JUDGMENT OF THE GENERAL COURT (Second Chamber)
1 March 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark The Crush Series – Earlier EU figurative mark CRUSH – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑295/22,
Crush Series Publishing s.r.o., established in Prague (Czech Republic), represented by D.-M. Belciu, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaitė and J. Ivanauskas, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Mediaproduccion SLU, established in Barcelona (Spain),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and J. Schwarcz, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
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
1 By its action based on Article 263 TFEU, the applicant, Crush Series Publishing s.r.o., seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 March 2022 (Case R 1303/2021-5) (‘the contested decision’).
Background to the dispute
2 On 3 September 2019, the applicant filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark applied for covered goods and services in Classes 16, 28 and 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
– Class 16: ‘Books; illustrated books; educational books; children’s books; colouring books; storybooks; children’s storybooks; playing cards with questions; cards; Christmas cards; anniversary cards; motivational cards; birthday cards; pencil ornaments; table decorations of paper; paper party decorations; wall decorations of paper; metallic paper party decorations; pencils; colour pencils; carioca pencils; drawing pencils; pencil sets; pencils for colouring’;
– Class 28: ‘Toys; inflatable toys; buzzing toys; talking toys; flexible toys; stuffed toys; smart toys; modular toys; electronic toys; musical toys; toys made of rubber; plush toys; mechanically powered toys; wooden toys; bathtub toys; stuffed pillows (toys); toys adapted for educational activities; smart plush toys; water toys; plastic toys; books [games]; playing cards; card games; teddy bears; plush dolls; puzzles; toys in the form of puzzles’;
– Class 41: ‘Publication of educational books; publication of audio books; publishing of books, magazines; publication and edition of books’.
4 On 30 December 2019, Mediaproduccion SLU filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on the earlier figurative mark covering goods in Classes 16 and 28 and corresponding, for each of those classes, to the following description: ‘Printed matter; periodicals; newspapers and periodical publications’ and ‘Games, other than gambling, toys’, reproduced below:
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 28 May 2021, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 on the ground that there was a likelihood of confusion.
8 On 26 July 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for the English-speaking part of the relevant public.
10 In particular, the Board of Appeal found, first of all, that the goods and services at issue were identical or similar. Next, it found that, for the English-speaking part of the relevant public, the signs at issue were visually similar to at least a below-average degree, phonetically similar to an average degree and conceptually similar to a low degree. In the light of those considerations, but also of the fact that neither the additional terms nor the figurative elements of the signs at issue were likely to divert fully the relevant public’s attention from the overall similarity created by their distinctive and, at least, co-dominant element, ‘crush’, the Board of Appeal concluded that there could be a likelihood of confusion for the English-speaking part of the relevant public.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition and allow registration of the mark applied for;
– order EUIPO to pay the costs incurred in the present proceedings and those incurred before the Board of Appeal.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
14 By its action, the applicant claims, in essence, that the Board of Appeal, first, carried out an incorrect comparison of the goods and services at issue by considering them to be either identical or similar, second, failed to assess the signs at issue in their entirety and limited itself to the word element ‘crush’ alone, and therefore found that the signs at issue were identical or similar and, third, erred in finding that there was a likelihood of confusion.
15 EUIPO disputes the applicant’s arguments.
16 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the 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.
17 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).
18 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
Preliminary observations
19 It should be noted, first, that neither the applicant nor EUIPO has called into question the Board of Appeal’s definition of the relevant public. The Board of Appeal found that the relevant public was the public throughout the European Union consisting, in part, of the general public and, in part, of professional consumers with specific professional expertise and knowledge. The Board of Appeal also found that their level of attention would vary from average for the general public to high for the professional public.
20 Second, the Board of Appeal found that the earlier mark, taken as a whole, was devoid of meaning for all the goods at issue. The Board of Appeal therefore concluded that it had an average degree of distinctiveness.
21 In the present case, there is nothing in the file capable of calling into question those findings, which, moreover, are not disputed by the parties.
The comparison of the goods and services
22 It should be recalled that, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods 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 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).
23 In the contested decision, the Board of Appeal found, first of all, that, as regards the goods in Class 16 covered by the mark applied for, ‘books; illustrated books; educational books; children’s books; colouring books; storybooks; children’s storybooks; playing cards with questions; cards; Christmas cards; anniversary cards; motivational cards; birthday cards; pencil ornaments; table decorations of paper; paper party decorations; wall decorations of paper; metallic paper party decorations’ were included in or overlapped with ‘printed matter’ covered by the earlier mark. Those goods are therefore identical. The Board of Appeal found that ‘pencils; colour pencils; carioca pencils; drawing pencils; pencil sets; pencils for colouring’ could be found on the same shop shelves, target the same consumers and could be sold in the same sets as ‘printed matter’ covered by the earlier mark. There is therefore a low degree of similarity between those goods.
24 Next, as regards the goods in Class 28 covered by the mark applied for, the Board of Appeal found that those goods were either included in the broader category of ‘toys’ or included in the category of ‘games, other than gambling’ covered by the earlier mark. According to the Board of Appeal, those goods are therefore identical.
25 Lastly, as regards the services in Class 41 covered by the mark applied for, the Board of Appeal found that they had the same purpose, were complementary and were generally offered by the same companies as ‘printed matter; newspapers and periodical publications’ covered by the earlier mark. Those services are therefore similar, at least to a low degree, to the goods covered by the earlier mark.
26 The applicant criticises the Board of Appeal’s assessment of the similarity of the goods and services at issue and submits, in essence, that that assessment is incorrect in so far as the Board of Appeal found that those goods and services were identical or similar.
27 EUIPO disputes the applicant’s arguments.
28 As a preliminary point, first, it should be noted that the applicant claims that the goods covered by the earlier mark are defined broadly. According to the applicant, in the absence of any precise indication of the goods at issue, it is not possible to establish a similarity or complementarity between the goods covered by the earlier mark and the goods and services covered by the mark applied for. In support of that argument, the applicant cites the judgment of 6 December 2017, Tulliallan Burlington v EUIPO – Burlington Fashion (Burlington) (T‑120/16, EU:T:2017:873).
29 However, the judgment of 6 December 2017, Tulliallan Burlington v EUIPO – Burlington Fashion (Burlington) (T‑120/16, EU:T:2017:873), cited by the applicant, is not relevant in the present case. First of all, the section cited by the applicant concerns only retail services in Class 35 of the Nice Classification and not the goods covered by the earlier mark in the present case. In addition, the Court of Justice set aside that judgment of the General Court cited by the applicant, because the General Court had erred in law in finding, in paragraph 71 of that judgment, a paragraph moreover cited by the applicant, that the absence of any precise statement of the goods which may be sold in the various shops comprising a shopping arcade, such as the shopping arcade referred to by the earlier trade marks, precluded any association between those shops and the goods covered by the marks applied for (judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 137).
30 In any event, it cannot be inferred from the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that, when a mark is relied on in support of the ground of opposition referred to in Article 8(1)(b) of Regulation 2017/1001, that ground of opposition may be rejected from the outset, simply by invoking the absence of any precise statement of the goods covered by the earlier mark (see judgment of 24 February 2021, Bezos Family Foundation v EUIPO – SNCF Mobilités (VROOM), T‑56/20, not published, EU:T:2021:103, paragraph 30 and the case-law cited).
31 In those circumstances, even if it were established, as alleged by the applicant, that the registration of the earlier mark in respect of ‘printed matter’, ‘periodicals’ and ‘newspapers and periodical publications’ in Class 16 is contrary to the requirement of clarity and precision identified in the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that fact would not be such as to prevent, in opposition proceedings, a comparison of those goods and the goods covered by the mark applied for from being carried out for the purposes of assessing the likelihood of confusion.
32 Second, it should be noted that the applicant’s line of reasoning is based, in part, on the specific intended purpose of the goods at issue, in particular as regards the goods covered by the mark applied for in Classes 16 and 28. It submits, inter alia, that the goods covered by the mark applied for are ‘related to this concept of fairytales, bedtime stories, enhancing thus this perception of softness, calm, tranquility [and] relaxation’.
33 In that regard, it should be noted that, in the context of opposition proceedings, EUIPO may only take account of the list of goods as it appears in the trade mark application subject only to any amendments thereto and not to the intentions of the applicant, as to the use which it intends to make of the mark if it is registered (judgments of 22 March 2007, Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraph 89, and of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 47). Consequently, the applicant’s claims relating to the goods as they are marketed, concerning the goods in Classes 16 and 28, are of no relevance to the assessment of the similarity of the goods and services at issue.
34 The Board of Appeal was therefore fully entitled to assess the similarity of the goods covered in the light of the lists of goods as set out in the application for registration of the mark applied for.
35 Third, it should be noted that the applicant complains that the Board of Appeal relied on remote presumptions ‘[going] beyond any facts, [evidence] and arguments’, in breach of Article 95(1) of Regulation 2017/1001. According to the applicant, the Board of Appeal ‘construed by itself an identity/similarity of [the] goods and services [at issue]’, by not confining itself to a ‘legal interpretation’ of the goods covered by the earlier mark.
36 It should be noted that Article 95(1) of Regulation 2017/1001 provides, in essence, that, in proceedings relating to relative grounds for refusal of registration, EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.
37 In that regard, it should be noted that the applicant merely submits, without substantiating its assertion, that the Board of Appeal went ‘beyond any facts, [evidence] and arguments’. Even if the applicant intends to argue by that line of reasoning that the Board of Appeal went beyond the literal meaning of the terms used to designate the goods covered by the earlier mark, it should be noted that Article 33(5) of Regulation 2017/1001 provides that the use of general terms, including the general indications of the class headings of the Nice Classification, is to be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. In the present case, the Board of Appeal merely interpreted the terms of the goods and services at issue in the light of their literal meaning, and did not go beyond that meaning, as the applicant claims. As will be noted below, the Board of Appeal correctly included certain goods covered by the mark applied for in the classes of goods covered by the earlier mark, taking into account the literal meaning of the latter.
38 Consequently, the applicant’s argument alleging infringement by the Board of Appeal of Article 95(1) of Regulation 2017/1001 must be rejected.
39 It must therefore be determined whether the Board of Appeal was correct in finding that the goods and services covered by the mark applied for were similar or identical to the goods covered by the earlier mark.
The goods in Class 16
40 First, as regards ‘books; illustrated books; educational books; children’s books; colouring books; storybooks; children’s storybooks; playing cards with questions; cards; Christmas cards; anniversary cards; motivational cards; birthday cards; pencil ornaments; table decorations of paper; paper party decorations; wall decorations of paper; metallic paper party decorations’ in Class 16, covered by the mark applied for, the applicant submits that the Board of Appeal erred in finding that they were included in or overlapped with ‘printed matter’ in the same class covered by the earlier mark. The applicant claims that the Board of Appeal therefore erred in finding that those goods were identical.
41 In that regard, the case-law states that, where the goods or services covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
42 In the present case, as the Board of Appeal found, the goods covered by the mark applied for, set out in paragraph 40 above, are included in or overlap with ‘printed matter’. Thus, in the light of the case-law set out in paragraph 41 above, the Board of Appeal correctly concluded, on the basis of well-known facts, that those goods covered by the mark applied for were identical to ‘printed matter’ covered by the earlier mark.
43 Second, as regards the other goods in Class 16 covered by the mark applied for, namely ‘pencils; colour pencils; carioca pencils; drawing pencils; pencil sets; pencils for colouring’, the applicant disputes the Board of Appeal’s finding that they are similar to a low degree to ‘printed matter’ covered by the earlier mark.
44 In that regard, apart from the fact that the applicant’s argument is not substantiated in any way, it must be borne in mind that the fact that the goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 50). In the present case, and as the Board of Appeal correctly pointed out, the goods at issue may be displayed on the same shelves, target the same consumers and may even be sold together, in the form of sets.
45 There is therefore no reason to call into question the Board of Appeal’s finding that ‘pencils; colour pencils; carioca pencils; drawing pencils; pencil sets; pencils for colouring’ covered by the mark applied for are similar to a low degree to ‘printed matter’ covered by the earlier mark.
The goods in Class 28
46 As regards the goods in Class 28 covered by the mark applied for, the applicant, while acknowledging that some of those goods may, to a certain extent, be identical or similar to the goods covered by the earlier mark, claims that the Board of Appeal erred in finding that they were identical to ‘games, other than gambling’ in particular because of their different purposes, distribution channels and usual origin.
47 Having regard to the case-law cited in paragraph 41 above, the Board of Appeal was fully entitled to find that those goods were similar in so far as ‘toys; inflatable toys; buzzing toys; talking toys; flexible toys; stuffed toys; smart toys; modular toys; electronic toys; musical toys; toys made of rubber; plush toys; mechanically powered toys; wooden toys; bathtub toys; stuffed pillows (toys); toys adapted for educational activities; smart plush toys; water toys; plastic toys; books [games]; playing cards; card games; teddy bears; plush dolls; puzzles; toys in the form of puzzles’ covered by the mark applied for are included in ‘games, other than gambling’ covered by the earlier mark, which is a well-known fact.
48 Thus, the Board of Appeal was fully entitled to find that the goods in Class 28 covered by the mark applied for were identical to the goods covered by the earlier mark in that class.
The services in Class 41
49 As regards the services in Class 41 covered by the mark applied for, the applicant submits that the goods covered by the earlier mark set out in paragraph 5 above are dissimilar to the services in Class 41 covered by the mark applied for. According to the applicant, those goods are not automatically provided or indispensable in the context of the services of ‘publication of educational books; publication of audio books; publishing of books, magazines; publication and edition of books’ covered by the mark applied for. Accordingly, in essence, the Board of Appeal erred in finding that the services covered by the mark applied for were similar to the goods covered by the earlier mark, by extending, without any reason, the protection of that mark to the services in Class 41. The applicant also claims that Mediaproduccion did not provide any evidence to support the similarity or identity of the goods covered by the earlier mark and the goods and services covered by the mark applied for.
50 In that regard, in accordance with the case-law, 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 (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).
51 As is apparent from the contested decision, it must be held, contrary to what the applicant claims, that the goods and services at issue have the same purpose, namely to expose the public to written content. In addition, they are complementary because the purpose of the services in Class 41 is to publish the various written or oral media in Class 16 covered by the mark applied for and the earlier mark. The Board of Appeal therefore rightly found, without unduly extending the protection of the earlier mark to the services in Class 41, that those services were similar, at least to a low degree, to the goods covered by the earlier mark in Class 16. The applicant cannot criticise the Board of Appeal for having found that the services in Class 41 covered by the mark applied for were similar to the goods in Class 16 covered by the earlier mark, when Mediaproduccion had allegedly not adduced any evidence to that effect. First, Article 2(2)(g) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) provides that the notice of opposition is to contain an indication of the goods or services on which each of the grounds for opposition is based. According to Article 2(4) of that regulation, the notice of opposition may also contain a precise description setting out the grounds, facts and arguments on which the opposition is based, as well as evidence in support thereof. Thus, in opposition proceedings, the opposing party has the opportunity to adduce evidence concerning the similarity of the goods and services in question, but is not obliged to do so. Second, during the inter partes stage before EUIPO, it is apparent from Article 7(1) of Delegated Regulation 2018/625 that the opposing party also has the opportunity to submit evidence in support of the opposition or to complete the evidence already submitted pursuant to Article 2(4) of that regulation. It cannot be inferred from that provision that the opposing party is required to produce such evidence at a stage subsequent to the filing of the notice of opposition (see, to that effect, judgment of 24 October 2019, Mahr v EUIPO – Especialidades Vira (Xocolat), T‑58/18, not published, EU:T:2019:759, paragraph 20).
52 In addition, the applicant’s argument that the Board of Appeal wrongly assumed that Mediaproduccion provided the services in Class 41 is based on a misreading of the contested decision and cannot call into question the conclusion set out above. The Board of Appeal merely added, in the context of its reasoning, that, generally, the goods covered by the earlier mark and the services covered by the mark applied for could be offered by the same undertakings, but did not state that those services were provided, in the present case, by Mediaproduccion.
53 It follows from the foregoing that the applicant is wrong to complain that the Board of Appeal carried out an incorrect comparison of the goods and services at issue in finding that they were identical or similar. The applicant’s line of reasoning must therefore be rejected.
The comparison of the signs at issue
54 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).
55 As a preliminary point, it should be noted, first, that the earlier mark is a figurative sign representing an illustration of a metal safe with the word element ‘crush’ written vertically on the left-hand side and in capital letters, and a lock on the right-hand side. That mark is represented in bronze, silver, gold, dark grey and white. Second, the mark applied for is a figurative sign representing the word elements ‘the crush series’ depicted on three lines surrounded by five stars. The word element ‘crush’ occupies the middle line and is in a larger font than the other word elements.
Assessment of the distinctive and dominant elements of the signs at issue
56 The Board of Appeal, first of all, stated that, for the two marks at issue, the common word element ‘crush’ had average distinctive character for the relevant non-English-speaking and English-speaking public, in so far as it did not clearly describe the characteristics of the goods and services at issue and did not allude to them. Next, with regard to the mark applied for, the Board of Appeal found that the word element ‘the’ had a weak distinctive character, and the word element ‘series’ had a weak or even no distinctive character which is not, in itself, called into question by the parties. As regards the five stars surrounding the word elements, the Board of Appeal found them to be a purely decorative element. With regard to the earlier mark, the Board of Appeal found that the metal safe had average distinctive character in so far as it did not relate to the goods covered by the earlier mark. Since the word element ‘crush’ is clearly legible and visible, it would be attributed the same weight as the figurative element. Thus, the Board of Appeal found that the common word element ‘crush’ would be perceived, in the signs at issue, as an autonomous, distinctive and, at least, co-dominant element.
57 In that regard, first, the applicant submits that the figurative elements of the earlier mark and of the mark applied for have a stronger visual impact than the word elements, and that the word element ‘crush’ is not the most distinctive element of its mark. Thus, in essence, according to the applicant, the Board of Appeal wrongly found that the word element ‘crush’ was, at least, the co-dominant element in the two signs at issue.
58 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
59 Where a trade mark is composed of word and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily 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).
60 First of all, as has been recalled in paragraph 55 above, the earlier mark consists of an illustration of a safe and the word element ‘crush’. As EUIPO correctly submits in its response, the Board of Appeal did not overlook the importance of the metal safe, but found that the word element ‘crush’ should be attributed the same weight as the figurative element representing a safe. Although the safe is imposing and has average distinctive character, the word element appears in capital letters on the side and is perfectly legible and visible. Accordingly, the Board of Appeal was right to find that the word and figurative elements of the earlier mark were of equal weight.
61 Next, as has been recalled in paragraph 55 above, the mark applied for consists of the word elements ‘the crush series’ and five stars surrounding them. In that regard, the Board of Appeal found, which is not called into question by the parties, that the word element ‘crush’ had an average degree of distinctiveness. Moreover, the word element ‘the’, in English, is merely a definite article specifying the noun which follows it, therefore it has a weak distinctive character. Furthermore, the word element ‘series’ has only a weak distinctive character in so far as the goods covered by the mark applied for can be sold in a series. As regards the five stars surrounding the word elements ‘the crush series’, they are merely decorative, as is also apparent from paragraphs 43 and 44 of the contested decision. As has been pointed out in paragraph 59 above, in principle, where a mark is composed of word elements and figurative elements, the consumer will tend to refer to the word element. The presence of the five stars, which are small in size, is not sufficient to derogate from that principle, and they will be given only limited importance in the comparison of the signs at issue.
62 Thus, the Board of Appeal was fully entitled to find that the word element ‘crush’ would be perceived, in both of the signs at issue, as a distinctive, dominant or, at least, co-dominant element.
63 Second, the applicant submits that the Board of Appeal did not assess the signs at issue as a whole and dissected them artificially.
64 In that regard, the Court of Justice has held that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
65 In the present case, it has been pointed out in paragraph 62 above that the word element ‘crush’ was either dominant or co-dominant in relation to the other elements of the marks at issue. Accordingly, the Board of Appeal analysed the signs at issue as a whole, but rightly inferred from its analysis that, in relation to the other elements, the overall impression of those signs was dominated by the common word element ‘crush’ or, at the very least, that that element and the other elements were of equal weight.
66 The applicant’s line of reasoning relating to the assessment of the distinctive and dominant character of the elements making up the signs at issue must therefore be rejected.
The visual comparison
67 In the contested decision, like the Opposition Division, the Board of Appeal found that, visually, the signs at issue, considered as a whole, had at least a below-average degree of similarity. It found that, although the signs at issue were not to be artificially dissected, the fact that the distinctive element ‘crush’, which is at least co-dominant, is common to those signs meant that they had at least a below-average degree of visual similarity.
68 The applicant submits that the two signs at issue are neither identical nor similar. In that regard, it complains that the Board of Appeal artificially dissected the signs at issue and, above all, disregarded the figurative elements in its comparison of the signs at issue.
69 EUIPO disputes the applicant’s arguments.
70 In that regard, although, as the Board of Appeal and the applicant point out, the signs at issue differ visually in their respective figurative elements and in the additional word elements of the mark applied for, those differences cannot call into question the Board of Appeal’s finding. As has been held in paragraph 62 above, the word element ‘crush’ common to the signs at issue is dominant or, at least, co-dominant, with the result that it is capable of creating an overall impression of visual similarity. Accordingly, in view of the element ‘crush’, common to the signs at issue, the Board of Appeal was right to find that those signs had at least a below-average degree of visual similarity, without minimising the importance of the figurative element in the earlier mark.
The phonetic comparison
71 In the contested decision, the Board of Appeal found that, phonetically, despite the differences between the signs at issue, they had an average degree of phonetic similarity resulting from the common element ‘crush’. ‘Crush’ is the only word element of the earlier mark and the autonomous and central element of the mark applied for.
72 The applicant submits that, phonetically, the word elements ‘the crush series’ cannot be artificially dissected, contrary to what the Board of Appeal did, with the result that the phonetic similarity of the signs at issue cannot be limited to a single element, namely ‘crush’. Accordingly, the applicant argues that the signs at issue differ in their length and are neither identical nor similar.
73 EUIPO disputes the applicant’s arguments.
74 The signs at issue share phonetically the word element ‘crush’. Although the mark applied for is also composed of the word elements ‘the’ and ‘series’, they will have only a slight impact on the pronunciation of the sign applied for, on account of their weak distinctive character (see paragraph 61 above). Furthermore, as the Board of Appeal correctly pointed out, the common word element ‘crush’ is the only word element of the earlier mark and has an autonomous and central role in the mark applied for.
75 As regards the applicant’s argument that the registration of the earlier mark did not, in any event, confer an exclusive right on Mediaproduccion to the word element ‘crush’, it must be held that the Board of Appeal did not find that Mediaproduccion had such a right, but assessed specifically the existence of a phonetic similarity between the signs at issue. Its assessment is based on the overall impression created by the signs at issue, bearing in mind, in particular, their distinctive and dominant elements, in the present case the word element ‘crush’, in accordance with the case-law cited in paragraph 54 above.
76 Accordingly, the Board of Appeal was right in finding that the signs at issue were phonetically similar to an average degree.
The conceptual comparison
77 In the contested decision, the Board of Appeal found that, conceptually, the signs at issue had a low degree of similarity for the English-speaking public, which is relevant for the assessment of conceptual similarity. The English-speaking public would understand the word element ‘crush’, but the ideas conveyed by the other word and figurative elements of the marks at issue make that similarity low.
78 The applicant submits that, conceptually, the signs at issue are not similar, since the mark applied for, as a unitary expression, suggests the idea of ‘softness, calm, tranquility, relaxation, fairytale and bedtime stories’.
79 EUIPO disputes the applicant’s arguments.
80 It should be noted, first of all, that the Board of Appeal, in paragraph 51 of the contested decision, found only a low degree of conceptual similarity between the signs at issue, and only for the English-speaking public. The common word element, at least co-dominant, ‘crush’ means, in English, ‘to press something so hard that it is made flat or broken into pieces’. The English-speaking public will understand the meaning of the common word element ‘crush’ in that way. However, and as the Board of Appeal rightly pointed out, that similarity will be attenuated by the different meanings conveyed by the figurative elements of the signs at issue and by the word elements ‘the’ and ‘series’ of the mark applied for. Therefore, even if the mark applied for could suggest the idea of ‘softness, calm, tranquility, relaxation, fairytale and bedtime stories’, as the applicant claims, that would not alter the fact that the English-speaking public will in the first place understand the common element ‘crush’ as meaning ‘to press something so hard that it is made flat or broken into pieces’. Accordingly, the Board of Appeal was fully entitled to find that there was a low degree of conceptual similarity between the signs at issue for the English-speaking part of the relevant public.
81 In conclusion, it must be held that the Board of Appeal was correct in finding that the signs at issue had at least a below-average degree of visual similarity, an average degree of phonetic similarity and, for the English-speaking public, a low degree of conceptual similarity.
The global assessment of the likelihood of confusion
82 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, 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).
83 The Board of Appeal found that there was a likelihood of confusion for the English-speaking part of the relevant public with regard to the goods and services found to be identical or similar to different degrees. It found that neither the additional terms nor the figurative elements of the signs at issue were capable of fully diverting the relevant public’s attention from the overall similarity created by their distinctive and, at least, co-dominant element ‘crush’.
84 The applicant submits that neither the average consumer, who is reasonably well informed and reasonably observant and circumspect, nor the professional will confuse the goods and services covered by the mark applied for with the goods covered by the earlier mark, given the lack of identity or similarity between the signs at issue and the goods and services at issue. Accordingly, the applicant claims that the Board of Appeal was wrong in finding that there was a likelihood of confusion between the marks at issue.
85 EUIPO disputes the applicant’s arguments.
86 It must be borne in mind, as is apparent from paragraphs 53 and 81 above, that the Board of Appeal did not err in finding, first, that the goods and services at issue were identical or similar and, second, that the signs at issue had at least a below-average degree of visual similarity, an average degree of phonetic similarity and, for the English-speaking public, a low degree of conceptual similarity. Furthermore, the Board of Appeal rightly found that the relevant public consisted, in part, of the general public, which will display an average level of attention and, in part, of professional consumers, who will display a high level of attention. Furthermore, as has been pointed out in paragraph 20 above, the Board of Appeal found that the earlier mark had an average degree of distinctiveness, which has not been called into question by the parties.
87 In that regard, in the light of all of the foregoing, the Board of Appeal was correct in finding that there was a likelihood of confusion for the English-speaking part of the relevant public.
88 Although the relevant public is composed of the general public displaying an average level of attention and professional consumers with a high level of attention, the fact that the relevant public is more attentive does not mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the members of the relevant public only rarely have the chance to compare the various marks directly and must therefore rely on their imperfect recollection of them (see judgment of 13 March 2018, Kiosked v EUIPO – VRT (K), T‑824/16, EU:T:2018:133, paragraph 73 and the case-law cited). Furthermore, where the relevant public consists of two categories of consumers, it is the public with the lower level of attention which must be taken into consideration (see judgment of 24 March 2021, Creaton South-east Europe v EUIPO – Henkel (CREATHERM), T‑168/20, not published, EU:T:2021:160, paragraph 24 and the case-law cited). Accordingly, in the present case, in the global assessment of the likelihood of confusion, the level of attention of the relevant public is only one of the various factors to be taken into consideration, and the mere fact that it is high for one part of the relevant public cannot call into question the Board of Appeal’s finding.
89 The applicant’s argument that its goods may also be offered for sale on websites and in self-service shops, without specialised help, which increases the importance of the visual impression in relation to the phonetic impression, cannot call that finding into question either. As EUIPO correctly pointed out, it is not apparent from the case-law that the fact that goods may be sold online or in self-service shops without specialised help is sufficient to rule out any likelihood of confusion in the event of a below-average degree of visual similarity. Furthermore, it cannot be ruled out that, in certain cases, goods and services may be advertised orally, on the radio or via other consumers (see, to that effect, judgment of 22 November 2018, TeamBank v EUIPO – Fio Systems (FYYO), T‑826/17, not published, EU:T:2018:819, paragraph 43). Therefore, in the assessment of the likelihood of confusion, the average degree of phonetic similarity of the marks at issue, is, in this case, at least as important as the visual similarity (see, to that effect, judgment of 5 July 2016, Future Enterprises v EUIPO – McDonald’s International Property (MACCOFFEE), T‑518/13, EU:T:2016:389, paragraph 33 and the case-law cited).
90 The Board of Appeal was therefore fully entitled to find that there was a likelihood of confusion between the two marks at issue.
91 In the light of all the foregoing considerations, the single plea in law relied on by the applicant in support of its claims must be rejected as unfounded and, consequently, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second head of claim.
Costs
92 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.
93 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 (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Crush Series Publishing s.r.o. to pay the costs.
Marcoulli | Frimodt Nielsen | Schwarcz |
Delivered in open court in Luxembourg on 1 March 2023.