JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
23 September 2020 (*) (1)
(EU trade mark – Opposition proceedings – Application for EU word mark MUSIKISS – Earlier United Kingdom word and figurative marks KISS – Agreement on the withdrawal of the United Kingdom from the European Union and Euratom – Transition period – Decision of the Board of Appeal to remit the case to the Opposition Division – Admissibility – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑421/18,
Bauer Radio Ltd, established in Peterborough (United Kingdom), represented by G. Messenger, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, H. O’Neill and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Simon Weinstein, residing in Vienna (Austria), represented by M.-R. Petsche and M. Grötschl, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 March 2018 (Case R 510/2017-1), relating to opposition proceedings between Bauer Radio and Mr Weinstein,
THE GENERAL COURT (Fourth Chamber),
composed of S. Gervasoni, President, L. Madise and R. Frendo (Rapporteur), Judges,
Registrar: P. Cullen, Administrator,
having regard to the application lodged at the Court Registry on 10 July 2018,
having regard to the plea of inadmissibility raised by EUIPO by document lodged at the Court Registry on 10 October 2018,
having regard to the response of the intervener lodged at the Court Registry on 10 October 2018,
having regard to the order of 12 February 2019 reserving the decision on the plea of inadmissibility for the final judgment,
having regard to the response of EUIPO lodged at the Court Registry on 24 April 2019,
having regard to the change in the composition of the Chambers of the General Court,
further to the hearing on 16 January 2020,
having regard to the order of 25 February 2020 reopening the oral part of the procedure,
having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 13, 16 and 19 March 2020,
gives the following
Judgment
Background to the dispute
1 On 15 November 2013, the intervener, Mr Simon Weinstein, 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 word sign MUSIKISS.
3 The services in respect of which registration was sought are in Classes 35, 41 and 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, for each of those classes, to the following description:
– Class 35: ‘Advertising, including online, in particular advertisements, for others; Employment agencies, in particular in connection with music or for those interested in music; Retailing and wholesaling, including online, of goods and services in the music sector’;
– Class 41: ‘Organising, Coordination and Provision of recreational events; Booking of events; Performance of music, song, (short) films, radio and television programmes and cultural programmes; Ticket reservation and advance sale for events; Compilation, gathering, management and providing of data in connection with music or for those interested in music, including via databases searchable online or via apps’;
– Class 45: ‘Social services, namely arranging groups sharing interests and dating via social networks’.
4 The trade mark application was published in the Community Trade Marks Bulletin No 2014/036 of 24 February 2014.
5 On 23 May 2014, the applicant, Bauer Radio Ltd, 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 mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– the series of seven United Kingdom figurative marks filed on 24 August 2006 and registered on 17 October 2008 under No 2430834 covering, inter alia, ‘broadcasting services; radio broadcasting; radio broadcasting and transmission’ in Class 38 and ‘organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural, and entertainment purposes; radio entertainment services’ in Class 41, which are services in respect of which the Board of Appeal concluded that genuine use had been established:
– the United Kingdom word mark KISS filed on 17 September 2013 and registered on 28 February 2014 under No 3022390 covering, inter alia, the goods and services in Classes 9 and 41 corresponding, for each of those classes, to the following description:
– Class 9: ‘Downloadable application software; downloadable mobile application software for mobile devices; downloadable mobile application software phones and tablets; computer software for use as an application programming interface (API)’;
– Class 41: ‘Providing use of software applications through a website; Entertainment services provided via a website; radio entertainment services provided via a website; competitions provided via a website; provision of information relating to entertainment, sporting and cultural activities for accessing by means of software applications; provision of music and music entertainment for accessing by means of software applications; provision of radio broadcasts for accessing by means of software applications; provision of radio entertainment services for accessing by means of software applications; provision of competitions for accessing by means of software applications’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001).
8 The applicant claimed that the earlier marks are distinctive and have a reputation in the United Kingdom in respect of all the goods and services covered by those marks and that use of the mark applied for would take unfair advantage of the earlier marks’ distinctiveness and reputation and would be detrimental to them.
9 By decision of 17 January 2017, the Opposition Division upheld the opposition in part, on the basis of Article 8(1)(b) of Regulation No 207/2009, and rejected the application for registration in respect of the following services:
– Class 35: ‘Retailing and wholesaling, including online, of goods and services in the music sector’;
– Class 41: ‘Organising, Coordination and Provision of recreational events; Booking of events; Performance of music, song, (short) films, radio and television programmes and cultural programmes; Ticket reservation and advance sale for events; Compilation, gathering, management and providing of data in connection with music or for those interested in music, including via databases searchable online or via apps’;
– Class 45: ‘Social services, namely arranging groups sharing interests and dating via social networks’.
10 The opposition was rejected and the application for registration was allowed in respect of the following services in Class 35: ‘Advertising, including online, in particular advertisements, for others; Employment agencies, in particular in connection with music or for those interested in music’.
11 On 14 March 2017, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.
12 On 18 July 2017, the applicant filed an ancillary appeal against the Opposition Division’s decision, pursuant to Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 11).
13 By decision of 14 March 2018 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision and remitted the case to it ‘for further prosecution of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009’.
14 As regards the application of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that some of the services in the application for registration were different from the services covered by the earlier word mark and that there could therefore be no likelihood of confusion in respect of those services. The Opposition Division’s decision was therefore annulled in so far as it found those services to be similar. The services covered by the mark applied for in respect of which the Opposition Division’s decision was annulled were the following:
– Class 35: ‘Retailing and wholesaling, including online, of goods and services in the music sector’;
– Class 45: ‘Social services, namely arranging groups sharing interests and dating via social networks’.
15 In addition, the Board of Appeal found that the following services in Class 35 covered by the mark applied for were different from the services covered by the earlier marks: ‘Advertising, including online, in particular advertisements, for others; Employment agencies, in particular in connection with music or for those interested in music’. Consequently, the applicant’s ancillary appeal was dismissed as regards the issue of whether the services in question are similar.
16 As regards ‘Retailing and wholesaling, including online, of goods and services in the music sector’, covered by the mark applied for and in Class 35, the Board of Appeal found, in paragraph 51 of the contested decision, a low degree of similarity between those services and the applicant’s services in Class 41 covered by the earlier word mark.
17 In relation to ‘Organising, Coordination and Provision of recreational events; Booking of events; Performance of music, song, (short) films, radio and television programmes and cultural programmes; Ticket reservation and advance sale for events; Compilation, gathering, management and providing of data in connection with music or for those interested in music, including via databases searchable online or via apps’, covered by the mark applied for and in Class 41, the Board of Appeal found those services to be identical or highly similar to the services in Class 41 which are covered by the earlier word mark.
18 The Board of Appeal also found that the services covered by the mark applied for consisting of ‘Compilation, gathering, management and providing of data in connection with music or for those interested in music, including via databases searchable online or via apps’ were similar to the services in Class 41 which are covered by the series of earlier figurative marks and in respect of which genuine use had been established.
19 In relation to ‘Organising, Coordination and Provision of recreational events; Booking of events; Performance of music, song, (short) films, radio and television programmes and cultural programmes; Ticket reservation and advance sale for events’ in Class 41 and covered by the mark applied for, the Board of Appeal found that they were identical to the services in Class 41 which are covered by the series of earlier figurative marks and in respect of which genuine use had been established.
20 As regards the likelihood of confusion, the Board of Appeal found that the degree of visual and phonetic similarity between the signs at issue was low and that there could be no likelihood of confusion, even for the services which were found to be identical or similar, in the event that the earlier marks did not have a reputation. Consequently, it annulled the Opposition Division’s decision inasmuch as the Opposition Division had found that there was a likelihood of confusion on the part of the relevant public in respect of the identical or similar services, irrespective of the alleged reputation which the earlier marks might enjoy.
21 In the light of those considerations, the Board of Appeal held that the Opposition Division had to carry out a comprehensive and in-depth assessment of the likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009, taking account of the claim that the earlier marks had a reputation in the light of all the evidence that had been filed before it pursuant to Article 8(5) of Regulation No 207/2009.
22 As regards the series of earlier figurative marks, the Board of Appeal held, in paragraphs 81 and 82 of the contested decision, that ‘the degree of similarity between [those marks] and the mark applied for [was] even less’ and followed a similar line of reasoning.
23 Furthermore, according to the Board of Appeal, the Opposition Division had erred in finding that the publics targeted by the services it had found to be dissimilar in the application for registration and in the specifications of the earlier marks did not coincide. The Board of Appeal therefore annulled the Opposition Division’s decision so far as concerns Article 8(5) of Regulation No 207/2009.
24 Finally, the Board of Appeal stated, in paragraph 114 of the contested decision, that, ‘since the case is remitted to [the] Opposition Division, and a final decision has yet to be rendered, this decision will be appealable with the decision definitively deciding on the opposition’.
Forms of order sought
25 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
26 In the plea of inadmissibility, EUIPO contends that the Court should:
– declare the action inadmissible;
– order the applicant to pay the costs.
27 In its response, EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
28 The intervener contends that the Court should:
– declare the action inadmissible;
– in the alternative, dismiss the action on its merits;
– order the applicant to pay the costs.
Law
Preliminary considerations
29 At the hearing on 16 January 2020, the intervener submitted that, since the opposition to registration of MUSIKISS as an EU trade mark was based on earlier United Kingdom trade marks, in the event of the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union without an agreement, the opposition would have to be dismissed on the ground that the earlier United Kingdom trade marks would no longer enjoy the same protection and that, consequently, the action brought before the Court would be devoid of purpose.
30 Following the United Kingdom’s withdrawal from the European Union, the Court, by way of measures of organisation of procedure adopted in accordance with Article 89 of its Rules of Procedure, invited the parties to comment on the application of Article 127 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7, ‘the withdrawal agreement’), and on the judgments of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO (C‑340/17 P, not published, EU:C:2018:965), and of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE) (T‑598/18, EU:T:2020:22).
31 In that regard, it should be noted that the withdrawal agreement, which sets out the arrangements for the withdrawal of the United Kingdom from the European Union, entered into force on 1 February 2020. The agreement provides for a transition period from 1 February to 31 December 2020, which may be extended once, for a maximum duration of up to one or two years (‘the transition period’).
32 Article 127 of the withdrawal agreement stipulates that, unless otherwise provided, EU law continues to be applicable in the United Kingdom during the transition period.
33 It follows, as the parties accept in their written replies to the measures of organisation of procedure, that, in the absence of provisions to the contrary in the withdrawal agreement, Regulation 2017/1001 continues to be applicable to United Kingdom trade marks and that, accordingly, until the end of the transition period, the earlier marks registered by the applicant in the United Kingdom continue to receive the same protection as they would have received had the United Kingdom not withdrawn from the European Union.
34 That conclusion is supported by the fact that the existence of a relative ground for opposition must be assessed as at the time of filing of the application for registration of an EU trade mark against which the opposition has been filed (judgment of 30 January 2020, BROWNIE, T‑598/18, EU:T:2020:22, paragraph 19).
35 The fact that the earlier trade mark could lose the status of a trade mark registered in a Member State at a time after the filing of the application for registration of the EU trade mark, in particular following the possible withdrawal of the Member State concerned from the European Union, is in principle irrelevant to the outcome of the opposition (judgment of 30 January 2020, BROWNIE, T‑598/18, EU:T:2020:22, paragraph 19).
36 It follows that, in the present case, as at the date of the present judgment, the withdrawal of the United Kingdom from the European Union has no bearing on the protection enjoyed by the earlier trade marks as EU trade marks. Accordingly, those trade marks can still form the basis of an opposition to registration of the mark applied for.
37 As regards the question raised by the intervener at the hearing concerning the applicant’s interest in bringing proceedings following the United Kingdom’s withdrawal from the European Union, it should be noted that, according to settled case-law, an interest in bringing proceedings requires that the annulment of the contested act must be capable, in itself, of having legal consequences and that the action may therefore, through its outcome, procure an advantage to the party which brought it (see judgment of 17 September 2015, Mory and Others v Commission, C‑33/14 P, EU:C:2015:609, paragraph 55 and the case-law cited). A fortiori, in the present case, in view of the withdrawal agreement, the earlier United Kingdom marks continue to receive the same protection until the end of the transition period. Accordingly, the United Kingdom’s withdrawal does not affect the legal consequences of the contested decision vis-à-vis the applicant, with the result that the applicant retains its interest in seeking the annulment of that decision.
38 It follows that the present case retains its purpose despite the United Kingdom’s withdrawal from the European Union.
Admissibility of the action
39 EUIPO and the intervener raise two pleas of inadmissibility, based on, first, Article 66(2) of Regulation 2017/1001 and a general principle of administrative law according to which proceedings may be brought only against decisions expressing the administrative body’s final position and, second, Article 72(4) of that regulation according to which ‘the action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
Plea of inadmissibility based on Article 66(2) of Regulation 2017/1001 and a general principle of administrative law according to which proceedings may be brought only against decisions expressing the administrative body’s final position
40 EUIPO submits that, in accordance with Article 66(2) of Regulation 2017/1001, a decision which does not terminate proceedings as regards one of the parties can be appealed only together with the final decision, unless the decision allows a separate appeal.
41 EUIPO and the intervener argue that the contested decision did not terminate the proceedings as regards the applicant and that, consequently, it does not constitute EUIPO’s final position in relation to the mark applied for. According to EUIPO, whilst Article 66(2) of Regulation 2017/1001 is not, as such, applicable to actions before the General Court, it should be regarded as an expression of a general principle of EU administrative law pursuant to which an administrative act cannot be subject to review if it is not the expression of a final position of an EU administrative body.
42 EUIPO and the intervener maintain that the contested decision has placed the Opposition Division in a position to assess the reputation of the earlier marks and, on that basis, to assess the likelihood of confusion between the marks at issue, with the consequence that the applicant will have the opportunity, as the case may be, first, to challenge before the Board of Appeal the new decision issued by the Opposition Division and, subsequently, to bring an action before the General Court against the Board of Appeal’s decision.
43 In that regard, it should be noted, as EUIPO accepts, that Article 66(2) of Regulation 2017/1001 is not applicable to actions before the General Court, but applies to appeals brought before the Boards of Appeal of EUIPO against decisions taken by EUIPO at first instance. By contrast, actions before the General Court against decisions of the Boards of Appeal are covered by Article 72 of that regulation. Consequently, contrary to what EUIPO submits, the admissibility of actions brought before the General Court against decisions of the Boards of Appeal cannot be examined in the light of Article 66(2) of that regulation (judgment of 16 April 2018, Polski Koncern Naftowy Orlen v EUIPO (Shape of a service station), T‑339/15 to T‑343/15, not published, EU:T:2018:192, paragraph 28).
44 As regards the argument put forward by EUIPO and the intervener based on a general principle of EU administrative law according to which an administrative act cannot be subject to review if it is not the expression of a final position of an EU administrative body, it should be noted, first, that the Courts of the European Union have recognised no such general principle of law. While it is true that an action brought against a preparatory act is not admissible, since it is not brought against an act which constitutes the final position taken by the administrative body at the end of a procedure, the Courts of the European Union have previously recognised the admissibility of actions against acts which did not set out the final position of the administrative body but whose implications for the persons to whom they were addressed justified them being regarded as more than merely preparatory acts. Moreover, it has never been held that a Board of Appeal’s decision is preparatory in nature, even if, after a decision of an Opposition Division has been annulled, it remits the case to that division to be examined. Article 72 of Regulation 2017/1001, which provides that ‘actions may be brought before the General Court against decisions of the Boards of Appeal in relation to appeals’, does not distinguish between Board of Appeal decisions depending on whether or not they constitute the final position of the EUIPO bodies.
45 In any event, under Article 71(2) of Regulation 2017/1001, if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department is bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same (judgment of 16 April 2018, Shape of a service station, T‑339/15 to T‑343/15, not published, EU:T:2018:192, paragraph 31). It follows that, in the present case, the conclusions and grounds of the contested decision concerning the similarity between the goods and services, the similarity between the signs and the likelihood of confusion in the absence of the alleged reputation of the earlier marks constitute the Board of Appeal’s final position on those aspects of the dispute, which binds the Opposition Division now tasked with considering the issue of reputation under Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. Accordingly, the applicant must be able to challenge the Board of Appeal’s final conclusions, without having to wait for proceedings to continue before the Opposition Division so that it can then bring an appeal before the Board of Appeal and, if necessary, subsequently bring an action before the Court against the new decision. It follows that an alleged general principle of EU law relied on by EUIPO that proceedings may be brought only against decisions expressing the final position of an administrative body cannot, in any event, give grounds for finding the present action to be inadmissible.
46 It follows that the first plea of inadmissibility cannot be upheld.
Plea of inadmissibility based on Article 72(4) of Regulation 2017/1001
47 EUIPO and the intervener submit that the applicant does not have a legal interest in bringing proceedings against the contested decision because that decision has given the applicant the possibility of ultimately having its opposition upheld as regards all of the services concerned, including those that were found to be dissimilar, given that the Board of Appeal found that there may be a likelihood of confusion if the earlier marks have a reputation, which must now be examined by the Opposition Division so that a final decision can be given under Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. They submit that, from that perspective, the view cannot be taken that the applicant was adversely affected by the contested decision, with the result that a separate action against the contested decision is not admissible in terms of Article 72(4) of Regulation 2017/1001, which provides that an action before the Court is to be open to any party to proceedings before the Board of Appeal adversely affected by its decision.
48 In that regard, it should be noted that, according to case-law, a Board of Appeal decision is to be regarded as not having adversely affected one of the parties to opposition proceedings where it grants that party’s application on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even where it does not examine or where it dismisses the other grounds or arguments raised by that party (see judgment of 25 September 2015, Copernicus-Trademarks v OHIM – Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 28 and the case-law cited).
49 It is apparent from paragraph 110 of the contested decision that the Board of Appeal dismissed the applicant’s ancillary appeal against the finding in the Opposition Division’s decision that ‘Advertising, including online, in particular advertisements, for others; Employment agencies, in particular in connection with music or for those interested in music’ in Class 35 and covered by the mark applied for were dissimilar to the services covered by the earlier marks. Then, the Board of Appeal, first, upheld the intervener’s appeal in so far as it sought the annulment of the Opposition Division’s decision and, second, dismissed the applicant’s ancillary appeal as to the issue of similarity between the services. The applicant was therefore unsuccessful before the Board of Appeal. In addition, it should be noted that the Opposition Division’s decision annulled by the Board of Appeal granted in part the applicant’s claims since it upheld the applicant’s opposition to registration of the mark applied for in respect of all of the services in Classes 41 and 45 and for some of the services in Class 35, namely ‘Retailing and wholesaling, including online, of goods and services in the music sector’.
50 Furthermore, it is clear that the applicant was adversely affected by the Board of Appeal’s decision on various points.
51 First, the Board of Appeal dismissed the applicant’s arguments regarding the similarity between services, concluding that certain services in Classes 35 and 45, covered by the mark applied for, were dissimilar to the services covered by the earlier marks (see paragraphs 14 and 15 above).
52 Second, the Board of Appeal took the view, again contrary to what the applicant had submitted before it, that, in respect of all of the services which were found to be identical or similar, the degree of similarity between the signs was low, with the result that there could be no likelihood of confusion if the earlier marks did not have a reputation (see paragraph 20 above). Accordingly, the applicant’s right to oppose registration of the mark applied for depended, according to the contested decision, entirely on the reputation of the earlier marks, so that it cannot be found that the applicant was not adversely affected by the contested decision, especially since the burden which falls on the applicant to establish reputation may prove difficult to satisfy.
53 It follows that the second plea of inadmissibility cannot be upheld.
54 Accordingly, the pleas of inadmissibility raised by EUIPO and the intervener must be dismissed.
Substance
55 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. Whilst, in its pleadings, the applicant formally refers to the provisions of Regulation 2017/1001, the Court must interpret those pleadings in terms of their substance rather than of their classification (see, to that effect, judgment of 6 June 2019, BATTISTINO, T‑221/18, not published, EU:T:2019:382, paragraph 23 and the case-law cited). The first plea should therefore be regarded as alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009.
56 The applicant claims, in essence, that the Board of Appeal, first, erred in its assessment of the similarity between the services at issue; secondly, carried out an incorrect analysis of the distinctiveness of the mark applied for; thirdly, wrongly concluded that the signs at issue were not visually, phonetically and conceptually similar; and, fourthly, incorrectly assessed the likelihood of confusion.
57 EUIPO and the intervener dispute the applicant’s arguments.
58 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 is not to be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the 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.
59 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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).
60 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, to that effect, 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). In addition, 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 (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 74).
61 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was correct in finding that there was no likelihood of confusion between the marks at issue under Article 8(1)(b) of Regulation No 207/2009 if the earlier marks did not have a reputation.
The relevant public
62 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 or services 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).
63 In view of the fact that the earlier marks relied on in support of the opposition are protected in the United Kingdom, the likelihood of confusion must be analysed from the point of view of the relevant public established in the United Kingdom.
64 In the present case, the Board of Appeal found, in paragraph 39 of the contested decision, that the relevant public consisted of the general public with an average level of attention and professionals with a high level of attention. That finding, which, moreover, is not disputed, is free from error.
Comparison of the goods and services
65 In essence, the applicant contests in turn the Board of Appeal’s assessment in its comparison, first, of ‘social services, namely arranging groups sharing interests and dating via social networks’ with ‘entertainment services provided via a website’; second, of ‘social services, namely arranging groups sharing interests and dating via social networks’ with ‘providing use of software applications through a website’; and, third, of ‘advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music’ with ‘radio broadcasting services’.
66 In that regard, it should be noted that goods and services may be regarded as identical where the goods and services covered by the earlier mark are included in a more general category covered by the trade mark application (see, to that effect, judgment of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 53), or where the goods and services covered by the trade mark application are included in a more general category covered by the earlier mark (see judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
67 In assessing the similarity of the goods and services at issue, all the relevant factors relating to them should be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). Other factors may also be taken into account such as the distribution channels of the goods concerned (see 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).
68 Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (judgments of 1 March 2005, Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 60, and of 17 June 2008, El Corte Inglés v OHIM – Abril Sánchez and Ricote Saugar (Boomerang TV), T‑420/03, EU:T:2008:203, paragraph 98).
69 The similarity between the goods and services covered by the marks at issue is to be examined in the light of those principles.
– ‘Social services, namely arranging groups sharing interests and dating via social networks’ and ‘Entertainment services provided via a website’
70 In paragraphs 57 and 58 of the contested decision, the Board of Appeal found that ‘social services, namely arranging groups sharing interests and dating via social networks’, in Class 45 and covered by the mark applied for, are services that provide clients with a network of social interaction services, or for finding companionship or partners. It therefore considered that those services differed in nature and immediate purpose from ‘entertainment services provided via a website’ covered by the earlier word mark, with the result that there was no close complementary or competitive relationship between them. The relevant public would therefore not expect the provider of those services to be the same.
71 The applicant disputes that assessment. It criticises the Board of Appeal for giving too narrow an interpretation to ‘entertainment services provided via a website’ by limiting them to listening to music or a radio broadcast or to the organisation of cultural or sporting events. According to the applicant, the Board of Appeal also misinterpreted the services in Class 45 covered by the mark applied for as services that ‘provide clients with a network of social interaction services’. In so doing, the Board erred by failing to take into consideration that such social interactions should relate to shared interests and take place via a website.
72 The applicant claims that ‘social services, namely arranging groups sharing interests and dating via social networks’ in Class 45 and covered by the mark applied for are included in ‘entertainment services provided via a website’ covered by the earlier word mark and are therefore identical, or at least highly similar.
73 In that regard, it should be noted that ‘entertainment services provided via a website’ in Class 41 and covered by the earlier word mark encompass conceptually all types of entertainment that can be enjoyed on a website, such as, by way of illustration: the organisation of exhibitions and competitions; games or even gambling; audio, video and multimedia productions; and photography. The essential aim and direct purpose of all of those services, of which there is an enormous, if not unlimited, variety, is to provide individuals with entertainment and recreation.
74 By contrast, the intervener’s ‘social services, namely arranging groups sharing interests and dating via social networks’ in Class 45 are intended to meet people’s social and companionship needs and the need to find friends or a partner.
75 The fact that services in Classes 41 and 45 may be provided online does not make them similar since their main purpose is different. The means by which they are disseminated are not, as such, capable of altering their main purpose, since today there are very many services which can be provided online.
76 The Board of Appeal was therefore correct to find that ‘social services, namely arranging groups sharing interests and dating via social networks’ covered by the mark applied for and ‘entertainment services provided via a website’ covered by the earlier word mark differ in nature and immediate purpose and that a close complementary or competitive relationship does not exist between them.
– ‘Social services, namely arranging groups sharing interests and dating via social networks’ and ‘Providing use of software applications through a website’
77 In paragraph 44 of the contested decision, the Board of Appeal stated that the earlier word mark covers goods and services that can be grouped into the following categories: ‘application software’ in Class 9, without an indication of the nature of the application, and the related services of ‘providing use of software applications through a website’ in Class 41. Its analysis focuses on the goods in Class 9, but the same considerations apply to the services in Class 41.
78 In paragraph 52 of the contested decision, the Board of Appeal took the view that, without any details as to the type or purpose of the downloadable software applications included in the goods that are in Class 9 and covered by the earlier word mark, those applications cannot be regarded as encompassing the social services in Class 45 that are covered by the mark applied for. The Board of Appeal therefore considered the ‘software applications’ category to be too wide and indeterminate to enable a proper comparison to be made for the purpose of identifying whether there is any similarity with the social services in Class 45.
79 According to the applicant, the Board of Appeal erred by not examining its claim, submitted in the alternative, that there is a similarity between ‘social services, namely arranging groups sharing interests and dating via social networks’, in Class 45 and covered by the mark applied for, and ‘providing use of software applications through a website’, in Class 41 and covered by the earlier word mark. In the applicant’s view, that comparison would have led to the conclusion that those services are highly similar.
80 The applicant submits that social services, particularly dating services, are provided through software applications downloaded from a website or other online platform. Accordingly, arranging ‘dating via social networks’ must include within its scope arranging dating via social networks provided by way of a software application and therefore the services covered by the mark applied for are complementary to ‘providing use of software applications through a website’ covered by the earlier word mark since a software application is indispensable for the provision of a dating service via social networks.
81 In that regard, it should be noted, as the intervener has done, that the alternative analysis sought by the applicant would not really have changed the Board of Appeal’s conclusion. The applicant wrongly confuses the means of distribution of the goods or services, here websites, with the principal goods or services themselves, which are, in the applicant’s case, software applications and, in the intervener’s case, specific social services. The software applications of the earlier word mark are not designed to encompass every kind of specific service provided online via a website or through software applications, since nowadays there are very many services which can also be provided online. Furthermore, consumers will not think that the same undertaking is responsible for manufacturing those applications and for providing those services. It follows that there is no complementarity between the applicant’s goods, namely software applications, and the social services offered by the intervener through a website or software applications.
82 The purpose of the applicant’s services consisting in ‘providing use of software applications through a website’ and of its goods consisting in ‘software applications’ is not determined, with the result that it cannot be found that they are specifically intended to be used for the social services in Class 45 that are covered by the mark applied for. Since social services, like many other services, can nowadays be provided through a website or other platform, that method of providing services does not necessarily mean that the relevant public will think that those goods and services come from the same undertaking or from economically linked undertakings.
83 In the light of the foregoing, the Board of Appeal did not err in finding that there is no similarity between the goods and services in question.
– ‘Advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music’ and ‘radio broadcasting services’
(1) Advertising services
84 The Board of Appeal endorsed the Opposition Division’s analysis, which is reproduced in paragraph 12 of the contested decision, according to which ‘advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music’ in Class 35 and covered by the mark applied for differed in nature and purpose and shared no common element with the radio broadcasting services covered by the earlier figurative marks.
85 The applicant disputes that conclusion, stating that the Board of Appeal should have concluded that ‘radio broadcasting services’ include services of commercial radio stations that offer not only advertising services but also advice to undertakings on their advertising strategy such that there is a close complementary or competitive relationship between ‘radio broadcasting services’ and ‘advertising services’. The applicant draws the conclusion that there is a high degree of similarity between ‘radio broadcasting services’ and ‘advertising, including online, in particular advertisements, for others’.
86 However, as EUIPO and the intervener contend, advertising services are generally provided by advertising agencies whose aim is to analyse the needs of clients and provide them with the necessary information and advice to market their goods and services. In order to meet that objective, those agencies develop a personalised strategy to advertise the goods and services through various distribution channels, such as newspapers, catalogues, websites or by television or radio broadcasting.
87 By contrast, the principal objective of a radio broadcasting service is to broadcast entertainment and information to the general public, including end consumers, while also offering other undertakings air time, generally used as advertising space, in order to provide the undertaking which broadcasts the radio programmes with a revenue stream. The principal objective of a radio broadcasting service is not, however, to provide undertakings with advice on their advertising strategies, choice of media or means of advertisement distribution. The radio is merely the means by which the advertisement is broadcast. The nature, intended use and purpose of advertising services are fundamentally different from the distribution channel of those services. Accordingly, the fact that it is possible to advertise on the radio, among other channels, is not such as to lead to the conclusion that the services at issue are complementary or in competition. It follows that the Board of Appeal did not err in finding that there is no similarity between the intervener’s advertising services and the applicant’s radio broadcasting services.
(2) Employment agency services
88 As a preliminary observation, it should be noted that the Board of Appeal refuted the Opposition Division’s conclusion that employment agency services were aimed solely at professionals whereas radio broadcasting services were aimed at the general public.
89 In paragraphs 103 and 104 of the contested decision, the Board of Appeal took the view that, as regards advertising services, the relevant public will coincide with that of employment agency services, which target not only professionals, namely employers who are looking to recruit and who have a high level of attention, but also job seekers, or the general public, which may include listeners of radio stations, who display an average level of attention. Consequently, there would be an overlap between the relevant sections of the public in respect of the two services compared (paragraph 106 of the contested decision).
90 This assessment of the Board of Appeal, which has not been challenged by the parties before the Court, is not vitiated by error.
91 The applicant’s objection in that regard concerns only the Board of Appeal’s conclusion that ‘employment agency services, in particular in connection with music or for those interested in music’ covered by the mark applied for pursue very specific objectives not pursued by the goods and services covered by the series of earlier figurative marks, that is to say, radio broadcasting.
92 The applicant submits that, contrary to the Board of Appeal’s finding, employment agency services and radio broadcasting services are complementary and therefore similar.
93 EUIPO argues that the intended purpose of employment agency services is different from that of radio broadcasting services and that the same channels are not used to provide the services so that it cannot be concluded that the services are complementary, or even similar.
94 In that regard, it should be noted that the aim of employment agencies is to meet the recruitment needs of employers while enabling job seekers to find employment opportunities. Radio broadcasting services are not indispensable for employment agency services, but may constitute one of the various means of distributing information about various categories of goods and services, including employment agency services.
95 It is clear, as the intervener correctly states, that the applicant once again confuses the medium or means of distribution, here radio broadcasting, with the main aim of the specific business services, here employment agency services. Employment agency services and radio broadcasting services have an entirely different nature and purpose, so that the sole fact that they use the same means of distribution does not mean that the public concerned will consider that those goods and services come from the same undertaking or from economically linked undertakings. There is no close or complementary relationship between those services that would lead to the conclusion that they are similar.
96 It must therefore be concluded that the Board of Appeal’s assessment that the nature and purpose of employment agency services and radio broadcasting services are different, and that therefore those services are dissimilar, is not vitiated by error.
97 Accordingly, the applicant’s line of argument concerning the similarity between the goods and services must be rejected in its entirety.
Comparison of the signs
98 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).
– Distinctive and dominant character of the elements making up the trade mark applied for
99 Two marks are similar, for the purpose of Article 8(1)(b) of Regulation No 207/2009, when, from the point of view of the public concerned, they are at least partially identical as regards one or more relevant aspects (see judgment of 25 November 2003, Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU), T‑286/02, EU:T:2003:311, paragraph 38 and the case-law cited). The visual, phonetic and conceptual aspects are relevant (see judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
100 According to settled case-law, the consumer normally attaches more importance to the first part of words than to their end (judgments 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 81, and of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65). However, that consideration cannot apply in all cases and cannot, in any event, undermine the principle that the examination of the similarity between trade marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM – Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 58).
101 It is by application of those principles that it is necessary to examine the applicant’s arguments concerning the weak distinctive character of the ‘musik’ element of the mark applied for and the need to base the comparison of the signs at issue on the ‘kiss’ element of that mark.
102 In that regard, it should be noted at the outset that the Board of Appeal conducted its analysis mainly by reference to the earlier word mark, which is more similar to the mark applied for than the series of earlier figurative marks, and by then applying a similar logic and conclusion to the series of earlier figurative marks, as is apparent from paragraphs 80 to 82 of the contested decision.
103 In paragraph 67 of the contested decision, the Board of Appeal stated that, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, nevertheless, perceiving a word sign, he or she will break it down into verbal elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her.
104 The Board of Appeal thus considered that, having regard to the fact that the services at issue relate to music, the consumer’s attention will be drawn to the ‘musi’ or ‘musik’ component of the mark applied for.
105 The applicant agrees that the average consumer will break down the mark applied for into two elements, namely ‘musi’ or ‘musik’ and ‘kiss’, but it takes the view that since ‘kiss’ is a common word in the English language, the consumer would clearly recognise that word and his or her attention would be drawn to that element, which would therefore be the dominant element of the mark.
106 The applicant claims that the Board of Appeal was wrong to consider that the consumer’s attention would be drawn to the ‘musi(k)’ element of the mark applied for and that, after concluding that that element was descriptive of the nature of the services covered by that mark, the Board of Appeal should have concluded that the distinctiveness of that element was low, at least in respect of the services which relate to music, so that the dominant and distinctive element of the mark applied for is ‘kiss’.
107 In the alternative, the applicant adds that, even if the ‘kiss’ element is not dominant within the mark applied for, the Board of Appeal should have concluded, in accordance with its finding that the average consumer would break down the mark into word elements, that ‘kiss’ has an independent distinctive role in that mark because the ‘musi’ element does not modify the ‘kiss’ element in a clear and unambiguous way.
108 In that regard, it is true that the Board of Appeal found that the ‘musi(k)’ element relates to the services covered by the mark applied for. However, in the light of the case-law cited in paragraph 100 above, that sole fact cannot play a decisive role in the examination of whether that element is dominant within the mark, since, when perceiving the word sign MUSIKISS, the consumer will have his or her attention drawn to the beginning of that sign, which is a word he or she will know and which, moreover, suggests a certain meaning alluding to the services at issue, and thus holding his or her attention more.
109 Consequently, the Board of Appeal did not err in finding that the consumer’s attention, when he or she perceives the mark applied for, will be drawn to the ‘musik’ element which is at the beginning of that mark and relates to the services at issue.
110 As regards the applicant’s argument concerning the independent distinctive role of the ‘kiss’ element of the mark applied for, it should be noted that, according to case-law, in order to establish the likelihood of confusion, it suffices that, on account of the earlier mark still having an independent distinctive role, the public also attributes the origin of the goods or services covered by the composite sign to the proprietor of that mark (judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 30 and 36, and order of 15 February 2011, Perfetti Van Melle v OHIM, C‑353/09 P, not published, EU:C:2011:73, paragraph 36).
111 Nonetheless, a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25).
112 In the present case, even though the earlier word mark is entirely contained in the mark applied for, consumers’ attention will be drawn more to the beginning of the mark applied for than to its end, as is clear from paragraph 108 above. Furthermore, those marks create a different overall impression, so that the word ‘kiss’ does not play the same role in the MUSIKISS sign as it does in the earlier word mark, which consists of only that word. The mark applied for will therefore not be perceived as the earlier word mark to which another word has been added. Consequently, the ‘kiss’ element does not have an independent distinctive role in the mark applied for (see, to that effect, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 37).
113 Furthermore, the earlier mark, consisting entirely and exclusively of the common noun ‘kiss’, cannot be afforded distinctiveness that is so high that its proprietor would have an unconditional right to oppose registration, in respect of goods and services similar to those covered by that mark, of any subsequent mark in which that common noun appears.
114 It follows that the Board of Appeal correctly assessed the distinctive and dominant elements of the mark applied for.
– Visual similarity
115 In the present case, it should be noted that, from a visual standpoint, the Board of Appeal focused its analysis on the earlier word mark, which is the most similar to the mark applied for. In paragraph 68 of the contested decision, the Board of Appeal concluded that the degree of similarity between those signs is low. It pointed out that there is a significant difference in the lengths of the signs, with the mark applied for having twice as many letters as the earlier word mark. It considered that the ‘kiss’ element of the mark applied for has no bearing on that finding, since it appears at the end of that mark and the public generally attaches more importance to the beginning of a mark than to its end.
116 In paragraph 80 of the contested decision, the Board of Appeal added that the degree of visual similarity between the earlier figurative marks, which contain a highly stylised large letter ‘k’ as well as the term ‘kiss’, and the mark applied for is even less.
117 The applicant’s criticisms are focused on the Board of Appeal’s comparison of the mark applied for with the earlier word mark. It disputes the Board of Appeal’s assessment, claiming that, since ‘kiss’ is the dominant and distinctive element of the mark applied for and ‘musi’ is descriptive of the content of the services covered by that mark, consumers will pay more attention to the second part of that mark, that is to say, to ‘kiss’. The applicant submits that the Board of Appeal was wrong to dismiss the relevance of that word on the ground that it appears at the end of the mark applied for.
118 The applicant also takes issue with the Board of Appeal for not having properly taken into consideration the fact that the signs at issue are partially identical by placing, on the contrary, undue emphasis on the difference in the length of the mark applied for and that of the earlier word mark. The fact that ‘kiss’ appears in both marks is an indication that they are similar, which cannot be called into question by the fact that the mark applied for is longer than the earlier word mark. On the basis of that analysis, the applicant claims that, visually, the signs are highly similar.
119 EUIPO and the intervener dispute the applicant’s arguments.
120 Those arguments must be rejected.
121 First, it is true that the signs at issue both contain the word ‘kiss’, which forms the entirety of the earlier word mark and the end of the mark applied for. However, the signs differ by the first four letters of the mark applied for, which clearly contains twice as many letters as the earlier word mark, thus creating a significant difference between the signs from a visual standpoint.
122 Furthermore, as it is placed at the beginning of the mark applied for, the ‘musi(k)’ element is likely to have a greater impact than the rest of the mark applied for and thus to create a significant difference in comparison with the overall impression conveyed by the earlier mark (see, to that effect, judgments of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 16 March 2005, FLEXI AIR, T‑112/03, EU:T:2005:102, paragraphs 64 and 65).
123 As regards the applicant’s argument that, in the overall visual impression conveyed by the mark applied for, the ‘kiss’ element has an independent distinctive role, it should be pointed out that the sign MUSIKISS will be perceived as a single word. It follows that the earlier word mark cannot be regarded as having an independent distinctive role within the mark applied for which would somehow increase the visual similarity between those signs.
124 Accordingly, the Board of Appeal did not err in finding that the visual similarity between the signs at issue was low.
– Phonetic similarity
125 Phonetically, the Board of Appeal followed a line of reasoning similar to that adopted in the visual comparison of the signs. It stated, in paragraph 69 of the contested decision, that the signs at issue differ by the first two syllables of the mark applied for. The coincidence of the ‘kiss’ element in the signs is said to give rise to only a low degree of phonetic similarity.
126 The applicant takes issue with the Board of Appeal for not having properly taken into consideration the fact that the signs at issue are partially identical. It takes the view that, in so doing, the Board of Appeal placed too much emphasis on the fact that the first two syllables of the mark applied for differ from the earlier word mark.
127 In that regard, it is true that the mark applied for and the earlier word mark are partially identical from a phonetic standpoint inasmuch as the ‘kiss’ element, which is common to both marks, is pronounced in the same way. It is also true that, according to case-law, where the sole element forming the earlier mark is entirely contained within the mark applied for, the signs at issue are partially identical in such a manner as to create a certain impression of similarity on the part of the relevant public (see, to that effect, judgments of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 93, and of 23 April 2015, Iglotex v OHIM – Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 65).
128 However, it should be noted that, in the present case, the ‘kiss’ element is not the dominant element of the mark applied for and that, in general, the consumer’s attention is directed more to the beginning of the word forming that mark (see, to that effect, judgment of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 83).
129 That conclusion cannot be called into question by the applicant’s argument that, in English, it is the ‘kiss’ element which is stressed when the word ‘musikiss’ is pronounced as a result of the repetition of the letter ‘s’ at the end of the mark. It is clear from both practical experience and case-law that, normally, a mark will be perceived phonetically by the beginning of the sign in the first place. That is particularly so in the present case, since, contrary to what the applicant submits, when the word ‘musikiss’ is pronounced the stress will be placed clearly on the beginning, in a way that makes the end of the word less perceptible and discernible. Consequently, the coincidence of the ‘kiss’ element in the signs at issue is made even less clear from a phonetic standpoint.
130 It should also be pointed out that the mark applied for consists of three syllables, ‘mu’, ‘si’ and ‘kiss’, whereas the earlier word mark consists of only one syllable, ‘kiss’, which coincides with the last syllable of the mark applied for, with the result that the consumer will direct his or her attention to the first two syllables, which are different.
131 However, despite the factors which differentiate the signs at issue phonetically, it is clear that, as the applicant submits, there is an overlap between those signs, which are partially identical, as is apparent from paragraph 127 above, and therefore the phonetic similarity between the signs is average and not, as the Board of Appeal found, low.
– Conceptual similarity
132 The Board of Appeal held, in paragraph 70 of the contested decision, that the signs at issue could not be regarded as conceptually similar.
133 The applicant claims that the Board of Appeal erred in its assessment when it found that a significant part of the relevant public would perceive the mark applied for as one word. According to the applicant, the average consumer would isolate the ‘kiss’ element from that mark, especially because the consumer would consider the ‘musi’ element to be descriptive of the services covered by the mark. The applicant submits that the consumer would consider the signs at issue to be highly similar from a conceptual standpoint.
134 However, it is clear that, as EUIPO contends, the ‘kiss’ element of the mark applied for will not be isolated within the word ‘musikiss’ and that the relevant public will not perceive the concept conveyed by the ‘kiss’ element of that mark.
135 The ‘kiss’ element, which constitutes the entirety of the earlier word mark and the only word element of the series of earlier figurative marks, means ‘a touch or caress of the lips’. The mark applied for does not have any clear meaning, but has a particular connotation, consisting in a novel combination of two common words. Since that combination starts with the ‘musi’ element, the ‘kiss’ element does not appear as a separate element that is severable from the neologism forming the mark and the public will perceive the mark applied for as one word evoking a caress created by music.
136 Nevertheless, since the particular connotation of the mark applied for is not unrelated to the idea of a touch or caress of the lips, it should be found that there is a low degree of conceptual similarity. The Board of Appeal was therefore wrong to rule out any conceptual similarity.
137 However, that finding and the finding as regards the average phonetic similarity do not affect the outcome of the analysis of the likelihood of confusion set out in the contested decision. In the light of the particular connotation of the mark applied for set out in paragraph 135 above, the average phonetic similarity and the low visual and conceptual similarity between the signs at issue cannot call into question the Board of Appeal’s overall assessment of the likelihood of confusion.
138 According to settled case-law, the visual, phonetic or conceptual aspects of the signs at issue do not always carry the same weight. The importance of elements of similarity or difference between the signs may depend, in particular, on the inherent qualities of the marks or the conditions under which the goods or services covered by the mark are marketed. Thus, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark designating those goods visually (see judgment of 12 July 2019, MAN Truck & Bus v EUIPO – Halla Holdings (MANDO), T‑792/17, not published, EU:T:2019:533, paragraph 83 and the case-law cited). In the present case, there is nothing to indicate that, in general, consumers of the goods and services at issue will purchase them in circumstances such that the phonetic similarity between the signs at issue would carry more weight than the visual or conceptual similarity in the assessment of the overall similarity.
139 Accordingly, in the light of the distinctive and dominant elements of the signs at issue and the resulting analysis regarding the visual, phonetic and conceptual comparison of the signs, the Board of Appeal did not err in concluding that, overall, the signs are similar to a low degree.
The likelihood of confusion
140 According to settled case-law, 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 the similarity 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 (see, to that effect, judgments 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, and of 26 January 2017, Opko Ireland Global Holdings v EUIPO – Teva Pharmaceutical Industries (ALPHAREN), T‑88/16, not published, EU:T:2017:32, paragraph 107).
141 Accordingly, it is necessary to interpret the concept of similarity between the marks in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the marks and between the goods or services covered (see, to that effect and by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19).
142 In the present case, in paragraph 111 of the contested decision, on the basis of its analysis of the similarity between, first, the goods and services and, second, the signs at issue, the Board of Appeal found that, if the earlier marks did not have a reputation, there was no likelihood of confusion between the marks at issue. It therefore decided to remit the case to the Opposition Division so that the Opposition Division could assess the claim that the earlier marks have a reputation and thereafter reach a conclusion on the likelihood of confusion.
143 The applicant submits that it should be found that there is a likelihood of confusion between the services regarded as identical or similar since, even if the ‘kiss’ element is not dominant in the mark applied for, that element still has an independent distinctive role within that mark which gives rise to a likelihood of confusion.
144 However, first, as is clear from paragraph 135 above and as the intervener correctly states, the different overall impression created by the mark applied for will not lead consumers to associate it with the earlier word mark if that earlier mark does not have a reputation. The earlier word mark consists of an ordinary word commonly used in everyday language as well as in other trade marks, so that, if its earlier marks do not have a reputation, the applicant cannot be given an unconditional right to oppose the registration of any subsequent mark containing that word, in respect of services or goods comparable to those covered by the applicant’s trade mark, a situation which would result in the improper monopolisation of that everyday word element.
145 Second, the first part of the sign MUSIKISS is fundamentally different from the ordinary word ‘kiss’ and creates a different overall impression from that of the earlier marks, which rules out any likelihood of confusion with those marks, if they do not have a reputation, even as regards the services considered identical or similar.
146 It is true that, as the applicant submits, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the signs and vice versa. However, it is clear that, in the present case, the low degree of similarity between the signs at issue, found in paragraph 139 above, cannot be offset, in the global assessment of the likelihood of confusion, by the fact that some of the services at issue are identical or similar, since the identity of those services is not sufficient for there to be a likelihood of confusion in such circumstances (see, to that effect, judgment of 5 October 2005, Bunker & BKR v OHIM – Marine Stock (B.K.R.), T‑423/04, EU:T:2005:348, paragraph 77).
147 In the light of the foregoing, it should be concluded that the Board of Appeal did not err in finding that, if the earlier marks did not have a reputation, any likelihood of confusion between the marks at issue could be ruled out in accordance with Article 8(1)(b) of Regulation No 207/2009 and that it was therefore necessary to remit the case to the Opposition Division so that it could carry out a comprehensive and in-depth assessment of the likelihood of confusion ‘for further prosecution under Article 8(1)(b) and Article 8(5) of Regulation No 207/2009’, taking account of the claim that the earlier marks have a reputation in the light of all of the evidence which has been submitted to it.
Costs
148 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.
149 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Bauer Radio Ltd to pay the costs.
Delivered in open court in Luxembourg on 23 September 2020.