JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 January 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark labkable Solutions for cables – Earlier EU figurative marks LAPP KABEL STUTTGART and LAPP KABEL and earlier word mark LAPP – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑636/22,
U.I. Lapp GmbH, established in Stuttgart (Germany), represented by M. Ringer, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Labkable Asia Ltd, established in Kowloon (China), represented by R. Ciullo, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović and W. Valasidis (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 4 July 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, U.I. Lapp GmbH, seeks the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 July 2022 (Case R 1894/2021-2) (‘the contested decision’).
Background to the dispute
2 On 12 September 2019, the intervener, Labkable Asia Ltd, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark applied for covered goods in Class 9 within the meaning of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Cables, electric; connectors [electricity]; copper wire, insulated; electric sockets’.
4 On 3 January 2020, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the following earlier marks:
– the EU figurative mark reproduced below, registered on 14 November 2000 under number 988204, designating goods in Classes 9, 16 and 17 (‘the earlier mark No 1’):
– the EU figurative mark reproduced below, registered on 15 February 1999 under number 123158, designating goods in Classes 6, 7, 8, 9, 16 and 20 (‘the earlier mark No 2’):
– the EU word mark LAPP, registered on 13 October 1999 under number 124222, designating goods in Classes 6, 7, 8, 9, 16, 17 and 20.
6 The opposition was also based on the company name U.I. Lapp GmbH and the German trade names Lapp and Lapp Kabel used in the course of trade in Germany.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) and Article 8(4) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
8 Following the request made by the intervener, EUIPO asked the applicant to furnish proof that the earlier marks relied on in support of the opposition had been put to genuine use. The applicant complied with that request within the prescribed period.
9 The Opposition Division found that the evidence submitted by the applicant proved that there had been genuine use of the earlier marks No 1 and No 2 during the relevant period in the relevant territory in respect of the following goods in Class 9: ‘Electric cables; fibre-optic cables; wires for transmitting data; connecting elements for cables and wires and parts therefor, namely cable glands’. That assessment has not been called into question by the parties in the course of the proceedings.
10 On 20 October 2021, the Opposition Division, comparing the mark applied for with the earlier figurative marks No 1 and No 2, upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 in respect of all of the goods referred to in paragraph 3 above.
11 On 10 November 2021, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.
12 By the contested decision, the Board of Appeal took the view that there was no likelihood of confusion. It found that, notwithstanding the fact that the goods covered by the marks at issue are identical or highly similar, and taking account of the at least average, if not high level of attention of the relevant public in relation to some of the goods in question, the visual and conceptual differences between those marks were sufficient to offset their visual or phonetic similarities. The Board of Appeal added that the applicant’s commercial designation did not confer on it the right to prohibit the use of the mark applied for, since the differences between the signs at issue would also be sufficient to rule out the likelihood of confusion required by national law.
Forms of order sought
13 The applicant claims that the Court should:
– principally, alter the contested decision ‘so that the appeal filed by the Other Party [to the proceedings] with the Board of Appeal is dismissed’;
– alternatively, annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The interpretation of the principal head of claim
16 As a preliminary point, it should be noted that the applicant’s principal request for alteration necessarily entails the annulment of the contested decision, requested in the alternative, since the annulment of all or part of a decision constitutes a prerequisite to its alteration (judgment of 30 November 2006, Camper v OHIM – JC (BROTHERS by CAMPER), T‑43/05, not published, EU:T:2006:370, paragraph 99).
17 In those circumstances, it should be understood that the applicant seeks, principally, both the annulment and the alteration of the contested decision, the alteration being a precondition for the annulment (see, to that effect, judgment of 19 January 2022, Estetica Group Iwona Michalak v EUIPO (PURE BEAUTY), T‑270/21, not published, EU:T:2022:12, paragraph 14 and the case-law cited).
The claim for annulment
18 The applicant relies on three pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001, secondly, infringement of Article 8(4) of that regulation and, thirdly, infringement of the first sentence of Article 94(1) of that regulation.
19 In support of the first plea, the applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 in finding that there was no likelihood of confusion between the mark applied for and the earlier marks No 1 and No 2.
20 EUIPO and the intervener dispute the applicant’s arguments.
21 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
22 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 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).
23 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
24 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods/services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
The relevant public and its level of attention
25 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 case-law cited).
26 In the contested decision, the Board of Appeal found that the goods in question were aimed both at the general public and at professionals and stated that the level of attention with respect to those goods should be regarded as varying from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
27 The Board of Appeal specifically noted that some types of cables, such as fibre-optic cables and wires for transmitting data, covered by the earlier marks, were, however, only aimed at professionals with a high level of attention.
28 The Board of Appeal added that, since the earlier marks were EU trade marks, the relevant territory should be regarded as the whole of the territory of the European Union.
29 The applicant submits, in essence, that the fibre-optic cables are not relevant for the purpose of comparing the goods and that the goods which, according to the Board of Appeal, are purchased only by professionals, are also aimed at the general public. The level of attention of the general public in respect of all of the goods in question is nevertheless average. According to the applicant, the likelihood of confusion should be assessed in relation to the perception of the part of the public which displays the lowest level of attention, namely, in the present case, the general public. In any event, even the professional public displays only an average level of attention in respect of the fibre-optic cables and the wires for transmitting data.
30 EUIPO and the intervener dispute the applicant’s arguments. EUIPO states, in particular, that, in any event, the Board of Appeal also took into account the public with the lowest level of attention in its assessment of the likelihood of confusion.
31 As a preliminary point, it should be noted that since the earlier marks are EU trade marks, the relevant public is that of the whole of the territory of the European Union, as the Board of Appeal correctly found, which is not disputed.
32 It must further be borne in mind that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 25 and the case-law cited).
33 In the present case, it must be stated that the ‘fibre-optic cables’ in Class 9 are covered by the earlier marks. Therefore, in accordance with the case-law cited in paragraph 32 above, in so far as those goods are likely to be used by users of the goods covered by the mark applied for, they must be taken into account for the purpose of assessing the relevant public and its level of attention.
34 In addition, it should be observed that, notwithstanding the technical nature of the goods covered by the marks at issue, they are rather basic items of equipment which may also be purchased by the general public, in particular, for domestic purposes, at relatively cheap prices, in DIY stores or general retailers providing equipment for home improvement, or on business internet platforms, unlike installations and apparatus of a highly specialised nature, as the Opposition Division correctly stated.
35 In those circumstances, the relevant public, which consists, in the present case, both of the general public and of professionals, such as electricians or technicians in the telecommunications field, will have an average level of attention in respect of all of the goods covered by the marks at issue. That is a fortiori the case, contrary to the Board of Appeal’s opinion, in respect of the part of that public which consists of professionals, since professionals are likely to use the goods in question frequently, even daily.
36 The applicant is therefore justified in submitting that the Board of Appeal erred in taking into account a high level of attention of the public with regard to some types of cables, including ‘the fibre-optic cables’ covered by the earlier marks.
The comparison of the goods
37 The Board of Appeal took the view that the goods covered by the earlier marks, in respect of which proof of genuine use had been adduced, were identical or highly similar to the goods covered by the mark applied for.
38 There is nothing in the case file that makes it possible to call into question the assessment carried out by the Board of Appeal, which has not, moreover, been disputed by the applicant.
The comparison of the signs
39 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
40 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 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, paragraph 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 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
– The assessment of the distinctive and dominant elements of the signs
41 As regards the mark applied for, the Board of Appeal found that the word element ‘labkable’, written in a stylised font underlined in red could be perceived as a combination of the terms ‘lab’ and ‘kable’. The first term is distinctive, since it refers, on the part of the relevant public to a ‘laboratory’. The second term is either distinctive, or weakly distinctive, according to whether or not the consumer will associate the term with the word ‘cable’ which is, in essence, descriptive of the goods covered by the marks at issue.
42 The Board of Appeal also noted that, as a whole, the word element ‘labkable’ of the mark applied for was distinctive for the entire relevant public and that it constituted the dominant and most distinctive element of that mark due to its size and its prominent position.
43 As regards the earlier marks No 1 and No 2, the Board of Appeal took the view that the term ‘lapp’ was distinctive for the whole of the relevant public and that the term ‘kabel’, although it could be descriptive of the goods which those marks cover for a part of the relevant public, was descriptive for English-speaking consumers, for whom that element had no meaning.
44 The Board of Appeal stated, in the case of the earlier mark No 1, that the word element ‘stuttgart’ was non-distinctive without being negligible, on account of the graphic element positioned above the double ‘t’. In respect of the earlier mark No 2, it took the view that the graphic element, which was fairly original and more than simply decorative, was, on account of its size and its position, visually co-dominant with the word element ‘lapp kabel’.
45 As regards the mark applied for, the applicant maintains that the relevant public will not break down the word element ‘labkable’ into two separate terms, since it is a ‘fanciful conjoined term’, easily recognisable as a whole.
46 Moreover, according to the applicant, the word expression ‘solutions for cables’ of the mark applied for is negligible on account of its size and its secondary position below the word element ‘labkable’. It is non-distinctive on the ground that it is perceived as a mere advertising slogan.
47 In respect of the earlier marks No 1 and No 2, the applicant submits that the word element ‘stuttgart’ of the earlier mark No 1 is non-distinctive and must be regarded as negligible, notwithstanding the graphic element positioned above the double ‘t’. It also claims that the graphic element of the earlier mark No 2 illustrates only a cross-section of a cable, with the result that it is purely decorative and, accordingly, negligible in the overall perception of that mark.
48 EUIPO and the intervener dispute the applicant’s arguments and uphold the assessment of the Board of Appeal that none of the elements of the marks at issue may be regarded as negligible. The applicant cannot therefore maintain that the comparison should be limited, in the overall impression produced by those marks, to the word elements ‘labkable’ and ‘lapp kabel’.
49 In order to assess 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 (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
50 In addition, although as a general rule the public will not consider a descriptive element forming part of a mark as the distinctive and dominant element in the overall impression produced by that mark, the fact remains that the low level of distinctiveness of an element of a mark does not necessarily mean, when its size or its position in the sign are taken into account, that that element is negligible in the overall impression produced by that mark (see, to that effect, judgment of 8 February 2011, Lan Airlines v OHIM – Air Nostrum (LINEAS AEREAS DEL MEDITERRANEO LAM), T‑194/09, EU:T:2011:34, paragraph 30).
51 In the first place, the Board of Appeal correctly found, without being challenged on that point, in the present case, that the mark applied for was dominated by the word element ‘labkable’, which is written in a bold typeface, in a stylised font and underlined in red. As regards the expression ‘solutions for cables’ of that mark, although it may be distinctive for the non-English-speaking part of the public, which does not understand its meaning, it is, however, for the whole of the relevant public, and irrespective of the understanding which it may have, of secondary importance on account, first, of it being written in cursive letters smaller than the font used for depicting the other element of that mark and, secondly, of its position below that element.
52 Contrary to what the applicant claims, the expression ‘solutions for cables’ of the mark applied for is nevertheless not negligible in the overall perception, since, written in a standard font, it remains noticeable at first sight. The fact that, for a part of the relevant public, namely the English-speaking, Spanish-speaking and French-speaking public, that element, as the Board of Appeal correctly noted, may be interpreted as a promotional slogan, and is only weakly distinctive, is not capable of altering that assessment, in view, in particular, of its length in relation to that mark considered as a whole.
53 Even though the Board of Appeal was fully entitled to find that the mark applied for was, as a whole, dominated by the word element ‘labkable’, it was also correct in finding that the relevant public will perceive that element as comprising two components, namely the terms ‘lab’ and ‘kable’. 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, he will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 4 June 2013, i‑content v OHIM – Decathlon (BETWIN), T‑514/11, not published, EU:T:2013:291, paragraph 60 and the case-law cited) and the same applies to a word element within a sign.
54 In respect of the term ‘lab’, it is distinctive in the present case, since it refers to a ‘laboratory’, both for the English-speaking part of the relevant public (see, to that effect, judgment of 13 July 2017, Ecolab USA v EUIPO (ECOLAB), T‑150/16, not published, EU:T:2017:490, paragraphs 30 to 33) and for the non-English-speaking part (see, to that effect, judgment of 28 September 2022, G-Core Innovations v EUIPO – Coretransform (G CORELABS), T‑454/21, not published, EU:T:2022:591, paragraphs 39 and 58).
55 As regards the term ‘kable’, although, in the present case, it has no meaning for a part of the relevant public, it is descriptive of the goods covered by the marks at issue in respect of some consumers who will identify it as a misspelling, either of the word ‘kabel’, in the case of the German-speaking public or of the word ‘cable’ in the case of the English-speaking public, particularly because it will immediately perceive the promotional explanation expressed in English ‘solutions for cables’. It is sufficient in that regard that the consumer understands a word, even if it is misspelled, in the same way as the word spelled correctly (see judgment of 22 May 2014, Walcher Meßtechnik v OHIM (HIPERDRIVE), T‑95/13, not published, EU:T:2014:270, paragraph 32 and the case-law cited). That is particularly so on account of the existence, as the Board of Appeal makes clear, of words that are equivalent or highly similar to designate the same term in a large number of languages of the European Union.
56 In that regard, it may however be noted that the weakly distinctive character of the term ‘kable’ will not affect the dominant character of the word element ‘labkable’, in view of the position and the size of such an element in the mark applied for.
57 In the second place, as regards the earlier marks No 1 and No 2, first of all, it is not disputed that the component ‘lapp’ in their common word element ‘lapp kabel’ is distinctive for the whole of the relevant public. It is also not disputed that the term ‘kabel’ is descriptive of the goods covered by those marks for a part of the relevant public which understands that term, but distinctive for English-speaking consumers, for whom that term has no meaning. There is nothing in the case file that makes it possible to call into question those assessments which must be upheld.
58 Next, in respect of the earlier mark No 1, it should be noted that the word element ‘stuttgart’ cannot be regarded as non-distinctive for the whole of the relevant public, contrary to the Board of Appeal’s assessment. It is only non-distinctive for the part of the relevant public which understands that element as designating the place of establishment of the proprietor of that mark, since it is likely to then perceive it as descriptive of the geographic origin of the goods covered by the earlier mark No 1.
59 The word element ‘stuttgart’ of the earlier mark No 1 is, however, not negligible in the overall impression produced by that mark on the part of that public. This is so on account of, first, that term being written in capital letters and its size in the mark at issue, which contains the same number of letters as the two combined terms which precede it and, secondly, of the presence of the graphic element above the double letter ‘tt’, which, contrary to what the applicant claims, will not go unnoticed by the relevant public.
60 In addition, as regards the earlier mark No 2, the assessment of the Board of Appeal that the figurative element will not immediately be perceived by the relevant public as a mere decorative element must be upheld. In that respect, it is not clear from the evidence set out in paragraph 33 of the application that such an element may immediately be understood, contrary to what the applicant claims, as the graphic representation of the cross-section of a cable. The conductors, depicted in the applicant’s illustrative images, are significantly smaller in diameter than the circles reproduced in the interior of the black disc intended to represent the insulation of a cable of which a section has been cut. In addition, unlike in those illustrative images submitted by the applicant, the circles in the interior of that figurative element are not all depicted identically, since four of them outline white discs, whereas the fifth outlines a black disc with a white rim.
61 Moreover, the figurative element of the earlier mark No 2 significantly exceeds the size of the word element. Lastly, it is positioned above that word element.
62 In those circumstances, the Board of Appeal correctly found, in essence, that the earlier mark No 2 did not contain any dominant element.
63 As regards the distinctive and dominant elements of the signs, in the light of all of the foregoing, it must be held that the overall assessment seeking to establish the existence of a similarity between the signs at issue must be carried out taking into account:
– first, all of the elements of the marks at issue in the overall impression which they produce on the part of the relevant public, since none of those elements appear as negligible for the purposes of the comparison;
– secondly, as regards the mark applied for, the dominant and distinctive character of the word element ‘labkable’, noting that that public will break it down into two terms, namely ‘lab’ and ‘kable’, the former being distinctive for the whole of that public;
– thirdly, as regards the earlier mark No 1, the dominant character of the word element ‘lapp kabel’ and the distinctive character for the whole of that public of the component ‘lapp’ of that element;
– fourthly, the absence of any dominant element in the earlier mark No 2 and of the distinctive character for the whole of that public of the component ‘lapp’ of the word element ‘lapp kabel’.
– The visual comparison
64 The Board of Appeal noted that the mark applied for and the earlier marks No 1 and No 2 visually coincided in the sequence of the letters ‘la’ and ‘kab’ and in the letters ‘e’ and ‘l’, notwithstanding their inversion in those marks. It did however find that those marks differed in the arrangement of their various elements and, lastly, had a low degree of visual similarity, taking account, in essence, first, of the differences between the marks in question as regards their word elements ‘solutions for cables’, present in the mark applied for, and ‘stuttgart’, in the earlier mark No 1, since, additionally, the word elements use different fonts and, secondly, of the presence of a visually striking figurative element in the earlier mark No 2.
65 The applicant submits, in essence, that the Board of Appeal failed, in its assessment of the overall impression produced by the marks at issue, to have regard to the visual similarity which exists for part of the relevant public between the word element ‘labkable’ of the mark applied for and the common word element ‘lapp kabel’ of the earlier marks No 1 and No 2. Their comparison would lead to recognising the existence of a degree of visual similarity between the signs at issue.
66 EUIPO and the intervener dispute the applicant’s arguments.
67 In the present case, it must be observed that the word element ‘labkable’ of the mark applied for and the common word element ‘lapp kabel’ of the earlier marks No 1 and No 2 visually have a fairly similar structure in spelling, since they consist substantially of the same number of letters, eight and nine letters, respectively, and they share seven of them.
68 However, the attention of the part of the public which will associate the terms ‘kable’ or ‘kabel’ with the goods covered by the marks at issue will be drawn, first and foremost, as, in essence, the Board of Appeal noted, to the most distinctive terms in the perception of that public, namely ‘lab’ and ‘lapp’. Those terms visually differ in the use of the double letter ‘pp’ in the earlier marks No 1 and No 2. Although it cannot be found that that double letter is visually striking, the fact remains that it introduces a clear visual difference with regard to the letter ‘b’ of the mark applied for.
69 Moreover, even though the marks at issue coincide in the first two letters ‘la’ of their word elements ‘labkable’ and ‘lapp kabel’, that fact cannot, from the perspective of that public, suffice to offset the visual differences which the Board of Appeal was fully entitled to observe in the comparison of those marks, as set out in paragraph 64 above. The weak distinctive character of the word element ‘stuttgart’ for a part of that public cannot invalidate that assessment, in view of the size of that element in the earlier mark No 1.
70 The attention of the part of the public which will not associate the term ‘kable’ or the term ‘kabel’ with the goods covered by the marks at issue, will focus its attention on the word elements ‘labkable’ and ‘lapp kabel’. As regards the earlier mark No 2, that will be the case inasmuch as, first, the graphic element does not dominate the overall impression of that mark and, secondly, the component ‘lapp’ of the word element ‘lapp kabel’ is distinctive for the whole of that public.
71 However, notwithstanding the partially comparable structure in spelling of those word elements, that fact cannot offset, from the perspective of that public, the numerous word and figurative differences between those marks.
72 In those circumstances, and while the comparison must be made considering each of the marks at issue as a whole, it must be held that those marks, notwithstanding the presence of seven common letters in their word elements are, as both the Opposition Division and the Board of Appeal submitted, visually similar to a low degree.
– The phonetic comparison
73 The Board of Appeal took the view that the marks at issue coincided in the sound of the letters ‘k’, ‘a’, ‘b’, ‘e’, and ‘l’ and that the components ‘lab’ and ‘lapp’ are pronounced similarly. It stated that the expression ‘solutions for cables’ of the mark applied for would most likely not be pronounced by consumers when they refer to that mark. It found that the terms ‘kable’ and ‘kabel’ would also not be pronounced by those consumers who understand their meaning.
74 In those circumstances, the Board of Appeal found, in essence, that the marks at issue were phonetically similar to an average degree for the part of the relevant public which would not associate the terms ‘kable’ or ‘kabel’ with the goods covered by them, and that those terms had a high degree of phonetic similarity for the part of the public which understands those terms as referring to the goods in question.
75 The applicant maintains that, since the whole of the relevant public will limit its comparison of the marks at issue to only the word elements ‘labkable’ and ‘lapp kabel’, they are, for the whole of that public, phonetically similar to a high degree.
76 EUIPO and the intervener contend that the applicant’s arguments should be rejected.
77 In the present case, it may be accepted, as the parties agree, that consumers will probably not pronounce the expression ‘solutions for cables’ which occupies a secondary position in the mark applied for. That is the case in particular in so far as consumers might be inclined not to pronounce that expression, simply to economise on words, since that expression is long to pronounce and easily separable from the most visible element which stands out clearly in the mark applied for.
78 By contrast, the word element ‘stuttgart’, which does not occupy a secondary position in the earlier mark No 1, will not be completely overlooked by the relevant public when it pronounces that mark, since such a word element, positioned in the extension of the other word elements, is likely to be pronounced following those other word elements.
79 The relevant public will therefore not solely take into account the only word elements ‘labkable’ and ‘lapp kabel’ in the phonetic comparison of the marks at issue.
80 However, it must be held that the elements ‘labkable’ and ‘lapp kabel’, without being phonetically identical, have, for the whole of the relevant public, a high degree of phonetic similarity. That is the case, irrespective of the meaning for the relevant public of the terms ‘kable’ or ‘kabel’, on account of the phonetic proximity of the letters ‘b’ and ‘p’, which are both bilabial consonants, and the presence of the sequence of the common letters ‘la’ and ‘kab’ and the letters ‘e’ and ‘l’. The identical number of syllables also contributes to reinforcing the impression of overall phonetic similarity between those two elements.
81 In those circumstances, contrary to the findings of the Board of Appeal, account must be taken, in assessing the likelihood of confusion, of the existence, for the whole of the relevant public, first, of a high degree of phonetic similarity between the mark applied for and the earlier mark No 2, secondly, of only an average degree of phonetic similarity between the mark applied for and the earlier mark No 1, in view, in the latter case, of the pronunciation of the word element ‘stuttgart’.
– The conceptual comparison
82 The Board of Appeal took the view, in paragraph 59 of the contested decision, that the marks at issue conceptually differed in the idea of ‘laboratory’, alluded to by the term ‘lab’ in the mark applied for. Since one of those marks has a meaning, the marks are conceptually different.
83 The applicant claims that it is not possible to carry out a conceptual comparison where only one of the signs alludes to an idea. The Board of Appeal should have carried out a conceptual comparison of the marks at issue while taking the view that only the mark applied for had no meaning. The applicant argues that that Board of Appeal therefore erred in law.
84 The applicant also asserts that the Board of Appeal made an error of assessment in taking the view that the term ‘lab’ alludes to the idea of ‘laboratory’ in the mark applied for. In addition, the applicant claims that there is a low degree of conceptual similarity between the marks at issue for the part of the relevant public which associates the terms ‘kable’ or ‘kabel’ with the cables which those marks cover.
85 EUIPO and the intervener dispute the applicant’s arguments. They state, in essence, that the term ‘lab’ is meaningful and distinctive from the point of view of the whole of the relevant public, with the result that the Board of Appeal was fully entitled to find that there was a conceptual difference between the signs at issue.
86 As a preliminary point, it should be recalled that, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks in question are conceptually different (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89). In those circumstances, contrary to what the applicant claims, the Board of Appeal did not make an error of law on the ground that it stated in the contested decision that ‘[since] one of the marks under comparison [carries] a meaning, the signs [at issue were] conceptually dissimilar’.
87 In that regard, the assessment of the Board of Appeal that the term ‘lab’ contained in the mark applied for will be understood by the relevant public as alluding to the idea of ‘laboratory’ must be upheld. Next, the word element ‘stuttgart’ contained in the earlier mark No 1, with a figurative sign at the top without any particular meaning, will be understood by the relevant public as a reference to the city of Stuttgart in Germany. In addition, the term ‘lapp’ of the earlier marks No 1 and No 2 will have no meaning for the majority of the relevant public. The applicant does not dispute that Board of Appeal’s additional assessment that that term will however have a particular meaning for a minority of the relevant public as a reference to ‘a member of an indigenous people of the extreme north of Scandinavia, traditionally associated with the herding of reindeer’.
88 The marks at issue therefore differ conceptually in the elements ‘lab’, ‘lapp’ and ‘stuttgart’. In those circumstances, and although the graphic element of the earlier mark No 2, as has been noted in paragraph 60 above, will not immediately be understood, contrary to what the applicant claims, as the graphic representation of the cross-section of a cable, the mark applied for is, for the part of the public which will not associate any meaning or idea with the words ‘kable’ and ‘kabel’, conceptually different from the earlier marks No 1 and No 2.
89 On the other hand, for the part of the relevant public which will understand the elements ‘kable’ or ‘kabel’ as expressing the idea of a cable, the marks at issue will have a low degree of conceptual similarity, as the applicant and the Opposition Division submit. In that respect, since the graphic difference of the element ‘kable’ from the English term ‘cable’ is not phonetically perceptible, it will have no impact on the perception the relevant public will have of that element as referring to the idea of ‘cable’ (see, to that effect, judgments of 26 November 2008, Avon Products v OHIM (ANEW ALTERNATIVE), T‑184/07, not published, EU:T:2008:532, paragraph 26, and of 13 February 2019, Nemius Group v EUIPO (DENTALDISK), T‑278/18, not published, EU:T:2019:86, paragraph 51).
90 The fact that a part of the relevant public may perceive the figurative element of the earlier mark No 2 as expressing the idea of ‘cable’ or the expression ‘solutions for cable’ as conveying a message that the goods in question, as correctly observed by the Board of Appeal, provide solutions in circumstances in which the use of cables is necessary cannot having any bearing on that finding.
91 In those circumstances, the lack of conceptual similarity between the marks at issue for a part of the relevant public and the existence of a low degree of conceptual similarity between those marks for the other part must be taken into account in the assessment of the likelihood of confusion.
The likelihood of confusion
92 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
93 The Board of Appeal found that the earlier marks No 1 and No 2 had normal inherent distinctiveness, notwithstanding the presence of weakly distinctive or non-distinctive elements. In those circumstances and regardless of the identity or high degree of similarity of the goods in question and in view of the average, if not high level of attention of the relevant public, the Board of Appeal found, in essence, that the visual and conceptual differences between the mark applied for and those earlier marks were sufficient to offset their visual or phonetic similarities, thus ruling out any likelihood of confusion.
94 Moreover, the Board of Appeal found that the same was true, a fortiori, between the mark applied for and the earlier word mark LAPP, which had not been examined by the Opposition Division, since the differences between those marks are even greater than between the mark applied for and the earlier marks No 1 and No 2.
95 The applicant submits, first of all, that the Board of Appeal, in essence, made an error of law in finding that the conceptual difference between the marks at issue was such as to cancel out any likelihood of confusion.
96 Next, the applicant claims, essentially, that the visual and conceptual differences identified by the Board of Appeal in support of its assessment cannot, in any event, suffice to cancel out the high degree of phonetic similarity between the marks at issue.
97 In those circumstances, the applicant concludes that, given the identity or the high degree of similarity of the goods in question, the merely average level of attention of the relevant public and the significant similarities of the word elements ‘labkable’ and ‘lapp kabel’ of the signs at issue, the Board of Appeal made an error of assessment in the contested decision by ruling out the existence of a likelihood of confusion between the marks at issue.
98 EUIPO and the intervener dispute the applicant’s arguments.
99 EUIPO contends that the Board of Appeal did not infer from the conceptual differences between the marks at issue the absence of any similarity between those marks. EUIPO maintains that that Board of Appeal found that there was no likelihood of confusion after taking into account all of the relevant factors, namely not only the existence of a conceptual difference between the signs on account of the meaningful and distinctive element ‘lab’ in the mark applied for, but also the existence of a low degree of visual similarity or the normal distinctiveness of the earlier marks No 1 and No 2.
100 The intervener states that the phonetic similarity between the signs can play only a very limited role in the assessment of the likelihood of confusion. According to the intervener, having regard to all of the word and graphic differences between the signs at issue, no likelihood of confusion exists between the mark applied for and the earlier marks No 1 and No 2.
101 As a preliminary point, as regards the applicant’s argument based on the case-law concerning offsetting the visual and phonetic similarities by the conceptual differences between the signs, it should be noted that the Board of Appeal did not apply that case-law. It is clear from paragraph 69 of contested decision that the ruling out of a likelihood of confusion results from an overall assessment of the similarities and the differences between the signs at issue following which, in essence, the Board of Appeal found that the differences outweighed the similarities.
102 That having been said, it is necessary, in the first place, to uphold the assessment of the Board of Appeal, which is not disputed by the applicant, that the earlier marks No 1 and No 2 have normal distinctiveness.
103 In the second place, it must be recalled that, although the signs at issue are visually and conceptually similar only to a low degree and are even conceptually different for a part of the public, the mark applied for has, by contrast, and for the whole of the relevant public, a high degree of phonetic similarity with the earlier mark No 2, and an average degree of phonetic similarity with the earlier mark No 1.
104 In the third place, contrary to the Board of Appeal’s assessment, the level of attention of the relevant public is, as has been stated in paragraph 35 above, only average in respect of all of the goods covered by the marks at issue. In that respect, since the average consumer only rarely has the chance to make a direct comparison between the different marks, he must place his trust in the imperfect image of them that he has retained in his mind (judgments of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 28, and of 30 June 2004, BMI Bertollo v OHIM – Diesel (DIESELIT), T‑186/02, EU:T:2004:197, paragraph 38).
105 In those circumstances, given the identity or the high degree of similarity of the goods in question and notwithstanding the low degree of both visual and conceptual similarity of the signs at issue, their phonetic similarities are sufficient to entail a likelihood of confusion on the part of the relevant public.
106 This is particularly the case as regards the comparison between the mark applied for and the earlier mark No 2, having regard to the existence of a high degree of phonetic similarity between those marks on the part of the relevant public.
107 In that respect, it must be added that although, at the hearing, EUIPO and the intervener claimed that the goods in question were predominantly sold online, they did not dispute the fact that they could also be ordered orally.
108 In the light of all of the foregoing, the contested decision is unlawful in so far as it has ruled out any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 between the mark applied for and the earlier marks No 1 and No 2.
109 That unlawfulness is such as to entail, first, the annulment of Article 1 of the operative part of the contested decision, whereby the Board of Appeal annulled the decision of the Opposition Division, which upheld the opposition on account of a likelihood of confusion between the mark applied for and the earlier marks No 1 and No 2, secondly and consequently, the annulment of Article 2 of that operative part, whereby the Board of Appeal rejected the opposition in its entirety.
110 Therefore, the contested decision must be annulled in its entirety, without it being necessary to rule on the second and third pleas in the action.
The claim for alteration of the contested decision
111 As regards the head of claim by which the applicant seeks the alteration of the contested decision ‘so that the appeal filed by the Other Party with the Board of Appeal is dismissed’, it must be understood as requesting the Court to adopt the decision which the Board of Appeal should have taken, in accordance with the provisions of Regulation 2017/1001, namely, in the present case, that the Court uphold the opposition against the mark applied for.
112 In that regard, it must be recalled that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
113 In the present case, it follows from the foregoing considerations that the Board of Appeal was required to find that, in accordance with the view taken by the Opposition Division, there was a likelihood of confusion in respect of all of the goods in question.
114 In those circumstances, the annulment of the contested decision in so far as it rules out any likelihood of confusion necessarily entails recognition by the Court of such a likelihood. The contested decision must therefore be altered by upholding the opposition.
115 Consequently, it is appropriate, by altering the contested decision, to dismiss the appeal brought against the decision of the Opposition Division and to uphold the opposition in respect of all of the goods referred to in paragraph 3 above.
Costs
116 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
117 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
118 Since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 July 2022 (Case R 1894/2021-2);
2. Upholds the opposition brought against registration of the EU figurative mark LABKABLE SOLUTIONS FOR CABLES submitted on 3 January 2020;
3. Orders EUIPO to bear its own costs and to pay those incurred by U.I. Lapp GmbH;
4. Orders Labkable Asia Ltd to bear its own costs.
Marcoulli | Tomljenović | Valasidis |
Delivered in open court in Luxembourg on 24 January 2024.
V. Di Bucci | | M. van der Woude |