JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
13 May 2020 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark pontinova — Earlier national word mark PONTI — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Relevant public — Similarity of the services — Similarity of the signs — Global assessment of the likelihood of confusion)
In Case T‑76/19,
Pontinova AG, established in Zurich (Switzerland), represented by L. Röh, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Ponti & Partners, SLP, established in Barcelona (Spain),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 27 November 2018 (Case R 566/2018‑5), relating to opposition proceedings between Ponti & Partners and Pontinova,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias and T. Perišin (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 7 February 2019,
having regard to the response of EUIPO lodged at the Court Registry on 23 May 2019,
having regard to the order made today, Pontinova v EUIPO — Ponti & Partners (pontinova) (T‑76/19, not published), refusing to grant the other party to the proceedings before the Board of Appeal the status of intervener,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the 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 29 September 2016, the applicant, Pontinova AG, 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was sought are in Class 45 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Legal services’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/193 of 11 October 2016.
5 On 9 January 2017, Ponti & Partners, SLP, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the earlier Spanish word mark PONTI, filed on 19 July 2000 and registered on 19 March 2001 under Number 2 334 075 for services in Class 42 corresponding to the following description: ‘Industrial and Intellectual property consultancy services’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 On 31 January 2018, the Opposition Division upheld the opposition.
9 On 27 March 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.
10 By decision of 27 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it found, first, that, in so far as the services covered by the mark applied for include the services covered by the earlier mark, the services at issue had to be regarded as identical. Second, it noted that the relevant public is made up both of companies and individuals and that its level of attention is higher than average. Third, the Board of Appeal took the view that the signs at issue are visually and aurally similar to an average degree and that the conceptual comparison had no effect on the overall impression. Finally, it noted that, given that the services at issue are identical, a lesser degree of similarity between the signs at issue was sufficient for it to be found that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 between the marks at issue.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and Ponti & Partners to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that the Board of Appeal was wrong to find that there is a likelihood of confusion.
14 EUIPO disputes the applicant’s arguments.
15 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
16 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, 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 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).
17 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
18 It is in the light of the abovementioned principles that it is necessary to examine whether the Board of Appeal was right to find that there is a likelihood of confusion between the marks at issue in the present case.
The relevant public
19 The Board of Appeal found that the relevant public consists both of companies and individuals, that that public’s level of attention is higher than average, and that the relevant territory is Spain.
20 Those findings by the Board of Appeal, which, moreover, are not disputed by the applicant, must be upheld.
The comparison of the services
21 According to settled case-law, in assessing the similarity of the services in question, all the relevant factors relating to those services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the services concerned (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
22 In the present case, the Board of Appeal found that, since the services covered by the mark applied for include the services covered by the earlier mark, the services at issue had to be regarded as identical.
23 The applicant contends that the services covered by the mark applied for are neither highly identical nor highly similar to the services designated by the earlier mark. In that regard, the applicant submits that services covered by the earlier mark are in Class 42 and, therefore, relate to industrial and intellectual property, whereas the services covered by the mark applied for are in Class 45 and therefore relate to legal services. Intellectual property consultancy services differ substantially from the services offered by a law firm which does not provide services in that field.
24 According to the applicant, the services provided by a law firm consist in offering legal advice and representing clients before the courts and can be provided only by lawyers holding a licence. By contrast, intellectual property consultancy services are part of consultancy services, which are general services offered by a wide variety of professionals, such as professionals in the economic, financial or legal sphere, and do not require a licence or particular training.
25 EUIPO disputes the applicant’s arguments.
26 First, it should be noted that the classification of goods and services under the Nice Agreement is to serve purely administrative purposes. Therefore, goods and services may not be regarded as different on the ground that they appear in different classes under that classification (see, to that effect, judgment of 6 June 2018, Uponor Innovation v EUIPO — Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 26).
27 Furthermore, although the earlier mark was registered for services in Class 42 corresponding to the description ‘industrial and intellectual property consultancy services’, those services are, in the current version of the Nice Classification, included in Class 45. The services in question are therefore, in any event, in the same class in the current version of the Nice Classification.
28 Second, according to settled case-law, services can be considered identical when the services designated by the earlier mark are included in a more general category designated by the trade mark application (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).
29 As correctly stated by the Board of Appeal, industrial and intellectual property consultancy services such as those offered by the services covered by the earlier mark necessarily include advice on intellectual property rights, which are legal in nature. Those services are therefore part of legal services, which cover a very wide range of services and are covered by the mark applied for, without being specified or limited.
30 That finding is not called into question by the fact that legal services may include, in addition to legal advisory services, other services, such as representing clients before courts. Furthermore, although the applicant submits that consultancy services are general services offered by a wide variety of professionals, such as professionals in the economic, financial or legal sphere, the applicant does not seriously call into question the fact that industrial and intellectual property consultancy services necessarily have a legal dimension.
31 Third, the argument put forward by the applicant that it does not offer legal services in the field of intellectual property is irrelevant. In that regard, it is sufficient to note that, according to settled case-law, the description of the services covered by the marks at issue must be taken into account, not the services actually marketed under those marks (see judgment of 12 July 2017, Frinsa del Noroeste v EUIPO — Frigoríficos Unidos (Frinsa LA CONSERVERA), T‑634/15, not published, EU:T:2017:484, paragraph 31 and the case-law cited).
32 The applicant is therefore wrong to argue that the services at issue are not identical on the basis of the characteristics of the services which it specifically states that it provides to its clients.
33 In those circumstances, the Board of Appeal did not make an error of assessment in finding that the services covered by the mark applied for are identical to those covered by the earlier mark.
The comparison of the signs
34 According to 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 aspects (see judgment of 23 March 2017, Vignerons de la Méditerranée v EUIPO — Bodegas Grupo Yllera (LE VAL FRANCE), T‑216/16, not published, EU:T:2017:201, paragraph 23 and the case-law cited).
35 The global assessment of the likelihood of confusion, in relation to the visual, aural 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 appreciation 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).
36 The applicant submits that the Board of Appeal was wrong to find that the differences between the earlier mark and the figurative elements of the mark applied for are insignificant. According to the applicant, the fact that the figurative part of the mark applied for bears no similarity to the earlier mark, the similarity between those marks being limited to a part of their word element, is sufficient in its view for it to be concluded that the signs at issue are sufficiently different.
– The visual similarity
37 As regards the visual comparison, the Board of Appeal found that the signs at issue both contain the word ‘ponti’, which is the only element of the earlier sign and is reproduced in its entirety in the sign applied for. As those signs differ as regards the figurative element of the sign applied for and the suffix ‘nova’, the Board of Appeal found that the signs are visually similar only to an average degree.
38 The applicant submits that the suffix ‘nova’ of the mark applied for is at least equal to the prefix ‘ponti’ and that the mark applied for consists of nine letters, whereas the earlier mark consists of five. According to the applicant, the common element is insignificant when viewed from the perspective of the overall impression created by the figurative elements and the suffix ‘nova’ of the mark applied for. From a visual point of view, the earlier mark therefore differs substantially from the mark applied for.
39 EUIPO disputes the applicant’s arguments.
40 It should be noted, first of all, 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 a 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).
41 Next, it follows from the case-law, correctly cited by the Board of Appeal, that, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
42 In the present case, it should be noted that the Board of Appeal duly took into account the figurative element of the mark applied for in the visual comparison of the signs and was fully entitled to find that the figurative element, together with the element ‘nova’, contributed to limiting the degree of similarity between the signs, which the Board of Appeal considered to be only average. Contrary to what the applicant suggests, without, moreover, substantiating its claims, there is nothing to indicate that that figurative element actually has a greater impact or that it contributes to creating a different visual impression.
43 Finally, as regards the word elements of the marks at issue, as the Board of Appeal was fully entitled to note, the fact that the common element ‘ponti’ matches the initial part of the mark applied for and is the only element of the earlier mark, is of paramount importance, since the identical initial parts reduce the effect of the suffix ‘nova’ at the end of mark applied for. According to settled case-law, the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact than the final part (see judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraph 36 and the case-law cited). That case-law is particularly applicable in the present case because the initial part, which is common to the signs at issue, consists of word elements that the relevant public in the territory of Spain usually reads from left to right.
44 In those circumstances, the Board of Appeal did not make an error of assessment in finding that the signs at issue are visually similar to an average degree.
– The aural similarity
45 As regards the aural comparison of the signs, the Board of Appeal found that the signs are similar to an average degree. It stated that, even if the syllable ‘no’ were to be stressed in the word ‘pontinova’ and even though the signs are different in length, it can clearly be heard that two syllables, namely the only syllables of the earlier sign and the initial syllables of the sign applied for, are exactly the same.
46 The applicant submits that the sign ‘pontinova’ has twice as many syllables and is twice as long as the sign in the earlier mark and that, in that word, the emphasis is on the syllable ‘no’. The obvious difference caused by the length and the elements of the two marks therefore prevents any likelihood of aural confusion on the part of the consumer.
47 EUIPO disputes the applicant’s arguments.
48 It should be noted, first, that the fact that the number of syllables in the signs at issue is different is not sufficient to rule out any aural similarity between the marks, which must be assessed on the basis of the overall impression produced by their full pronunciation (see, to that effect, 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, it must be noted that, even though the signs at issue have a distinct syllabic structure because they contain a different number of syllables, the Board of Appeal was right in finding that they are similar, since the element ‘ponti’, which is made up of the only syllables of the earlier sign and the initial syllables of the sign applied for, is included in both signs, even though in the mark applied for, the emphasis is on the syllable ‘no’ (see, by analogy, judgment of 24 October 2019, ZPC Flis v EUIPO — Aldi Einkauf (FLIS Happy Moreno choco), T‑708/18, not published, EU:T:2019:762, paragraph 106 and the case-law cited).
50 Second, although the signs at issue are of a different length, the overall impression which they produce leads to the conclusion that they are aurally similar owing to their common component (see, to that effect, judgment of 1 July 2009, Perfetti Van Melle v OHIM — Cloetta Fazer (CENTER SHOCK), T‑16/08, not published, EU:T:2009:240, paragraph 43).
51 In that context, it should be pointed out that, as EUIPO correctly stated, the attention of the consumer is usually directed to the beginning of the word (judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 83). The fact that the word element ‘ponti’, which constitutes the earlier mark, is placed before the word element ‘nova’ in the mark applied for therefore indicates that there is some aural similarity (see, to that effect, judgment of 8 February 2019, Serendipity and Others v EUIPO — CKL Holdings (CHIARA FERRAGNI), T‑647/17, not published, EU:T:2019:73, paragraph 59).
52 Consequently, the Board of Appeal did not make an error of assessment in finding that the signs at issue are aurally similar to an average degree.
– The conceptual similarity
53 As regards the conceptual comparison of the signs at issue, the Board of Appeal found that, since neither of the two signs has a clear meaning, the conceptual comparison has no effect on the overall impression.
54 Those findings by the Board of Appeal, which, moreover, are not disputed by the applicant, must be upheld.
The likelihood of confusion
55 In the present case, the Board of Appeal found that the average degree of similarity between the signs at issue is offset by the fact that the services at issue are identical. In those circumstances, it found that there is a likelihood of confusion, despite the relevant public’s high level of attention.
56 The applicant submits that the services covered by the mark applied for are not identical to those covered by the earlier mark and that the signs at issue differ visually, aurally and conceptually. It submits that the Board of Appeal was therefore wrong to find that there is a likelihood of confusion on the part of the relevant public.
57 EUIPO disputes the applicant’s arguments.
58 In that regard, as noted in paragraph 16 above, 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 that case-law, the likelihood of confusion must be assessed globally, according 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 (see, also, judgment of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 68 and the case-law cited).
59 A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater 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).
60 For the purposes of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his or her trust in the imperfect picture that he or she has retained of them. 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 (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
61 As regards the applicant’s line of argument, first, that the services covered by the mark applied for are not identical to those covered by the earlier mark or highly similar to them and, second, that the signs at issue differ visually, aurally and conceptually, it is sufficient to note, as examined in the comparison of the services and signs in paragraphs 21 to 54 above, that the Board of Appeal did not make an error of assessment in finding that the services at issue are identical, that the signs at issue are visually and aurally similar to an average degree and that the conceptual comparison has no effect on the overall impression. That line of argument therefore cannot succeed.
62 Furthermore, there is no reason to call into question the Board of Appeal’s assessment regarding the normal degree of distinctiveness of the earlier mark, which, moreover, was not disputed by the applicant before the Court.
63 In the present case, in view of all of the relevant factors taken into account by the Board of Appeal in the overall assessment of the likelihood of confusion between the marks at issue and, in particular, the fact that the services at issue are identical (see paragraph 33 above), the average degree of visual and aural similarity of those signs (see paragraphs 44 and 52 above) and the normal degree of distinctiveness of the earlier mark (see paragraph 62 above), the Board of Appeal did not make an error of assessment in finding that there is a likelihood of confusion between the marks at issue on the part of the relevant public referred to in paragraph 19 above, even when that relevant public’s higher level of attention is taken into account.
64 Consequently, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and the action must therefore be dismissed in its entirety.
Costs
65 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 (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Pontinova AG to pay the costs.
Delivered in open court in Luxembourg on 13 May 2020.