JUDGMENT OF THE GENERAL COURT (Second Chamber)
11 October 2023 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark FLOWBIRD – Earlier EU figurative mark FLOW – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑296/22,
Flowbird, established in Neuilly-sur-Seine (France), represented by C. Pecnard and M. Simonnet, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Schäfer, T. Klee and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
APCOA Parking Holdings GmbH, established in Stuttgart (Germany), represented by M. Straub, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz and W. Valasidis (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 3 May 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Flowbird, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 March 2022 (Case R 748/2021-2) (‘the contested decision’).
Background to the dispute and events subsequent to the bringing of the action
2 On 25 October 2018, the applicant obtained international registration No 1478123 designating the European Union, from the International Bureau of the World Intellectual Property Organization (WIPO). The trade mark that is the subject of the international registration designating the European Union is the following figurative mark:
3 On 18 July 2019, EUIPO received notification of the international registration designating the European Union, 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).
4 The goods and services for which protection in the European Union was sought are in Classes 9, 35, 36, 37, 38, 39 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the description in paragraph 1 of the contested decision.
5 The trade mark application was published in European Union Trade Marks Bulletin No 135/2019 of 19 July 2019.
6 On 7 November 2019, the intervener, APCOA Parking Holdings GmbH, filed a notice of opposition against the registration of the mark applied for in respect of all of the goods and services referred to in paragraph 1 of the contested decision.
7 The opposition was based, in particular, on the following earlier marks:
– EU word mark FLOW, registered on 15 August 2018 under No 17883605, for goods and services in Classes 9, 35, 36, 37, 38, 39, 42 and 45;
– EU figurative mark reproduced below, registered on 6 June 2018 under No 17770124 for goods and services in Classes 9, 35, 36, 37, 38, 39, 42 and 45 (‘the earlier mark’):
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
9 On 19 March 2021, the Opposition Division upheld in part the opposition based on the EU word mark FLOW and rejected the opposition for the following goods and services:
– Class 9: ‘Electronic machines for dispensing parcels and/or goods; servers, computers and communication terminals for monitoring, management and delivery of parcels and goods’;
– Class 35: ‘Retail sale of gas cylinders, particularly via the internet, intranets or extranets’;
– Class 37: ‘Maintenance services (servicing, repair) for electronic machines for dispensing parcels and/or goods, electronic apparatus for issuance of public transport tickets, electronic apparatus for writing for memory cards used in parking terminals, parking meters, time and date stamping machines, electronic apparatus for issuance of public transport tickets’;
10 On 23 April 2021, the applicant filed a notice of appeal with EUIPO requesting that the Board of Appeal annul the decision of the Opposition Division in so far as the opposition had been upheld and to dismiss the opposition in its entirety.
11 On 27 September 2021, the intervener filed a cross-appeal, pursuant to Article 68(2) of Regulation 2017/1001, and requested that the Board of Appeal annul the decision of the Opposition Division in so far as the opposition had been dismissed and thus to also dismiss the application for a mark for the goods and services referred to in paragraph 9 above, with the exception of ‘retail sale of gas cylinders, particularly via the internet, intranets or extranets’ in Class 35.
12 By the contested decision, the Board of Appeal dismissed the main action, upheld the cross-appeal and annulled the decision of the Opposition Division in so far as the opposition had been dismissed for the goods and services in Classes 9 and 37 referred to in paragraph 9 above.
13 The Board of Appeal based its assessment on the earlier mark rather than the EU word mark FLOW, given that in the meantime it had been the subject of invalidity proceedings. By Decision No C 49667, of 29 July 2022, subsequent to bringing the present action, the EUIPO Cancellation Division dismissed in its entirety that application for a declaration of invalidity.
14 In essence, in the present case, the Board of Appeal considered that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, taking into account in particular, first, the fact that the signs at issue had an average degree of similarity and, second, the identity or similarity to varying degrees of the goods and services in question. In that regard, it found that the relevant public could believe that the goods or services at issue came from the same undertaking or from economically linked undertakings. The relevant public could also perceive the mark applied for as being a sub-brand or variation of the earlier mark covering a new line of goods and services.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs of the proceedings before the Court;
– order the intervener to pay the costs of the proceedings before EUIPO.
16 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs in the event that a hearing is convened.
17 The intervener contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
18 In support of the action, the applicant raises, in essence, two pleas in law. The first plea alleges infringement of Article 8(1)(b) of Regulation 2017/1001 and the second alleges an insufficient statement of reasons in the contested decision.
First plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
19 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the two 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 mark.
20 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. 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 between the goods or services identified (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).
21 As a preliminary point, it may be observed that in support of its first plea, the applicant does not dispute the definition of the relevant public made by the Board of Appeal with regard to the goods and services at issue.
22 In the present case, the Board of Appeal found that the relevant public consisted in the general public and professional clients with specific experience or professional knowledge, according to the goods and services at issue. In addition, it noted that it was necessary to focus the comparison of the signs at issue on the English-speaking part of the relevant public. It also found that the relevant territory was throughout the European Union.
23 It is not necessary to challenge those findings.
Comparison of the goods and services
24 In assessing the similarity between the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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 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).
25 In that regard, it should be noted that complementary goods or services are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods or services intended for different publics cannot be complementary (see 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).
26 In addition, it may be recalled that the goods and services may be regarded as identical when the goods and services that designate the earlier mark are included in a more general category designated by the trade mark application (see, to that effect, judgment of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 53) or when the goods and services identified by the earlier mark are included in a more general category designated by the earlier mark (see judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
27 It should also be noted that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. Therefore, goods and services may not be regarded as being dissimilar to each other on the ground that they appear in different classes under the Nice Classification (judgment of 6 June 2018, Uponor Innovation v EUIPO – Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 26).
28 In the present case, the Board of Appeal found that the goods and services in question were in part, identical, and in part, similar, to varying degrees.
29 The applicant disputes the assessment made by the Board of Appeal in the comparison between certain goods and services.
– The goods in Class 9 referred to in the mark applied for
30 In paragraph 46 of the contested decision, the Board of Appeal found that the ‘electronic terminals of information, of sale of goods and/or services’; the ‘remote recognition terminals enabling the debiting of services sold’; and the ‘interactive information terminals’ referred to in the mark applied for were very similar to the ‘apparatus for the transmission of data’ in Class 9 and referred to in the earlier mark, given that the ‘terminals’ belong to a general category of equipment for the processing of data.
31 In paragraph 49 of the contested decision, the Board of Appeal found that the ‘servers, computers and communication terminals for the management of electronic apparatus for issuance of public transport tickets’ referred to in the mark applied for were similar to an average degree to ‘card readers’ in Class 9 and covered by the earlier mark. The Board of Appeal took the view that those ‘servers’ cover a wide range of goods comprising handheld ticket machines. They can have the same usual producer, relevant public and distribution channels as the ‘card readers’.
32 In paragraphs 50 and 51 of the contested decision, the Board of Appeal found that the ‘electronic machines for dispensing parcels and/or goods’; and the ‘servers, computers and communication terminals for monitoring, management and delivery of parcels and goods’ referred to in the mark applied for were similar to ‘apparatus for the transmission of data’ referred to in the earlier mark. The Board of Appeal pointed out that the ‘electronic machines for dispensing parcels and/or goods’ were ‘like any electronic machines, basically machines or apparatus which [processed] or [transmitted] data’. The ‘servers, computers and communication terminals for monitoring, management and delivery of parcels and goods’ are, according to the Board of Appeal, interactive devices that can be used for calling up information or for fulfilling orders. Those ‘servers’ therefore fall under the general category of interactive terminals which belong to the same group as ‘apparatus for the transmission of data’. They are, therefore, at the very least, similar to a low degree.
33 The applicant claims that the findings of the Board of Appeal, as recalled in paragraphs 30 to 32 above, are vitiated by errors of assessment.
34 In the first place, the applicant claims that the ‘terminals’ identified in the mark applied for and in Class 9 are to be considered as automated terminals, intended to deliver information, a good or a service. They could be used in any type of economic sector. By contrast, the ‘apparatus for the transmission of data’ covered by the earlier mark are devices used for any type of data transmission. According to the applicant, the mere fact that both these types of goods can be used to process data is insufficient to consider these goods as similar or identical. The applicant challenges, in essence, the fact that the ‘terminals’ identified by the mark applied for may be considered part of the general category of ‘apparatus for the transmission of data’.
35 In the second place, the applicant states that the ‘servers, computers and communication terminals for the management of electronic apparatus for issuance of public transport tickets’ constitute heavy infrastructure for managing the issuance of public transport tickets, namely a very specific field of professional activity, while the ‘card readers’ are used to read any card. The applicant notes that the ‘card readers’ neither have the same nature, nor the same purpose or intended use as those of the goods covered by the mark applied for.
36 In the third place, the applicant submits that the finding of the Board of Appeal that the ‘electronic machines for dispensing parcels and/or goods’ and ‘servers, computers and communication terminals for monitoring, management and delivery of parcels and goods’ are similar to ‘apparatus for the transmission of data’ covered by the earlier mark are based on a ‘highly simplistic’ reasoning in that, in essence, the former should, like the latter, process and transmit data.
37 EUIPO and the intervener dispute the applicant’s arguments.
38 In the present case, in the first place, it should be noted that although the applicant disputes the ‘alleged belonging’ of the terminals covered by the earlier mark to the general category of ‘apparatus for the transmission of data’ covered by the earlier mark, it does not dispute that the former like the latter are used for the processing of data. Those goods falling within information technology and ‘apparatus for the transmission of data’ may, as correctly noted by EUIPO, be necessary for the functioning of ‘terminals’ covered by the mark applied for, which are intended to transmit information or provide a good or service, enabling users, as the Board of Appeal correctly makes clear, to carry out and automate tasks on a computer. The goods at issue are therefore of the same nature and have the same use. Taking account of the case-law cited in paragraph 25 above, it must also be considered that the terminals covered by the mark applied for and the apparatus for the transmission of data are closely connected, one being indispensable or important for the use of the other. The goods covered by the earlier mark may therefore be complementary to the goods covered by the mark applied for. Therefore, in accordance with the case-law recalled in paragraph 24 above, they may be considered, at the very least, as very similar, as held by the Board of Appeal. In addition, following the case-law cited in paragraph 26 above, those goods may be regarded as being identical, since the goods covered by the mark applied for contained in Class 9 are included in the ‘apparatus for the transmission of data’ in the same class and covered by the earlier mark.
39 In the second place, it is necessary to state that the ‘card readers’, covered by the earlier mark, are closely connected with the ‘servers, computers and communication terminals for the management of electronic apparatus for issuance of public transport tickets’ covered by the mark applied for, in so far as the former may ensure the payment by credit card of public transport tickets for which the latter enable the issuance. Such a finding cannot be contradicted by the applicant’s statement, assuming it were well founded, that the card readers are capable of being used also to read security cards or professional badges.
40 In addition, the ‘servers, computers and communication terminals for the management of electronic apparatus for issuance of public transport tickets’ are not necessarily, contrary to what the applicant claims, ‘heavy infrastructure’, since their classification, while falling within ‘a very specific field of professional activity’, does not provide such specification for their registration. As the Board of Appeal found, correctly, they cover a wide range of goods that might include handheld ticket machines.
41 Lastly, the servers and communication terminals covered by the mark applied for, as set out in paragraph 40 above, are intended to transmit electronic data, like the card readers covered by the earlier mark. They may therefore, as correctly observed by the Board of Appeal, utilise the same distribution channels and share the same usual producer and relevant public.
42 In those circumstances, the goods at issue, as identified in paragraph 39 above, have, at the very least, an average degree of similarity, as observed by the Board of Appeal.
43 In the third place, it should be stated that the applicant in merely criticising the Board of Appeal for its ‘very simplistic’ reasoning, without detailed information in support of that argument, does not call into question the substance of the Board of Appeal’s assessment that the ‘electronic machines for dispensing parcels and/or goods’ and ‘servers, computers and communication terminals for monitoring, management and delivery of parcels and goods’ are similar to ‘apparatus for the transmission of data’ covered by the earlier mark.
44 In any event, it should be stated that the electronic machines covered by the mark applied for, and referred to in paragraph 43 above, are, as found by the Board of Appeal, equipment for the processing and transmission of data. They may therefore fall within the category of ‘apparatus for the transmission of data’ covered by the earlier mark. In those circumstances, it is not necessary to question the assessment of the Board of Appeal that those electronic machines are similar to the apparatus for the transmission of data.
45 In addition, the servers, computers and communication terminals referred to in paragraph 43 above may fall within the category of apparatus for the transmission of data covered by the earlier mark in that the monitoring, management and delivery of parcels and goods for which they are intended requires the transmission of data. The latter are, at the very least, indispensable or important for the use of the former, so that the goods at issue are, in all cases, complementary, and have at least, a low degree of similarity, as found by the Board of Appeal.
46 In view of the above, the applicant has no basis in claiming that the findings of the Board of Appeal regarding the comparison of the goods at issue falling within Class 9 are vitiated by an error of assessment.
– The services in class 35 and covered by the mark applied for
47 In paragraph 55 of the contested decision, the Board of Appeal found that the ‘subscription services for third parties, namely, for subscription to a database [and] subscription to a database server’ covered in Class 35 and referred to by the mark applied for, are similar, at least to a low degree, to the services ‘data processing for the collection of data for business purposes’ included in the same class and designated by the earlier mark, given that they have the same purpose, namely providing administrative assistance to a company in its ‘back-office’ activities. The Board of Appeal added that those services were provided by the same type of company and targeted the same professional clients.
48 The applicant claims that the services ‘data processing for the collection of data for business purposes’, covered by the earlier mark, consist in the collection and study of data relating to the identity or identification of an individual and his behaviour, in particular in the context of parking, with a view to commercial use. However, the ‘subscription services for third parties’, covered by the mark applied for, are aimed at offering agreements, for a given price, between a supplier and a client, for access to a set of information, compiled in a structured manner, in digital format or not, rendered by subscription companies. The applicant considers accordingly that those two types of service do not have the same purpose, since the services intended by the mark applied for do not have an obligatory and close connection with the services covered by the earlier mark. Consequently, they are not complementary and are therefore different.
49 EUIPO and the intervener dispute the applicant’s arguments.
50 In the present case, it must be stated that the services ‘data processing for the collection of data for business purposes’, covered by the earlier mark, are not limited, as claimed, to the collection or study of data relating to the identity or identification of a person, or the specific field of parking. They fall within administrative services of a general nature and may consist in support for ‘back-office’ activities for undertakings that carry out data processing for the collection of data for business purposes’. The services at issue have the same purpose as ‘subscription services for third parties’ covered by the mark applied for and that seek to provide support to an undertaking in connection with its commercial activities. In addition, the applicant does not dispute the statement by the Board of Appeal that those services are provided by the same type of undertaking and target the same professional clients.
51 In those circumstances, the finding of the Board of Appeal considering that the services ‘data processing for the collection of data for business purposes’, contained in Class 35 and covered by the earlier mark, are, at the very least, similar to a low degree, to ‘subscription services for third parties, namely, for subscription to a database [and] subscription to a database server’ covered by the mark applied for and belonging in the same class.
– The services in class 37 covered by the mark applied for
52 It follows from paragraph 61 of the contested decision, read in the light of paragraph 6 of that decision, that the Board of Appeal, while referring to the assessment of the Opposition Division, found in particular that the ‘maintenance services (servicing, repair) for electronic information terminals and/or sale of goods/services, remote recognition terminals allowing the debiting of services sold, interactive information terminals, parking terminals, parking meters, time and date stamping machines, electronic apparatus for vehicle parking management, electronic apparatus for access security to apparatus for vehicle parking management, electronic apparatus for control of access for car parks, electronic apparatus for communication between time and date stamping machines and a central computer, electronic communication apparatus (communication sub-assemblies) to be located in time and date stamping machines, electronic apparatus for issuance of public transport tickets’ in Class 37 and covered by the mark applied are similar to a low degree with ‘apparatus for the transmission of data, devices for automated parking checks and number plate recognition’ in Class 9 and covered by the earlier mark. The Board of Appeal justified its assessment by reason of the complementarity of the goods and services at issue and the fact that they are sold and distributed by the same distribution channels and addressed to an identical public.
53 The applicant claims that the Board of Appeal carried out an erroneous comparison of the services and goods in question. In particular, the applicant claims that the services covered by the mark applied for and referred to in paragraph 52 above are not complementary with, in essence, the ‘apparatus for the transmission of data’ covered by the earlier mark. The supply of services does not depend on the goods at issue and the public does not attribute a common origin to them.
54 EUIPO and the intervener dispute the applicant’s arguments.
55 As recalled in paragraph 25 above, complementary goods or services are those between which there is a close connection, in 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. That implies that complementary goods or services can be used together, which presupposes that they are intended for the same public. The Court has already held that goods and services may be complementary where, for example, the maintenance of the goods complements the goods themselves, or where services may have the same purpose or use as the goods, and thus compete with each other (see judgment of 6 June 2018, SMATRIX, T‑264/17, not published, EU:T:2018:329, paragraphs 46 and 47 and the case-law cited).
56 In the present case, it should be recalled that, in accordance with paragraph 38 above, the ‘electronic information terminals and/or sale of goods/services’, the ‘remote recognition terminals allowing the debiting of services sold’ and the ‘interactive information terminals’ are included in the ‘apparatus for the transmission of data’ in Class 9 and covered by the earlier mark. Consequently, the ‘maintenance services (servicing, repair)’ in Class 37 covered by the mark applied for that refer to ‘electronic information terminals and/or sale of goods/services’ and ‘remote recognition terminals allowing the debiting of services sold’ and ‘interactive information terminals’ and that ensure the proper functioning are complementary, contrary to what is claimed by the applicant for ‘apparatus for the transmission of data’ covered by the earlier mark (see, to that effect, judgment of 15 October 2014, Skysoft Computersysteme v OHIM – British Sky Broadcasting Group and Sky IP International (SKYSOFT), T‑262/13, not published, EU:T:2014:884, paragraph 24).
57 Furthermore, the ‘maintenance services (servicing, repair)’ in Class 37 and covered by the mark applied for, refer to ‘parking terminals, parking meters, time and date stamping machines, electronic apparatus for vehicle parking management, electronic apparatus for access security to apparatus for vehicle parking management, electronic apparatus for control of access for car parks, electronic apparatus for communication between time and date stamping machines and a central computer, electronic communication apparatus (communication sub-assemblies) to be located in time and date stamping machines, electronic apparatus for issuance of public transport tickets’. Whereas the applicant has not provided any detailed information in support of its argument, it should be noted that those goods are included in the ‘devices for automated parking checks and number plate recognition’ covered by the earlier mark and included in Class 9. Such goods are therefore included in a more general category covered by the earlier mark and must be considered as identical, on the basis of the case-law recalled in paragraph 26 above. In those circumstances, it should be noted that the services at issue, which ensure the proper functioning of goods covered by the mark applied for, are complementary to ‘devices for automated parking checks and number plate recognition’ covered by the earlier mark.
58 Moreover, the applicant does not introduce any specific information to challenge the finding of the Board of Appeal that all those goods and services may be offered by the same producer, may be shared by the same distribution channels and target the same relevant public and no part of the case file allows for such a finding to be questioned.
59 Lastly, it should be noted that the applicant does not challenge the substance of the assessment of the Board of Appeal set out in paragraph 62 of the contested decision, but only its reasoning. In those circumstances, and taking account of the analysis made in the context of the comparison of the goods at issue in Class 9, and whereas nothing in the case file allows it to be questioned, the assessment of the Board of Appeal should be confirmed, as set out in paragraph 62 of the contested decision, that, in essence, the goods to which ‘maintenance services (servicing, repair)’ of electronic machines for dispensing parcels and/or goods, electronic apparatus for issuance of public transport tickets, electronic apparatus for writing for memory cards used in parking terminals, parking meters, time and date stamping machines, electronic apparatus for issuance of public transport tickets’, covered by the mark applied for and included in Class 37, have a similarity to an average degree with the ‘card readers’ and the ‘apparatus for the transmission of data’ covered by the earlier mark. It is also necessary to confirm the finding that those goods and those services are complementary and generally share the same producer, the same channels of distribution and are addressed to the same public.
60 It follows that the line of argument of the applicant concerning the comparison of the services in Class 37 covered by the mark applied for with the goods of Class 9 covered by the earlier mark must be rejected and the assessment of the Board of Appeal with regard to that point upheld.
– The services in class 38 covered by the mark applied for
61 In paragraph 63 of the contested decision, the Board of Appeal upheld the assessment of the Opposition Division that the ‘transmission of data from parking pay points, parking meters, time recorders, automatic parking lot pay terminals, vehicle recharge points and electronic apparatus for issuing transportation tickets to a computer center (one or more computers), for real-time management of parking lots, electric vehicle recharging points and seats on public transportation’, the services of ‘transmission and reception of information, messages, via mobile telephones’, services of ‘information transmission from a computer data bank’ and ‘information transmission services concerning news via mobile telephone’ covered by the mark applied for and in Class 38 are included in the more general category of services for the ‘transmission of data’ covered by the earlier mark and that, for that reason, they are identical.
62 It is apparent, in addition, from paragraphs 64 to 67 of the contested decision, that the Board of Appeal found, in essence, that the ‘call centre services (electronic communications)’ and ‘telecommunication services in relation to vehicle parking, rental of car parking spaces, public transport, carpooling, car-sharing, car rental’ covered by the mark applied for and in Class 38 are, in part, identical, and in part, similar to varying degrees to ‘telecommunications services’, to ‘mobile telephone services, radio communication services and the provision of access to application software (apps) for the provision of information on the internet for the search, reservation, use and payment of parking spaces’ covered by the earlier mark and in the same class.
63 The applicant claims that the ‘information transmission services concerning news via mobile telephone’ covered by the mark applied for do not have the same nature, the same purpose, or the same intended use as the ‘telecommunication services’, the mobile telephone services, radio communication services and the provision of access to application software (apps) for the provision of information on the internet for the search, reservation, use and payment of parking spaces’ and the ‘transmission of data services’ covered by the earlier mark.
64 EUIPO and the intervener dispute the applicant’s arguments.
65 In the present case, as the Board of Appeal correctly noted in paragraph 63 of the contested decision, the identity of the disputed services results from the fact that they are included in part in the general category of services of ‘transmission of data’ of the earlier mark. In relation to the services connected to telecommunications, analysed in paragraphs 64 to 67 of the contested decision, they are, as the Board of Appeal correctly pointed out, in part, identical, and in part, similar, to ‘telecommunication services for the search, reservation, use and payment of parking spaces’ covered by the earlier mark, since they fall within the same general category.
66 In those circumstances, the Board of Appeal did not err in its assessment in finding that the goods and services in Class 38 and covered by the mark applied for are, in part, identical, and in part, similar, to varying degrees, with those covered by the earlier mark in the same class.
67 In view of all of the foregoing, the applicant is not justified in calling into question the assessments of the Board of Appeal concerning the comparison of the goods and services at issue.
The comparison of the signs
68 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
69 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42). That could 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 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 71).
70 The assessment of the similarity of the signs at issue is to be carried out in the light of those considerations.
71 In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the signs at issue.
– The distinctive and dominant elements
72 In paragraph 79 of the contested decision, the Board of Appeal recalled that the word elements have generally a greater impact on the consumer than the figurative components.
73 From that perspective, the Board of Appeal pointed out, in paragraph 81 of the contested decision, that the component ‘flow’ of the earlier mark, perceived by the English-speaking part of the relevant public as ‘a steady, continuous stream or supply of something’, has a slightly below-average distinctiveness, for a part of the relevant goods and services, namely those that have to do with traffic or transport, similar to the ‘traffic management services’ in Class 39. According to the Board of Appeal, for the remainder of the goods and services, that component has an average degree of inherent distinctiveness, given that it does not describe their essential characteristics.
74 With regard to the mark applied for, the Board of Appeal found, in paragraphs 76 and 82 of the contested decision, that the relevant public broke it down into two words, namely the words ‘flow’ and ‘bird’. The word ‘bird’ is understood by the relevant public as designating among other things, and in essence, ‘a bird’. In so far as that word element is not descriptive, allusive or weakly distinctive with regard to the relevant goods or services, the Board of Appeal held that it has an average degree of inherent distinctiveness. It added that the figurative component of that sign is essentially of a decorative nature and does not convey any clear concept.
75 The applicant argues that the distinctive and dominant element of the earlier mark is its figurative element and that the comparison of the signs at issue must be carried out ‘more realistically’ between that element of the earlier mark and the mark applied for.
76 With regard to the goods and services related to traffic or transport, the applicant submits that the element ‘flow’ is devoid of any distinctive character or has weak distinctive character, given that it describes characteristics of the goods and services in question, namely the fact that they are intended for the management of live information and thus a continuous stream of information. As evidence for this, the applicant submits extracts of Google search results after entering the search terms ‘flow’ and ‘car park’, the definitions of ‘flow’ from dictionaries and an article from Wikipedia on the term ‘traffic flow’.
77 EUIPO and the intervener dispute the applicant’s arguments.
78 With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002, Matratzen 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).
79 Furthermore, the distinctive character of an element making up a mark depends on the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).
80 Moreover, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark (judgments of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37, and of 31 January 2012, Cervecería Modelo v OHIM – Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, not published, EU:T:2012:36, paragraph 38).
81 In the present case, first, the earlier mark contains the word element ‘flow’ in stylised blue capital letters and in italics and, on its left side, the figurative element representing a white figure consisting in three horizontal lines of different lengths that could be perceived as the capital letter ‘F’, on a green rectangular background. Secondly, the mark applied for is made up of the word element ‘flowbird’ written in capital letters, and figurative elements, namely a background of a clear grey colour and a darker grey element of a decorative nature resembling a splash of dots appearing beneath the word element.
82 As regards the dominant elements of the earlier mark, it is clear that although its figurative element does not go unnoticed, the attention of the public will converge instantly on the word ‘flow’ that is particularly visible, which has a size, taking account of its width, much greater than that of the figurative element.
83 Similarly, regarding the mark applied for, the attention of the public will be drawn to the word element ‘flowbird’, in light of both its position and greater size than those of the figurative elements. It should be observed that the clear grey background of the mark applied for and the dark grey figurative element resembling a splash of dots appearing beneath the word element are purely decorative in nature.
84 As regards the distinctive character of the components of the earlier mark, the term ‘flow’ has an average or slightly below-average distinctiveness concerning the services and goods at issue. As the Board of Appeal correctly points out, that term, that will be understood by a part of the relevant public, as ‘a steady, continuous stream or supply of something’ could allude to the fact that some goods and services at issue, relating to traffic or transport, transmit information on a continuous stream of traffic. However, including for such goods or services, and contrary to that claimed by the applicant, the term ‘flow’ is vague and does not convey any clear meaning to the average consumer. It leaves room for the public to interpret the characteristics of the goods or services identified by that term, with the result that their essential characteristics cannot be described in a clear manner.
85 Therefore, the applicant’s argument with regard to the dominant and distinctive character of the earlier mark must be rejected as unfounded.
86 Consequently, the applicant’s argument that the comparison of the signs at issue should be made between the figurative element of the earlier mark and the mark applied for, should be rejected. The Board of Appeal did not, therefore, err in its assessment comparing each of the marks at issue as a whole.
– Visual comparison
87 The Board of Appeal held that the signs at issue were visually similar to an average degree, given that the element ‘flow’ – the only word element of the earlier mark – is reproduced in its entirety in the mark applied for and corresponds to the initial part thereof. It recalled that the consumers paid generally more attention to the start of a word sign than its end. In addition, the signs differed in their figurative elements and their stylisation. So far as concerns the figurative elements of the signs at issue, the Board of Appeal referred to the case-law that, in principle, where the signs are made up of both word and figurative elements, the word element of the sign has generally a greater impact on the consumer than the figurative element.
88 The applicant submits that the Board of Appeal was not correct in finding that the degree of visual similarity between the signs at issue is average. On the contrary, it argues that the signs differ greatly. So far as concerns the figurative elements, they have no point in common. The applicant states that the word element of the mark applied for is much longer than that of the earlier mark and is in bold, straight letters whereas the earlier mark is in blue, italic letters. The applicant also disputes the Board of Appeal’s finding that the word element of a sign usually has a greater impact on the consumer than the figurative element in view of the very weak distinctive character of the word element ‘flow’ of the earlier mark.
89 EUIPO and the intervener dispute the applicant’s arguments.
90 In the present case, it must be stated that the signs at issue share the common word element ‘flow’. By contrast, first, the word element ‘bird’ only appears in the mark applied for and, secondly, the graphic representation of the signs is different, as regards both their figurative elements and their stylisation, the font or even the typographic typeface of their word elements.
91 Nevertheless, the initial part of the mark applied for is identical to the only word element of the earlier mark. Furthermore, the mark applied for includes the word element of the earlier mark in its entirety, namely the word ‘flow’. Those similarities will thus be noticed immediately and easily be remembered by the relevant public.
92 To the extent that the earlier mark is entirely included in the mark applied for, the difference consisting in the addition of the element ‘bird’ at the end of the mark applied for is not sufficiently great to cancel out the similarity arising from the coincidence of the element ‘flow’ (see, to that effect, judgment of 28 October 2009, X-Technology R & D Swiss v OHMI – Ipko-Amcor (First-On-Skin), T‑273/08, not published, EU:T:2009:418, paragraph 34 and the case-law cited).
93 The word element ‘flow’ constitutes the entirety of the only word element of the earlier mark and the initial part of the mark applied for.
94 Therefore, the Board of Appeal correctly found that, from a visual point of view, the mark applied for was similar to an average degree with the earlier mark.
– Phonetic comparison
95 The Board of Appeal found that the signs in question were similar to an average degree from a phonetic point of view. In that regard, it found that the signs at issue coincided in the pronunciation of the letters of the word ‘flow’, at the beginning of the word element of the mark applied for. It observed that the initial part of the word elements of a mark attract the attention of consumers more than the latter parts and noted that the differences between the signs at issue concerning, in particular, the number of their syllables, had the least bearing.
96 The applicant claims that the word element ‘flow’ of the earlier mark is short and that its pronunciation is smooth, soft and labial, while the word element ‘flowbird’ is longer and has a harder and more guttural pronunciation. The signs thus differ in their rhythms and the nature of sounds that they make. It submits that the phonetic structure of the signs at issue shows that the sounds they make are radically different. In addition, the Board of Appeal itself pointed out significant phonetic differences.
97 EUIPO and the intervener dispute the applicant’s arguments.
98 It must be observed that the pronunciation of the mark applied for includes the entire pronunciation of the earlier mark, which necessarily supposes a degree of similarity, particularly because the word ‘flow’ will be read first. Since the consumer generally pays greater attention to the beginning of a mark than to its end, the term ‘flow’ plays a significant role in the perception from a phonetic point of view of the mark applied for (see, to that effect, judgment of 7 September 2006, PAM-PIM’S BABY-PROP, T‑133/05, EU:T:2006:247, paragraph 51).
99 Furthermore, the word element ‘bird’, specific to the mark applied for, admittedly results in a difference in sound between the signs in question, but does not affect the similarity from a phonetic point of view between the only word element in the earlier mark, ‘flow’, and the first word element in the mark applied for.
100 It must therefore be stated that, assessed as a whole, the difference in sound between the signs at issue does not make it possible to conclude that the similarity from a phonetic point of view resulting from the first word element is cancelled out by the presence of the word element ‘bird’.
101 Therefore, it must be found that the signs at issue are similar to an average degree from a phonetic point of view.
– Conceptual comparison
102 From a conceptual point of view, according to the Board of Appeal, the signs are similar to an average degree, considering that the signs are associated with the same meaning conveyed by the word ‘flow’, but differ by the concept conveyed by the word ‘bird’ of the mark applied for.
103 The applicant submits that the Board of Appeal was wrong to find that the signs at issue are similar to an average degree. The applicant claims that the word element ‘flowbird’ of the mark applied for does not have any meaning in English and that, for that reason, it is entirely made up and therefore highly distinctive. Should the mark applied for be understood as referring to birds, then it would evoke the freedom of the bird and its capacity to fly freely, but would not in any case refer to the meaning of a flow of information on the part of the relevant public.
104 According to the applicant, the word element ‘flow’ of the earlier mark is a direct reference to the flow of information regarding parking that the undertaking is promising to its customers, and the flow of fluids, and traffic. The applicant observes that the figurative elements of each of the signs at issue does not have any particular conceptual meaning. They cannot establish the slightest similarity from a conceptual point of view of the signs at issue, as the earlier mark directly refers to a stream of information while the mark applied for is fanciful and abstract. The applicant also puts forward the decisions of the French trademark office (INPI, France), the Paris Court of Appeals (France), the Patentstyret (the Norwegian Industrial Property Office) and the United Kingdom Intellectual Property Office, which recognised that the signs at issue were different.
105 EUIPO and the intervener dispute the applicant’s arguments.
106 It must be pointed out that, 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, he or she will break it down into word elements which, for him or her, suggest a specific meaning or which resemble words known to him or her (see judgment of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 24 and the case-law cited).
107 In the present case, the English-speaking part of the relevant public breaks down the word element ‘flowbird’ of the mark applied for in two words, namely the words ‘flow’ and ‘bird’.
108 In so far as concerns the earlier mark, the applicant does not dispute the finding of the Board of Appeal that that mark refers to a ‘stream of something’ for the relevant public. There is nothing in the case file that casts doubt on that finding.
109 As regards the mark applied for, as stated correctly by the Board of Appeal in paragraph 87 of the contested decision, the difference introduced by the additional element ‘bird’ must be recognised and taken into consideration.
110 However, that conceptual difference is limited, given the presence of the word ‘flow’ in the signs at issue. Common to those marks, that term constitutes the only word element of the earlier mark. Accordingly, it plays an important role in the perception of those signs. Its presence in both signs enables a certain conceptual similarity for the part of the relevant public capable of understanding the meaning of the common element ‘flow’ as conveying the idea of a stream or of traffic. That similarity is all the more easily perceived by the relevant public where the word element ‘flow’ refers to goods and services at issue that have to do with traffic and transport.
111 As regards the decisions of the national trademark offices put forward by the applicant, it should be borne in mind that, according to the case-law, the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (judgment of 10 July 2014, Peek & Cloppenburg v OHIM, C‑325/13 P and C‑326/13 P, not published, EU:C:2014:2059, paragraph 55). Neither the Board of Appeal nor, as the case may be, the Courts of the European Union are bound – even if they may taken them into consideration – by decisions adopted in a Member State or in a State that is not a member of the European Union (see judgment of 24 March 2010, 2nine v OHIM – Pacific Sunwear of California (nollie), T‑364/08, not published, EU:T:2010:115, paragraph 52 and the case-law cited).
112 In the light of the foregoing considerations, it must be held that the assessment of the Board of Appeal that the signs are similar to an average degree, from a conceptual point of view, is not vitiated by any error.
Overall assessment of the likelihood of confusion
113 According to settled case-law of the Court of Justice, the existence of a likelihood of confusion depends on numerous factors, in particular the recognition of the earlier mark on the market, the association which can be made with the mark applied for, and the degree of similarity between the marks at issue and between the goods identified. The likelihood of confusion must therefore be assessed globally, taking into account all the relevant factors of the particular case (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 41 and the case-law cited).
114 In a global assessment of the likelihood of confusion, the Board of Appeal held that, accounting for, respectively, the identity or the similarity of the goods and services at issue, the average degree of similarity from a visual, phonetic and conceptual point of view, the slightly below-average distinctiveness of the earlier mark for goods referring to traffic and transport, a normal level of distinctiveness thereof for the other goods, and notwithstanding the high level of attention of a part of the public with regard to certain goods and services at issue, there was a likelihood of confusion on the part of the relevant public. In addition, the relevant public could perceive the mark applied for as being a sub-brand or a variation of the earlier mark.
115 The applicant disputes those assessments. The applicant claims, in essence, that the Board of Appeal was wrong in finding that there was a likelihood of confusion on the part of the relevant public, because the differences between the signs at issue should have outweighed any potential similarity between the goods and services in question.
116 EUIPO and the intervener dispute the applicant’s arguments.
117 In the present case, first, it should be recalled, as was established in paragraphs 24 to 67 above, that the goods and services referred to by the mark applied for in Classes 9, 35, 37 and 38 have an identity or similarity to varying degrees with the goods and services covered by the earlier mark. Secondly, it is apparent from the examination made in paragraphs 68 to 112 above that there is an average degree of similarity from a visual, phonetic and conceptual point of view between the two signs at issue.
118 In addition, and although the applicant does not provide any specific information in that regard, nothing in the case file allows for bringing the Board of Appeal’s assessment into question that the relevant public could perceive the mark applied for as a variation of the earlier mark identifying a new range of goods and services. As the signs at issue share the common word element ‘flow’, it is possible that the consumer concerned may consider that the goods and services at issue, while likely relating to two distinct types of goods and services, are from the same undertaking. The Board of Appeal accordingly did not err in its assessment in holding, in paragraph 96 of the contested decision, that the relevant public could consider the mark applied for as a sub-brand of the earlier mark identifying another range of goods and services.
119 In those circumstances, it should be observed that the Board of Appeal correctly held that the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 was established in the present case, despite the slightly below-average distinctiveness of the earlier mark for certain goods and services and the fact that a part of the public displayed a higher level of attention for certain goods and services at issue.
120 In the light of all of the foregoing considerations, the first plea in law must be rejected.
The second plea, alleging an inadequate statement of reasons
121 The applicant claims that the contested decision is vitiated by a failure to state reasons in several of its findings. That affects thus the assessment of the Board of Appeal regarding the comparison of the marks at issue from a phonetic point of view, the comparison of the goods identified by the marks at issue in Class 9 as well as the comparison of the services at issue in Classes 35, 37 and 38. The applicant also submits that the global assessment of the likelihood of confusion is vitiated by an inadequate statement of reasons, regarding, in particular the similarity of the goods and services at issue or even the finding that the mark applied for could be perceived as a sub-brand of the earlier mark.
122 During the hearing, the applicant asserted, in essence, that the wording adopted by the Board of Appeal was too vague in order to understand the position actually defended by the Board of Appeal in support of the contested decision.
123 EUIPO and the intervener dispute the applicant’s arguments.
124 As a preliminary point, it should be borne in mind that the plea based on a failure to state reasons constitutes a plea that is distinct from that alleging an infringement of Article 8(1)(b) of Regulation 2017/1001. The fact that, in the present case, the applicant submitted its case alleging a failure to state reasons in the context of the arguments concerning the infringement of that provision does not preclude its examination by the Court as a separate plea.
125 The obligation to state reasons, an obligation incumbent on the Board of Appeal and which follows inter alia from Article 94(1) of Regulation 2017/1001, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights, and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see judgment of 19 December 2019, Currency One v EUIPO – Cinkciarz.pl (CINKCIARZ), T‑501/18, EU:T:2019:879, paragraph 67 and the case-law cited).
126 In that regard, it may be recalled that the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if they set out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19).
127 In the present case, it is apparent from paragraphs 30 to 32, 47, 52, 61, 62, 95 and 114 above that the reasoning followed in the contested decision concerning, respectively, the comparison of the goods and services at issue, the comparison of the marks at issue from a phonetic point of view and the global assessment of the likelihood of confusion set out, contrary to what the applicant claimed, in a clear and unequivocal manner the essential considerations for which the Board of Appeal held that the provisions of Article 8(1)(b) precluded, in the present case, the registration of the mark applied for in respect of those goods and services.
128 Such a statement of reasons has thus enabled the applicant to understand the contested decision and dispute its lawfulness, as evidenced by the arguments submitted by the applicant in the present appeal.
129 In addition, as is apparent from the examination of the first plea of the appeal, the statement of reasons of the contested decision was sufficiently detailed to enable the Courts of the European Union to review its merits.
130 In those circumstances, the applicant cannot submit that the contested decision is vitiated by a failure to state reasons, with the result that the second plea must be dismissed.
131 In the light of all of the foregoing, since the two pleas have been rejected, the action must be dismissed.
Costs
132 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.
133 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Flowbird to pay the costs.
Marcoulli | Schwarcz | Valasidis |
Delivered in open court in Luxembourg on 11 October 2023.
V. Di Bucci | | S. Papasavvas |