.
21 Second, it should be borne in mind that a semicolon establishes a distinction between two different categories falling within the same class (judgment of 15 May 2014, Louis Vuitton Malletier v OHIM, C‑97/12 P, not published, EU:C:2014:324, paragraph 96) and that the use of general terms, including the general indications of the class headings of the Nice Classification, must be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term (see, to that effect, judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 42). In the present case, it should be noted that semicolons separate the terms ‘computer software’ and ‘mobile applications’, respectively, from the other terms describing the goods in Class 9 designated by the earlier mark. In those circumstances, the fact that the earlier mark covers, in addition to ‘computer software’ and ‘mobile applications’, goods and services relating to the field of transport is not such as to restrict the literal meaning of the terms ‘computer software’ and ‘mobile applications’. As a result, it does not follow from that fact that the public concerned by those categories of goods, covered by the earlier mark, is restricted to only the consumers wishing to use a transport and car-sharing application.
22 Third, it should be noted, in the first place, that the parents for whom the goods covered by the mark applied for are intended in particular are part of the general public in so far as the status of parent does not correspond to the exercise of a specific profession and, in the second place, educators who, when carrying out their profession, are also likely to use those goods, form part of the professional public.
23 In those circumstances, the applicant’s claim that the Board of Appeal incorrectly found that the relevant public is made up of the general public and of professionals is unfounded.
Comparison of the goods concerned
24 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those features include, in particular, 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).
25 In the present case, the Board of Appeal found that the ‘computer software’ and ‘mobile applications’ designated by the earlier mark included ‘computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education’, covered by the mark applied for, and, as a result, those goods were identical.
26 The applicant claims that the Board of Appeal should have found that the earlier mark covered the ‘computer software’ and ‘mobile applications’ in Class 9 and the ‘computer software design’ services in Class 42 only in so far as those goods and services related specifically to the field of transport. It submits, in that regard, that the description of those goods and services is not sufficiently clear and precise within the meaning of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), and that other goods and services in Classes 9 and 42 covered by the earlier mark relate specifically to the field of transport. It therefore argues that, since the goods covered by the mark applied for relate to the education and development of children, those goods are not similar to the goods and services covered by the earlier mark.
27 In that regard, first, it must be stated that the Board of Appeal did not take into account the ‘computer software design’ services in Class 42 covered by the earlier mark in order to find that the goods in question were identical. Consequently, the applicant’s claim that those services are not similar to the goods covered by the mark applied for is not capable of calling into question the assessment of the likelihood of confusion carried out by the Board of Appeal.
28 Second, it should, admittedly, be borne in mind that, according to the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361, paragraph 49), relied on by the applicant, the goods and services for which the protection of the mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought.
29 However, it should also be noted that the validity of earlier national trade marks may not be called into question in proceedings for registration of an EU trade mark (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 37 to 40 and 52). Moreover, the lack of clarity and precision of the terms used to designate the goods or services covered by the registration of a national trade mark cannot, in any event, be considered a ground for invalidity of that mark (judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 60).
30 Consequently, it cannot be inferred from the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that, when a mark is relied on in support of the ground of opposition referred to in Article 8(1)(b) of Regulation No 207/2009, that ground of opposition may be rejected from the outset, simply by invoking the absence of any precise statement of the goods covered by the earlier mark (see, to that effect and by analogy, judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraphs 134 and 135).
31 In those circumstances, even if it were established, as alleged by the applicant, that the registration of the mark in respect of the ‘computer software’ and ‘mobile applications’ in Class 9 is contrary to the requirement of clarity and precision identified in the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that fact would not be such as to prevent, in opposition proceedings, a comparison of those goods and the goods designated by the earlier mark from being carried out for the purposes of assessing the likelihood of confusion.
32 Third, as follows from paragraph 21 above, the fact that the earlier mark covers, in addition to ‘computer software’ and ‘mobile applications’, goods and services relating to transport services is not such as to restrict to that field alone the extent of the protection of that mark regarding that ‘computer software’ and those ‘mobile applications’.
33 Fourth, it should be borne in mind that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 7 July 2005, Miles International v OHIM – Biker Miles (Biker Miles), T‑385/03, EU:T:2005:276, paragraph 32 and the case-law cited). In the present case, it is not disputed that the ‘computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education’ constitutes solely a specific type of computer software or mobile applications. It follows that the goods covered by the mark applied for are included in those covered by the earlier mark, so that the Board of Appeal correctly found that those goods were identical.
The comparison of the marks at issue
34 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
35 In the present case, the Board of Appeal found that the marks at issue had an average degree of visual and phonetic similarity on the ground, in particular, that the mark applied for was included in the earlier mark. However, it considered that the marks at issue were not conceptually similar, given that the element ‘pop’ of the earlier mark referred to ‘pop’ music and the element ‘vroom’ of that mark had no meaning or was an onomatopoeic expression alluding to an engine sound.
36 The applicant submits that the marks at issue are not similar. In the first place, as regards visual and phonetic similarity, it claims, first, that the earlier mark contains more letters and syllables than the mark applied for, second, that the earlier mark is composed of two parts separated by an ampersand whilst the mark applied for consists of only one word and, third, that the relevant public pays particular attention to the element ‘pop’ of the earlier mark, which distinguishes that mark from the mark applied for. In the second place, as regards conceptual similarity, it submits that the element ‘pop’ of the earlier mark is an onomatopoeic expression and both that element and the onomatopoeic expression ‘vroom’ of that mark refer, for the relevant public, to an engine sound. It infers that the mark applied for has a higher distinctive character than the earlier mark, with the result that the conceptual difference between those marks is ‘very high’.
37 In that regard, in the first place, as regards the visual and phonetic similarity, first, it must be stated, like the Board of Appeal, that, irrespective of the fact that the onomatopoeic expression ‘vroom’ is not the first part of the earlier mark, the mark applied for is included entirely in the earlier mark. According to the case-law, that fact alone is, in principle, liable to create both a strong visual and phonetic similarity between the marks at issue (see, to that effect, judgment of 12 December 2017, For Tune v EUIPO – Simplicity trade (opus AETERNATUM), T‑815/16, not published, EU:T:2017:888, paragraph 53 and the case-law cited).
38 Second, although, as the applicant claims, the relevant public normally attaches more importance to the first part of words, it should be noted that that does not, on any view, apply in all cases nor call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them (judgments of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 38, and of 23 September 2011, NEC Display Solutions Europe v OHIM – C More Entertainment (see more), T‑501/08, not published, EU:T:2011:527, paragraph 38).
39 In the present case, it must be stated that, contrary to the applicant’s claim, the onomatopoeic expression ‘vroom’ is not descriptive. It follows from paragraphs 28 to 33 above that the earlier mark cannot be regarded as registered only in respect of computer software and mobile applications that relate to the field of transport alone. Consequently, the fact that the onomatopoeic expression ‘vroom’ can be understood as referring to an engine sound, which could potentially be perceived by the relevant public as alluding to that sector, is not sufficient to establish a sufficiently direct and specific relationship between that onomatopoeic expression and computer software and mobile applications as a whole.
40 In those circumstances, it must be stated that the Board of Appeal correctly found that the marks at issue had an average degree of visual and phonetic similarity, despite the fact that the earlier mark has a higher number of letters and syllables and an ampersand between its elements ‘pop’ and ‘vroom’.
41 In the second place, regarding conceptual similarity, it must be noted that, as is apparent from paragraph 39 above, the fact that elements of the earlier mark might allude to an engine sound is not sufficient to confer a descriptive character on those elements. Moreover, the fact that a mark is more or less descriptive than another is not such as to confer a specific concept on those marks, so that it is not relevant to the assessment of that similarity.
42 By contrast, it should be noted that the Board of Appeal, the applicant and EUIPO acknowledge that the onomatopoeic expression ‘vroom’ in each of the marks at issue is capable of referring to an engine sound. It follows that, as EUIPO correctly submits – departing, in that regard, from the Board of Appeal’s assessment in paragraph 48 of the contested decision – those marks share, at least in part, the same concept and have, for that reason, at least an average degree of conceptual similarity. In that regard, it must be pointed out that if, as the applicant claims, the Board of Appeal should have found that the element ‘pop’ of the earlier mark also constituted an onomatopoeic expression alluding to an engine sound, not a reference to ‘pop’ music, it would be appropriate to find that the marks at issue are conceptually identical. However, it should be noted that, as is apparent from paragraphs 50 to 54 below, the question whether those marks have an average degree of conceptual similarity or are conceptually identical is not, in the present case, such as to affect the global assessment of the likelihood of confusion.
The distinctive character of the earlier mark
43 It must be borne in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion. Since protection of a trade mark depends, in accordance with Article 8(1)(b) of Regulation 2017/1001, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).
44 In the present case, the Board of Appeal found that the earlier mark had an average degree of distinctiveness.
45 The applicant argues that the earlier mark has merely a low degree of distinctiveness. It submits in that regard that the elements ‘pop’ and ‘vroom’ of that mark are onomatopoeic expressions which refer to an engine sound, SNCF Mobilités is an affiliate of a well-known railway company and the goods designated by that mark concern the field of transport.
46 However, as is apparent from paragraphs 28 to 33 above, it must be considered that the earlier mark is registered in respect of ‘computer software’ and ‘mobile applications’ in Class 9 as a whole, not only for such goods relating to the field of transport. Consequently, neither the fact that the earlier mark refers to an engine sound nor the fact that SNCF Mobilités is an affiliate of a well-known railway company can reduce the distinctive character of that mark in respect of those goods considered as a whole.
47 In those circumstances, it must be held that the Board of Appeal was correct in finding that the earlier mark had an average degree of distinctiveness.
The likelihood of confusion
48 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
49 In the present case, the Board of Appeal found that there was a likelihood of confusion, having regard to, inter alia, the identity of the goods in question and the average degree of visual and phonetic similarity of the marks at issue.
50 In that regard, the applicant claims, first, that the relevant public’s high degree of attentiveness necessarily excludes any likelihood of confusion and, second, that it is not a competitor of SNCF Mobilités.
51 However, it should be borne in mind that it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 and therefore any possibility of applying that provision can, a priori, be ruled out (see judgment of 13 March 2018, Kiosked v EUIPO – VRT (K), T‑824/16, EU:T:2018:133, paragraph 72 and the case-law cited). On the contrary, a global assessment of that likelihood must be carried out on a case-by-case basis, as is required by the settled case-law cited in paragraph 16 above. In the context of that global assessment, the level of attentiveness of the relevant public is only one of the various elements to be taken into consideration (judgment of 21 November 2013, Equinix (Germany) v OHIM – Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraph 53).
52 In the present case, as set out in paragraphs 33, 40 and 47 above, the Board of Appeal correctly found that the goods in question were identical, the marks at issue had an average degree of visual and phonetic similarity and the earlier mark had an average degree of distinctiveness. Furthermore, as is apparent from paragraph 42 above, it must be considered that those marks also have at least an average degree of conceptual similarity.
53 Moreover, it should be borne in mind that once a mark has been registered its proprietor has the right to use it as he or she sees fit so that, for the purposes of assessing whether an application for registration falls within the ground for refusal laid down in Article 8(1)(b) of Regulation 2017/1001, it is necessary to ascertain whether there is a likelihood of confusion in all the circumstances in which the marks at issue might be used (see, to that effect and by analogy, judgment of 12 June 2008, O2 Holdings and O2 (UK), C‑533/06, EU:C:2008:339, paragraph 66). Thus, it should be noted that the factors which may vary over time and depend on the wishes of the proprietors of those marks are not suitable for the purposes of the prospective analysis of the likelihood of confusion (see, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59). It follows that the applicant’s claim that it was not, at the time when the action was brought, a competitor of SNCF Mobilités does not rule out those marks from, in the future, being used so as to create, on the part of the relevant public, a likelihood of confusion within the meaning of that provision.
54 In those circumstances, it must be stated that the Board of Appeal was correct in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in the present case.
55 Consequently, the single plea raised by the applicant must be rejected and, as a result, the action in its entirety must be dismissed, without there being any need to rule on the admissibility, disputed by EUIPO, of the applicant’s second head of claim.
Costs
56 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1. Dismisses the action;
2. Orders Bezos Family Foundation to pay the costs.
Kornezov | Kowalik-Bańczyk | Hesse |
Delivered in open court in Luxembourg on 24 February 2021.