JUDGMENT OF THE GENERAL COURT (First Chamber)
8 November 2016 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark fortune — Earlier German word mark FORTUNE-HOTELS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑579/15,
For Tune sp. z o.o., established in Warsaw (Poland), represented by K. Popławska, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Gastwerk Hotel Hamburg GmbH & Co. KG, established in Hamburg (Germany),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 August 2015 (Case R 2808/2014-5), relating to opposition proceedings between Gastwerk Hotel Hamburg and For Tune,
THE GENERAL COURT (First Chamber),
composed, at the time of the deliberation, of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 October 2015,
having regard to the response lodged at the Court Registry on 22 December 2015,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks from notification of closure of the written procedure, and having decided to rule on the action without an oral procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 14 January 2013, the applicant, For Tune sp. z o.o., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was sought are, inter alia, in Classes 35 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 35: ‘Advertising; business management; business administration; office functions’ and all the services of the alphabetical list in this class of the 10th edition of the Nice Classification (2013);
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’ and all the services of the alphabetical list in this class of the 10th edition of the Nice Classification (2013).
4 The EU trade mark application was published in Community Trade Marks Bulletin No 98/2013 of 28 May 2013.
5 On 19 June 2013, Gastwerk Hotel Hamburg GmbH & Co. KG filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the services in Classes 35 and 41.
6 The opposition was based on the earlier German word mark FORTUNE-HOTELS, filed on 22 December 2007 under No 30783223 and registered on 3 April 2008, covering, inter alia, services in Classes 35 and 41 corresponding, for each of those classes, to the following description:
– Class 35: ‘Advertising; business management; business administration; office work; market research; hosting of exhibitions’;
– Class 41: ‘Entertainment; conducting of tutorials; meetings and continuing education courses’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 By decision of 19 December 2013, the Opposition Division upheld the opposition for part of the services designated in the application, some of which were considered identical and some similar to the services covered by the earlier mark (‘the services at issue’), while rejecting the opposition for ‘auctioneering and rental of vending machines’ in Class 35 and ‘electronic desktop publishing; subtitling; translation; sign language interpretation; calligraphy services; layout services, other than for advertising purposes; language interpreter services’ and ‘animal training’ in Class 41, designated by the mark applied for.
9 On 3 November 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 7 August 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. As regards the relevant public, the Board of Appeal took the view that it was appropriate to take into consideration the German public and that the services in Class 35 were, in essence, directed at a professional public, whereas the services in Class 41 were directed at both the general and the professional public, concluding that the level of attention of the relevant public was at least average. In respect of the comparison of the services at issue, the Board of Appeal endorsed the Opposition Division’s assessment as referred to in paragraph 8 above in its entirety and observed that the parties had not put forward any argument in that regard. Concerning the comparison of the marks at issue, it found, first, that the dominant element was the word ‘fortune’ and, secondly, that from a visual and phonetic viewpoint, the signs had an average degree of similarity and that a certain degree of conceptual similarity could not be excluded. Consequently, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14 It should be recalled that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the 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 trade mark.
15 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
16 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
17 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU;T:2007:46, paragraph 42 and the ease-law cited).
18 The applicant maintains that the Board of Appeal erred in finding that the relevant public consists solely of the average consumer in Germany with an average degree of attention. It submits that the level of attention of consumers tends to be above average when purchasing the services at issue. It states that that is the case, inter alia, in respect of office work, business management, entertainment, education and advertising services.
19 EUIPO contests the applicant’s arguments.
20 The Board of Appeal was right to find, first, in paragraph 15 of the contested decision that, insofar as the earlier trade mark was a German trade mark, it was necessary to assess the likelihood of confusion with regard to the German public and, secondly, in paragraph 16 of that decision, that the services at issue were business services in Class 35, mostly directed at business customers, and entertainment services in Class 41, directed both at the general public and professionals in that sector. Those findings are, moreover, not contested by the parties.
21 It is in that context that the Board of Appeal noted appositely that, where two marks are intended for the same public, which consists both of the general public and professional clients, the public with the lowest attention level must be taken into consideration for the purposes of the assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 29).
22 Contrary to what is stated by the applicant, it cannot, however, be inferred from the contested decision, in particular paragraph 18 of that decision, that the Board of Appeal took into consideration only the average consumer with an average level of attention for the purpose of assessing the likelihood of confusion with regard to all the services at issue.
23 In paragraph 18 of the contested decision, the Board of Appeal merely observed that, as most of those services were not bought on a daily basis, the level of attention of the average consumer of those services was, in any event, ‘at least’ average, and that it could not be ruled out, as regards in particular the services intended for professionals only, that the level of attention of consumers might be above average.
24 The applicant’s complaint alleging an incorrect assessment of the relevant public must therefore be rejected.
Comparison of the services
25 The parties have not called into question the Board of Appeal’s finding in paragraphs 21 to 23 of the contested decision, which must be upheld, that the services at issue were in part identical and in part similar.
Comparison of the signs at issue
26 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
27 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspect, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 89).
28 Moreover, the 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all of 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). 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 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
29 In the present case, the trade marks to be compared are the figurative sign fortune, the initial letter ‘f’ of which is oversized and written in a stylised manner, whereas the other letters are represented in standard characters, the three first letters in red, the last four letters in black, followed by the symbol ‘®’, and the earlier word sign FORTUNE-HOTELS.
Visual similarity
30 As regards the visual comparison, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
31 In the present case, the Board of Appeal took the view, in paragraph 26 of the contested decision, that the dominant element of the two signs was the element ‘fortune’, which identified the undertaking in the earlier trade mark, whereas the word ‘hotels’ referred to the category or kind of establishment providing the services in question. In paragraph 27 of the contested decision, the Board of Appeal concluded that there was an average degree of visual similarity since the signs at issue both contained the word element ‘fortune’, even though there were differences due to the second word element ‘-hotels’ in the earlier mark and the ‘®’ symbol and because of the stylisation and the combination of colours in the mark applied for.
32 The applicant maintains that the Board of Appeal was wrong to consider that the element ‘fortune’ was dominant in the marks at issue. According to the applicant, the signs at issue are totally different from a visual point of view, having regard to the differences between their graphic elements and their spelling. In that regard, the applicant argues that, contrary to the assessment made by the Board of Appeal, the figurative mark applied for is composed of two elements, namely the element ‘for’, represented in red and the letter ‘f’ of which is stylised as in the sign ‘forte’ in music scores, and the element ‘tune’, represented in black. According to the applicant, the Board of Appeal underestimated the strong character of the first element ‘for’, which, because of its position at the beginning of the sign, is clearly perceived and retained by the relevant public and cannot be dominated by other elements. Furthermore, the applicant maintains that it is highly likely that the average consumer with a basic knowledge of English will separate the sign into two elements, ‘for’ and ‘tune’, perceived as an expression referring exclusively to music, which is substantiated by websites such as ‘www.fortunemusic.jp’, ‘www.for-tune.pl’, ‘www.stockmusic.com’, ‘www.musicdays.pl’ or ‘www.audiojungle.net’.
33 EUIPO contests the applicant’s arguments.
34 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, 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 (judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47).
35 Furthermore, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of that mark (see, to that effect, judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 38 and the case-law cited).
36 With regard to the assessment of the dominant character of one or more given components of a composite 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 as an incidental point, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35).
37 First, the Court endorses the Board of Appeal’s assessment that it is the word ‘fortune’ which will be noticed by a substantial part of the relevant public in the overall impression created by the sign applied for rather than the two word elements ‘for’ and ‘tune’, as the applicant maintains to the contrary. The first three letters, which are red, and the four following letters, which are black, all of the same size, are not separated by a space, dash or any other symbol by which it would be possible to identify two separate words. Furthermore, neither the stylisation of the oversized letter ‘f’ nor the representation of the letters ‘f’ ‘o’ ‘r’ in red and the letters ‘t’ ‘u’ ‘n’ ‘e’ in black, in the mark applied for are sufficiently original or striking to justify the conclusion that the figurative elements hold an equivalent position to that of the word element or, consequently, to alter the perception of a substantial part of the relevant public of the letter sequence constituting the word ‘fortune’ in that trade mark as a single word.
38 That is all the more the case because, as the Board of Appeal noted in paragraph 29 of the contested decision, the French and English word ‘fortune’ has entered the German language, as is, moreover, confirmed by the German online dictionary Duden, a source which is widely available to the general public referred to by EUIPO and, therefore, understood by a substantial part of the relevant public as signifying ‘chance or luck as an arbitrary force affecting human affairs’, unlike the expression ‘for tune’, which the applicant has failed to establish has entered the German language and is used by the relevant public in Germany as, moreover, is illustrated by the examples of the websites referred to by the applicant, which do not exist in German. Therefore, as the Board of Appeal was right to observe, it is highly unlikely that the relevant German public will perceive the mark applied for as referring to the play on words relating to ‘for tune’, even from a visual point of view.
39 The Board of Appeal’s assessment, in paragraph 26 of the contested decision, that the word ‘fortune’ is the dominant element in the two signs must also be upheld.
40 The sole word element ‘fortune’ in the mark applied for clearly constitutes the dominant element of that mark, the presence of figurative elements appearing secondary, in that those elements are either purely decorative, in the case of the stylisation, the oversized letter ‘f’ at the beginning of the sign and the colour of the first three letters, which, as has been noted previously, is not particularly striking or original, or banal, in the case of the ‘®’ symbol.
41 Moreover, the word element ‘fortune’ in the earlier mark also has a dominant and distinctive character, the relevant public perceiving the word element ‘hotels’ of that mark as simply referring to the category or kind of establishment offering the services in question, whereas the element ‘fortune’, which does not contain any direct reference to the services in question, is perceived as identifying the undertaking in the word combination. The first word element is all the more likely to be the dominant element since the public generally pays greater attention to the beginning of a mark than to the end (see judgment of 25 March 2009, L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30 and the case-law cited).
42 Consequently, as was correctly pointed out in paragraph 27 of the contested decision, the marks at issue have average visual similarity. The word element ‘hotels’ of the earlier mark, the hyphen, which, in the perception of the relevant public, is negligible, the symbol ‘®’, which can be added to any registered mark, and the stylisation and colour combination of the mark applied for are not such as to call into question the conclusion that the marks at issue are similar as a result of the common word ‘fortune’, which does not appear in a particular font and is the dominant and most distinctive element of the marks at issue.
43 That conclusion is all the more compelling since the fact that the word element of the sign applied for is included in the earlier sign reinforces the visual similarity of those signs (see, to that effect, judgment of 15 June 2011, Graf-Syteco v OHIM — Teco Electric & Machinery (SYTECO), T‑229/10, not published, EU:T:2011:273, paragraph 34).
44 Lastly, contrary to the assertions made by the applicant, a general rule cannot be inferred from the case-law of the General Court (judgment of 4 February 2014, Mega Brands v OHIM — Diset (MAGNEXT), T‑604/11 and T‑292/12, not published, EU:T:2014:56, paragraph 29), according to which where a mark including a dominant word element also has a figurative element, that will necessarily, in the overall impression created by the mark, tend to diminish the similarity between that word element and another identical or similar word element.
Phonetic similarity
45 In the present case, the Board of Appeal found, in paragraph 28 of the contested decision, an average degree of phonetic similarity between the marks at issue, on the ground that the two first syllables ‘for’ and ‘tune’ are the same and are pronounced in the same way in both marks, whereas the symbol ®, present only in the mark applied for and indicating the legal status of that mark, was not pronounced.
46 The applicant maintains that the signs at issue are phonetically different. First, the term ‘hotels’ in the earlier mark is not present in the mark applied for. Second, in the mark applied for, unlike the earlier mark, the accent is placed on the element ‘for’, which is stylised and in a different colour to that of the other letters of the mark applied for.
47 EUIPO contests the applicant’s arguments.
48 The Board of Appeal’s assessment must be upheld. Whilst the mark applied for is composed of two syllables, namely ‘for’ and ‘tune’, whereas the earlier mark is composed of four syllables, namely ‘for’, ‘tune’, ‘ho’ and ‘tels’, the fact that the number of syllables is different is not sufficient to rule out any similarity between the marks, which must be assessed on the basis of the overall impression produced by their full pronunciation (see judgments of 28 October 2010, Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 39 and the case-law cited, and of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 50).
49 In the present case, in the light of the overall impression created by the signs at issue, the relevant public will pay greater attention to the two first syllables, ‘for’ and ‘tune’, of the earlier mark. Furthermore, the two syllables of the mark applied for are present in the four syllables of the earlier mark and they are, moreover, pronounced in the same order and in the same way, the element ‘fortune’ being understood in the two signs as referring to the word ‘fortune’, as is apparent, inter alia, from paragraphs 37 and 38 of the present judgment. In addition, it has previously been held that signs are phonetically similar where the word element of a mark is reproduced in its entirety in another mark (see, to that effect, judgment of 2 February 2012, Almunia Textil v OHIM — FIBA-Europe (EuroBasket), T‑596/10, not published, EU:T:2012:52, paragraph 38 and the case-law cited).
50 In addition, as the Board of Appeal also observed, correctly, it is common ground that the symbol ‘®’, added to the end of the mark applied for, is not pronounced. Lastly, the hyphen between the syllables ‘tune’ and ‘ho’, present only in the earlier mark, has no phonetic impact.
51 Therefore, the Board of Appeal was right to conclude that there was an average degree of phonetic similarity between the signs at issue, bearing in mind the absence of the word element ‘hotels’ in the mark applied for.
Conceptual similarity
52 The Board of Appeal concluded, in paragraph 29 of the contested decision, that a certain degree of conceptual similarity between the signs at issue could not be ruled out. A substantial part of the German public would understand the word ‘fortune’, common to the marks at issue, as meaning, in English in particular, ‘chance or luck as an arbitrary force affecting human affairs’, since it is highly unlikely that the public would perceive the word ‘fortune’ in the mark applied for as referring to the music-related expression ‘for tune’, notwithstanding the red colour of the first three letters ‘for’, in contrast to the four letters ‘tune’, represented in black. However, the fact remains that account must also be taken of the conceptual difference between the conflicting marks resulting from the presence of the word ‘hotels’ in the earlier mark, which refers to hotels designated by the name ‘fortune’.
53 The applicant claims that there is no or, at most, an extremely low degree of conceptual similarity between the signs at issue. It argues that because of the visual perception of the sign applied for, the average German consumer, who understands basic English, will break it down into two elements, the first, ‘for’, being a frequently-used preposition, and the second, ‘tune’, referring to sound or music or the action of agreeing, adapting, harmonising or adjusting.
54 EUIPO contests the applicant’s arguments.
55 The Board of Appeal’s assessment must be upheld.
56 As regards the conceptual similarity, it should be noted, first, that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, the consumer will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited).
57 As stated in paragraph 38 of the present judgment, the Board of Appeal was correct in finding, in paragraph 29 of the contested decision, that, conceptually, a large part of the German public would perceive the word element ‘fortune’, common to the two signs at issue, as referring to luck, chance, fate, destiny or success.
58 As is apparent from paragraph 41 of the present judgment, the Board of Appeal was also correct to state, in paragraph 29 of the contested decision, that German consumers identified the word ‘hotels’ as the category or kind of establishment providing the various services at issue, in concluding that, on the whole, a certain degree of conceptual similarity between the marks at issue resulting from the word ‘fortune’, the dominant element common to both marks, cannot be ruled out, even though, as the applicant maintains, the relevant public does not associate the mark applied for, composed solely of the element ‘fortune’, with the hotel sector.
59 It follows from the foregoing that the Board of Appeal did not err in the assessment of the visual, phonetic and conceptual similarities between the mark applied for and the earlier mark.
The likelihood of confusion
60 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the services covered. Accordingly, a low degree of similarity between those services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
61 The Board of Appeal held, in paragraphs 35 and 36 of the contested decision that, first, the services at issue were identical or similar and, secondly, the signs at issue were also similar, especially as the word ‘fortune’ was fully contained in the earlier mark and the mark applied for reproduced, albeit somewhat fancifully, the dominant element of the earlier mark, so that, in the overall impression created by the mark applied for, the relevant public might believe that the services came at least from economically-linked undertakings.
62 The applicant maintains that there is no likelihood of confusion between the marks at issue. As regards the services at issue, the applicant argues that its business, that is to say the recording and editing of music, is aimed at a specific and very narrow public. In respect of the signs at issue, the applicant submits that they have a low degree of visual and phonetic similarity and are conceptually different. In that regard, first, the applicant considers that the relevant public will retain in their minds the distinctive elements of the mark applied for, namely the red colour of the element ‘for’ and the black colour of the element ‘tune’ as well as the dominant graphic element, namely the stylised and over-sized letter ‘f’. Secondly, according to the applicant, the average consumer will not associate the word ‘fortune’ with the hotel sector. Furthermore, it argues that the abovementioned differences are sufficient to rule out the possibility that the public might believe that the services at issue come from the same undertaking or economically-linked undertakings.
63 EUIPO contests the applicant’s arguments.
64 As is apparent from paragraph 25 of the present judgment, the Board of Appeal was correct to hold that the services at issue are in part identical and in part similar. The contested decision must also be upheld inasmuch as the Board of Appeal concluded, in paragraphs 30 and 35 of that decision, that, having regard to the visual, phonetic and conceptual similarities between the marks at issue, those marks overall showed a normal degree of similarity, resulting from the presence of the word ‘fortune’ in the mark applied for, which was incorporated in full in the earlier mark and represented in the mark applied for, in a somewhat fanciful style, the dominant element of the earlier mark.
65 In accordance with the principle of interdependence, referred to in paragraph 60 of the present judgment, it must be found that there is a likelihood of confusion for the relevant public between the marks at issue, since that public is likely to believe that the services at issue come from the same undertaking or at least economically-linked undertakings because, first, the services at issue are in part identical and in part similar, which is, moreover, not disputed by the parties and, secondly, the signs at issue overall display visual, phonetic and conceptual similarities, as is clear from the foregoing considerations, even though, as the applicant observed, the other party to the proceedings before EUIPO did not claim that the earlier mark had an above average degree of distinctiveness, which could have increased the likelihood of confusion, in line with the case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
66 That conclusion is valid irrespective of the part of the relevant public referred to in paragraph 23 above. There is no basis for concluding that a substantial part of the public whose level of attention is above average, such as the professional public, might believe that the services at issue were from the same undertaking, or at least from economically-linked undertakings, especially as the considerations relating to the meaning of the word ‘fortune’ in German apply to the professional public and the general public alike.
67 Lastly, the applicant’s argument that the visual aspect is dominant in the present case, which would avoid any likelihood of confusion between the marks at issue, must be rejected. In that regard, apart from the fact that the applicant has failed to substantiate its claim that the services at issue will, in the main, be perceived visually, it is sufficient to note that, as is apparent from the foregoing considerations, the Board of Appeal was fully entitled to conclude that there was, in any event, an average degree of similarity from both the visual and phonetic point of view between the marks at issue and that the degree of similarity, taken as a whole, was normal.
68 Therefore, the Board of Appeal was fully entitled to conclude, in paragraph 36 of the contested decision, that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 as regards the services at issue.
69 For all those reasons, the applicant’s single plea in law must be rejected and the action therefore dismissed in its entirety.
Costs
70 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 (First Chamber),
hereby:
1. Dismisses the action;
2. Orders For Tune sp. z o.o. to pay the costs.
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 8 November 2016.