JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
17 April 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark coinbase – International registration of the earlier word mark COINBASE – International registration of the earlier figurative mark coinbase exchange – Relative ground for refusal – No likelihood of confusion – No similarity of the goods and services – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑126/22,
Coinbase, Inc., established in Oakland, California (United States), represented by A. Nordemann and M. Maier, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl and E. Nicolás Gómez, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Coinbase Global OÜ, established in Tallinn (Estonia),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik‑Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), Judges,
Registrar: A. Juhász‑Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 14 September 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Coinbase, Inc., seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 December 2021 (Case R 1097/2021-4) (‘the contested decision’).
Background to the dispute
2 On 3 July 2019, the other party to the proceedings before EUIPO, Coinbase Global OÜ, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign coinbase.
3 The mark applied for covered services in Classes 36 and 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
– Class 36: ‘Virtual currency services; Virtual currency exchange; Financial and monetary services, and banking; Fundraising and financial sponsorship; Fund management; Mutual funds’;
– Class 41: ‘News reporting; Online publication of electronic newspapers; Education, entertainment and sport services; Publishing and reporting; Translation and interpretation; education, entertainment and sports’.
4 On 5 September 2019, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5 The opposition was based on the following earlier international registrations:
– international registration No 1 216 587 designating the European Union for the word mark COINBASE, covering goods and services in Classes 9, 36 and 42 corresponding, for each of those classes, to the following description:
– Class 9: ‘Downloadable computer software for use in electronically trading, storing, sending, receiving, accepting, and transmitting digital currency, and managing digital currency payment and exchange transactions’;
– Class 36: ‘Currency exchange services; on-line real-time currency trading; cash management, namely, facilitating transfers of electronic cash equivalents; digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value’;
– Class 42: ‘Providing temporary use of online non-downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions’.
– international registration No 1 268 814 designating the European Union for the figurative mark coinbase exchange, reproduced below, covering goods and services in Classes 36 and 42 corresponding, for each of those classes, to the following description: ‘Provision of a financial exchange for the trading of virtual currency; financial services, namely, providing a retail trading platform for the selling and purchasing of virtual currency in exchange for fiat currency’:
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 27 April 2021, the Opposition Division upheld the opposition in part, namely for all the services in Class 36 covered by the mark applied for. It rejected the opposition as regards the services in Class 41, which were considered to be different from the goods and services covered by the earlier marks.
8 On 22 June 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as the opposition had been rejected in respect of the services in Class 41.
9 By the contested decision, the Fourth Board of Appeal dismissed the appeal in so far as the opposition was based on Article 8(1)(b) of Regulation 2017/1001 and on Article 8(1)(a) of that regulation, on the ground that the services in Class 41 covered by the mark applied for were different from the goods and services covered by the earlier word and figurative marks.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs of the proceedings.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 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. That plea comprises three complaints alleging, first, that the Board of Appeal did not define the relevant public or take into account its level of attention and its perception of the marks at issue in respect of the goods and services at issue, second, that the Board of Appeal incorrectly assessed the similarity of the goods and services at issue and, third, that the Board of Appeal did not assess the likelihood of confusion.
13 In the circumstances of the present case, it is appropriate to examine the second complaint first, followed by the first and third complaints.
The second complaint
14 By its second complaint, the applicant submits that, contrary to what the Board of Appeal found in the contested decision, the services in Class 41 covered by the mark applied for must be regarded as similar to the goods and services in Classes 9, 36 and 42 covered by the earlier word mark.
15 EUIPO disputes the applicant’s arguments.
16 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 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 factors 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 (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23; see also judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
18 Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see, to that effect, judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
19 The principles applicable to the comparison of the goods also apply to the comparison between the goods and services. It is true that, by their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary or that the services may have the same purpose or use as the goods, and thus compete with each other. It follows that, in certain circumstances, goods and services may be found to be similar (judgment of 27 October 2005, Editions Albert René v OHIM – Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 66).
20 It should also be noted that, for the purpose of examining the similarity of the services, it is necessary to take into consideration the objective characteristics and qualities of the services at issue, as set out in the list of services covered by the mark applied for, and those covered by the earlier mark (see judgment of 12 February 2015, Klaes v OHIM – Klaes Kunststoffe (Klaes), T‑453/13, not published, EU:T:2015:98, paragraph 29 and the case-law cited).
21 It is in the light of that case-law that the applicant’s arguments should be examined.
The ‘news reporting; online publication of electronic newspapers; publishing and reporting’ services in Class 41 covered by the mark applied for
22 The applicant submits that the ‘news reporting; online publication of electronic newspapers; publishing and reporting’ services covered by the mark applied for are similar to the goods in Class 9 and the services in Classes 36 and 42 covered by the earlier word mark.
23 In that regard, the applicant claims that the relevant public will not buy or trade with digital currencies without having researched those currencies in the news, in online publications of electronic newspapers and in other published reports. Such news, newspapers and other published reports will also be published, in accordance with common practice, by providers of financial and virtual currency services like the applicant, and in such a case will bear its trade mark COINBASE. The applicant submits that, when third-party sources of information bear the identical trade mark, coinbase, to indicate their commercial origin, the only logical explanation for the average consumer and his or her perception of the trade marks in connection with the services is that the news, electronic newspapers and other published reports originate from the same commercial source, namely the applicant, and directly relate to the applicant’s services.
24 The applicant also submits that, as regards the goods in Class 9, the average consumer will assume that the news or other electronic publications, which will nowadays very likely also be accessible by a software application, will have the same commercial origin as the other software application relating to digital currency if both bear the same trade mark, namely that of the provider of the digital currency services. They are complementary because their commercial origin, the distribution channel and the public are the same. In that regard, the applicant adds that the Board of Appeal’s assessment is clearly contrary to the Guidelines for examination of European Union trade marks, adopted by EUIPO (‘the EUIPO Guidelines’), which state that there is a complementary relationship between software/applications and downloadable electronic publications and that those goods are considered to be similar.
25 EUIPO disputes the applicant’s arguments.
26 In the present case, the Board of Appeal found that the relevant services covered by the mark applied for were different from the goods and services covered by the earlier word mark. They did not have the same nature, intended purpose or method of use, they were neither complementary to nor in competition with each other and they were provided through different distribution channels.
27 At the outset, it should be borne in mind that the services covered by the mark applied for, referred to in paragraph 22 above, are services relating to the collection of information and its presentation in a format which makes it accessible to the public, in particular online. News reporting and publication services are generally provided by reporters, news agencies and publishing companies. Moreover, the goods and services in Classes 9, 36 and 42 covered by the earlier word mark include very specific financial services, namely currency exchange services, online and real-time currency trading services and cash management services, as well as downloadable computer software and the temporary provision of online non-downloadable software for the performance of financial services relating to digital currencies. They are provided by providers of financial services.
28 As the Board of Appeal correctly found in paragraph 25 of the contested decision, those goods and services differ in their nature, intended purpose and method of use, and are not in competition with each other or complementary to each other.
29 First, the expertise required to provide the services covered by the mark applied for referred to in paragraph 22 above and to provide the goods and services covered by the earlier word mark is entirely different. It should also be noted, as the Board of Appeal did, that the mere fact that the relevant services covered by the mark applied for relate, inter alia, to matters concerning the financial market did not make them similar to the goods and services covered by the earlier word mark. In that regard, it must be emphasised that although news agencies or publishing companies may offer reports or publications on topics that may relate to the services covered by the earlier word mark, the fact remains that they are not deemed to provide those services.
30 Accordingly, even if reports, information and news linked to digital currencies may prove useful in the context of financial services, that fact alone does not permit the inference that those services are complementary or that consumers would be led to believe that the publisher is the same as the provider of financial services.
31 Second, the applicant’s argument that it also provides news and information cannot succeed. The earlier word mark does not cover such services, which are in Class 41. As EUIPO correctly submits, the comparison of the goods and services must be made with regard to the list of goods and services in respect of which the trade marks have been registered or applied for. It is apparent from the case-law that, in order to assess the similarity of the goods and services at issue, it is necessary to take into account the description of the goods and services covered by the marks at issue, as designated in the registration document or in the application for registration of those marks, and not the goods and services actually marketed or to be marketed under those marks (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).
32 Third, as regards the applicant’s argument that the average consumer will assume that the goods and services in question will come from the provider of financial services when they are provided under the identical mark coinbase, it must be borne in mind that the identity of the marks at issue and their perception by the relevant public of the goods and services in question are factors to be taken into consideration in the global assessment of the likelihood of confusion, not in the comparison of the goods and services at issue (see, to that effect, judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25; of 2 December 2009, Volvo Trademark v OHIM – Grebenshikova (SOLVO), T‑434/07, EU:T:2009:480, paragraph 49; and of 14 May 2013 Representation of a chicken, T‑249/11, EU:T:2013:238, paragraph 19). Furthermore, in so far as the applicant, in its arguments, specifically emphasises the fact that, when comparing the goods and services at issue, the Board of Appeal should have determined how the relevant public perceives those goods and services, reference is made to paragraphs 67 to 71 below.
33 Fourth, the argument that the publication services in Class 41, which will nowadays very likely also be accessible by a software application, are complementary and, accordingly, similar to the software in Class 9 covered by the earlier word mark, if they both bear the same mark, must be rejected. In addition to the consideration referred to in paragraph 32 above, with regard to account being taken of the identity of the marks and the perception of the relevant public at the stage of the global assessment of the likelihood of confusion, it should be noted that, in today’s high-tech society, the majority of goods and services are also provided electronically or with the use of computers in one form or another, with the result that there is a multitude of software or programs with radically different functions. To acknowledge complementarity and, accordingly, similarity in all cases in which the goods and services are also provided electronically, and in which the earlier word mark covers computer programs or software, would clearly exceed the scope of the protection granted by the legislature to the proprietor of a trade mark. Such a position would lead to a situation in which the registration of an EU trade mark designating software or programs would in practice exclude subsequent registration of any other right designating the goods and services provided electronically (see, by analogy, judgment of 30 June 2021, Zoom v EUIPO – Facetec (ZOOM), T‑204/20, not published, EU:T:2021:391, paragraph 52 and the case-law cited).
34 Fifth, the applicant’s argument that the Board of Appeal’s assessment is contrary to the EUIPO Guidelines, in the version applicable to the present case, cannot succeed.
35 In that regard, it is sufficient to note that the EUIPO Guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). To the extent that the decisions concerning registration of a sign as a trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union (see, to that effect, judgment of 19 January 2012, OHIM v Nike International, C‑53/11 P, EU:C:2012:27, paragraph 57).
36 Consequently, the Board of Appeal did not make an error of assessment in concluding that the ‘news reporting; online publication of electronic newspapers; publishing and reporting’ services in Class 41, covered by the mark applied for, were different from the goods and services covered by the earlier word mark.
The ‘education, entertainment and sport services; education, entertainment, and sports’ services in Class 41 covered by the mark applied for
37 The applicant claims, first, that its line of argument relating to the ‘news reporting; online publication of electronic newspapers; publishing and reporting’ services can be applied to the ‘education, entertainment and sport services; education, entertainment and sports’ services, in so far as many financial companies, especially those in the virtual currency sector, educate their customers or potential customers about financial services and about how investment in virtual currencies and trading with virtual currency work and also provide seminars or webinars. The applicant submits, second, that companies in the financial sector sponsor entertainment and sports activities.
38 In that context, where a seminar or webinar, or an entertainment or sports event, is provided under a trade mark identical to that of the bank or other financial institution, then the average consumer will, according to the applicant, either assume that the seminar or webinar originates directly from the bank or other financial institution, namely the applicant, or that the entertainment or sports or educational event is conducted with the financial sponsorship, and thus the cooperation and consent, of the bank or other financial institution.
39 EUIPO disputes the applicant’s arguments.
40 In the present case, the Board of Appeal found that the ‘education, entertainment and sport services; education, entertainment and sports’ services in Class 41 covered by the mark applied for and the goods and services covered by the earlier word mark were different. They differed in nature, purpose, method of use, commercial origin and distribution channels and were neither in competition with each other nor complementary.
41 Those findings on the part of the Board of Appeal are not vitiated by any error of assessment.
42 First, in so far as the applicant seeks to establish that education, entertainment and sport services are complimentary to the goods and services covered by the earlier word mark, it must be stated that the applicant has not put forward any argument or referred to any evidence to show that the goods and services covered by the earlier word mark are indispensable or important for the provision of education, entertainment and sport services and, reciprocally, that the provision of those services is indispensable or important for the use of the goods and services covered by the earlier word mark.
43 Second, the mere fact that the applicant provides educational services or sponsors education, entertainment or sport services is not sufficient to establish that the goods and services at issue are similar. To conclude otherwise could lead to a finding of similarity in all cases in which a supplier of goods or a provider of services could also offer, in addition to the goods or services for which its mark is registered, education, entertainment or sport services, which would exceed the scope of the protection granted by the legislature to the proprietor of a trade mark. As the Board of Appeal correctly found in paragraph 37 of the contested decision, the comparison of the goods and services at issue relates only to the goods and services covered by the marks at issue and therefore does not relate to services other than those covered by the earlier word mark even if other services are provided by the applicant.
44 It must be borne in mind that the earlier word mark is not registered for education, entertainment and sport services and, moreover, as is apparent from the case-law cited in paragraph 31 above, in order to assess the similarity of the goods and services at issue, it is necessary to take into account the description of the goods and services covered by the marks at issue, as designated in the registration document or in the application for registration of those marks, and not the goods and services actually marketed or to be marketed under those marks.
45 Third, the applicant’s argument that the average consumer could assume that education, entertainment and sport services are provided or sponsored by the provider of the financial services, solely because they are provided under a mark identical to the applicant’s earlier word mark, must be rejected. In that regard, it should be borne in mind, as stated in paragraph 32 above, that the identity of the marks at issue and their perception by the relevant public for the goods and services in question are factors to be taken into consideration at the stage of the global assessment of the likelihood of confusion, not at the stage of the comparison of the goods and services.
46 Fourth, in so far as the applicant, in its arguments, specifically emphasises that, when comparing the goods and services at issue, the Board of Appeal should have determined how the relevant public perceives those goods and services, reference is made to paragraphs 67 to 71 below.
47 Consequently, it must be held that the Board of Appeal did not make an error of assessment in concluding that the ‘education, entertainment and sport services; education, entertainment and sports’ services in Class 41 covered by the mark applied for were different from the goods and services covered by the earlier word mark.
The ‘translation and interpretation’ services in Class 41 covered by the mark applied for
48 The applicant submits that the ‘translation and interpretation’ services covered by the trade mark applied for are similar to computer software in Class 9 and providing temporary use of software in Class 42 covered by the earlier word mark.
49 In that regard, the applicant submits that the Board of Appeal’s approach was incorrect, in so far as, instead of considering the services in the abstract and comparing them with each other, it should have taken into account the viewpoint and perception of the relevant public.
50 The applicant claims that since virtual currency and the management of virtual currency will usually be provided in English, the relevant public, with the exception of Ireland and Malta, will often need translation and interpretation services, and such services nowadays are usually provided with the help of software and online translation tools.
51 In that context, the applicant maintains that, where the consumer uses translation software or an online translation tool under the trade mark COINBASE which is identical to that of the software which enables him or her to trade, store, and transmit digital currencies and to manage payments in digital currencies and foreign exchange transactions, then the average consumer must necessarily assume that such translation software or online translation tool has the same commercial origin, and that the applicant also guarantees the accuracy of the translation.
52 EUIPO disputes the applicant’s arguments.
53 In the present case, the Board of Appeal found that the ‘translation and interpretation’ services covered by the mark applied for were different from the goods and services covered by the earlier word mark. They differed in nature, intended purpose and method of use and were neither in competition with each other nor complementary.
54 First, it should be noted that the applicant does not dispute the Board of Appeal’s finding, in paragraph 32 of the contested decision, that translation services which are necessary in order for a financial service provider to carry out its activities and the translated products supplied by that financial services provider to its customers are intended for a different public and cannot therefore be complementary.
55 Second, in so far as the applicant refers to translation and interpretation services provided to consumers engaged in online trading, those services are fundamentally different from the software and the software supply services covered by the earlier word mark. As the Board of Appeal correctly found, they differ in nature, intended purpose and method of use.
56 It should be noted that the earlier word mark is not registered for translation and interpretation services in Class 41. In that regard, the mere fact that the consumer may need translation services to negotiate and manage digital currency on the internet when using the applicant’s goods and services is not sufficient, in itself, to establish complementarity and, accordingly, similarity between the goods and services concerned. A finding to the contrary would render all goods and services complementary and, accordingly, similar to translation and interpretation services in so far as information regarding all goods and services can be translated or interpreted.
57 Third, in the light of the case-law cited in paragraph 33 above, it must be held that the fact that the translation and interpretation services covered by the mark applied for may be provided through the use of computer services and computer technology does not in itself mean that they are similar to software and services connected to software.
58 Fourth, in so far as, by its arguments set out in paragraph 51 above, the applicant seeks to have the identity of the marks at issue taken into account, it is sufficient to refer to paragraph 32 above. As regards the applicant’s argument that the Board of Appeal should have taken account of the relevant public’s perception of the goods and services at issue, reference is made to paragraphs 67 to 71 below.
59 Consequently, the Board of Appeal did not make an error of assessment in concluding that the ‘translation and interpretation’ services in Class 41 covered by the mark applied for were different from the goods and services covered by the earlier word mark.
60 Accordingly, it follows from all of the foregoing that the second complaint must be rejected.
The first complaint
61 The applicant submits that the Board of Appeal did not determine the relevant public or assess its perception of the marks at issue in relation to the goods and services at issue, even though that is a necessary first step in the assessment of the likelihood of confusion and the similarity of the goods and services. In that regard, it claims that the Board of Appeal’s statement that the ‘target public’ would include the professional business public and the public at large seeking financial services is insufficient on the basis that the Board of Appeal made no mention of the perception of the goods and services at issue by that public or the level of attention that public has.
62 EUIPO disputes the applicant’s arguments.
63 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 marks at issue 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 marks at issue and that of the goods or services in question (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 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 (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 21 and the case-law cited).
64 It should be made clear that only when it is established that there is no similarity between the goods and services covered by the signs at issue can it be excluded that a likelihood of confusion between those signs exists, without there being any need to carry out a global assessment, taking into account all relevant factors, of the perception the relevant public has of the signs and of the goods or services at issue (judgments of 14 May 2013, Representation of a chicken, T‑249/11, EU:T:2013:238, paragraph 19, and of 14 June 2018, Emcur v EUIPO – Emcure Pharmaceuticals (EMCURE), T‑165/17, not published, EU:T:2018:346, paragraph 27).
65 In the present case, in paragraph 24 of the contested decision, the Board of Appeal found that the relevant public for the goods and services in Classes 9, 36 and 42 covered by the earlier word mark is composed of the professional business public and the public at large seeking financial services. Next, it is apparent, in essence, from paragraph 35 of the contested decision that the Board of Appeal found that the goods and services at issue – and therefore also those covered by the mark applied for – could be directed at both professionals and the public at large.
66 It must be noted that those findings have not been disputed by the applicant.
67 However, in so far as the applicant submits that the Board of Appeal did not define the relevant public and that its statement that the relevant public consisted of the professional business public and the public at large seeking financial services is insufficient because the Board of Appeal did not take into account the perception of the goods and services in question by that public or the level of attention that public has, it must be borne in mind that the level of attention of the average consumer of the category of goods or services in question must be taken into account in the global assessment of the likelihood of confusion (see, to that effect, 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). Furthermore, it follows, in essence, from the case-law cited in paragraphs 63 and 64 above that the relevant public’s perception of the signs and goods or services in question is a factor to be taken into account at the stage of the global assessment of the likelihood of confusion, not at the stage of the comparison of the goods and services concerned.
68 In that regard, where the Board of Appeal finds that there is no similarity between the goods and services covered by the marks at issue, it may reject the opposition based on Article 8(1)(b) of Regulation 2017/1001, without there being any need to carry out a global assessment of the likelihood of confusion and thus to take account of all the relevant factors, such as the level of attention of the relevant public or its perception of the marks and goods or services at issue.
69 Furthermore, it follows from the case-law cited in paragraph 17 above that the assessment of the similarity between the goods or services at issue is based on the objective factors which characterise the relationship between them, such as their nature, their intended purpose, their method of use, whether they are in competition with each other or are complementary, and their distribution channels. In that regard, it is apparent from the analysis of the second complaint that the Board of Appeal’s assessment of the similarity between the goods and services at issue on the basis of those factors was not vitiated by any error of assessment.
70 Thus, it must be held that, even on the assumption that the Board of Appeal did not sufficiently define the relevant public, or determine the level of attention of that public, or take into account its perception of the marks at issue and the goods and services at issue, the fact remains that, after correctly finding that there was no similarity between the goods and services at issue, it was not required to carry out the global assessment of the likelihood of confusion in order to reject the opposition brought on the basis of Article 8(1)(b) of Regulation 2017/1001. The Board of Appeal was therefore fully entitled not to carry out that global assessment. Accordingly, the applicant cannot reasonably rely, as it does, on a failure to examine relevant factors which did not have to be taken into account at the stage of the comparison of the goods and services concerned.
71 That conclusion is not called into question by the fact that, as is apparent from the case-law cited in paragraph 18 above, for the purpose of assessing whether goods and services are complementary, account must be taken of consumers’ perception of whether a product or service is indispensable or the importance of a product or service for the use of another product or service. It follows from the analysis of the second complaint that the Board of Appeal was correct in finding that those goods and services were neither complementary nor similar.
72 In the light of the foregoing, the first complaint must be rejected as unfounded.
The third complaint
73 The applicant observes that the Board of Appeal did not perform a global assessment of the likelihood of confusion on the basis that the goods and services at issue were dissimilar. It submits that, since the goods and services covered by the earlier word mark and the services covered by the mark applied for are similar, there is a likelihood of confusion. In that regard, the applicant claims that, since the signs are identical, the average consumer is likely to assume that the services covered by the mark applied for have the same commercial origin as the goods and services covered by the earlier word mark. The applicant also claims that its trade mark COINBASE is very well known and that the other party acted in bad faith.
74 EUIPO disputes the applicant’s arguments.
75 It should be emphasised that, for the purpose of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
76 In the present case, it must be held that the condition that the services covered by the mark applied for and the goods and services covered by the earlier word mark must be identical or similar is not satisfied.
77 Therefore, and as stated in paragraph 70 above, the Board of Appeal was fully entitled to reject the opposition without carrying out a global assessment and without taking into account other factors relevant to such an assessment.
78 That conclusion cannot be called into question by the applicant’s argument that the other party acted in bad faith. That argument must be rejected as ineffective. Any bad faith on the part of a trade mark applicant is not a factor that must be taken into account in opposition proceedings brought under Article 8 of Regulation 2017/1001 (see, to that effect, judgments of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 47, and of 17 December 2010, Amen Corner v OHIM – Comercio Electrónico Ojal (SEVE TROPHY), T‑192/09, not published, EU:T:2010:553, paragraph 50).
79 In the light of the foregoing, the third complaint, alleging that the Board of Appeal failed to carry out a global assessment of the likelihood of confusion, must be rejected.
80 Furthermore, even if, notwithstanding the fact that paragraph 42 of the contested decision is not disputed, the applicant also intends, by its three complaints, to refer to the services in Class 36 covered by earlier figurative mark No 1 268 814, it is sufficient to note that all of the foregoing considerations apply mutatis mutandis to those services, which overlap with the services in the same class covered by the earlier word mark, in so far as the services covered by that earlier figurative mark relate to currency exchange services and to online currency trading services covered by the earlier word mark.
81 Consequently, the action must be dismissed.
Costs
82 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Coinbase, Inc., to pay the costs.
Kowalik-Bańczyk | Hesse | Ricziová |
Delivered in open court in Luxembourg on 17 April 2024.
V. Di Bucci | | S. Papasavvas |