JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
21 February 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark LifeAfter – Earlier EU word mark life – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑175/23,
Hong Kong NetEase Interactive Entertainment Ltd, established in Sheung Wan, Hong Kong (China), represented by J. Carbonell Callicó, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska and D. Stoyanova-Valchanova, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being
Medion AG, established in Essen (Germany), represented by M. Vohwinkel and S.-M. Bonanni, lawyers,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere (Rapporteur) and D. Petrlík, Judges,
Registrar: V. Di Bucci,
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 under Article 263 TFEU, the applicant, Hong Kong NetEase Interactive Entertainment Ltd, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 December 2022 (Case R 557/2022-5) (‘the contested decision’).
Background to the dispute
2 On 27 November 2018, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign LifeAfter.
3 The goods and services in respect of which registration of the mark was sought are in Classes 9 and 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Computer game software; Downloadable computer game programs; Computer game software downloadable from a global computer network; Electronic game software for wireless devices; Interactive multimedia computer game programs; Recorded computer game programs; Virtual reality game software; Augmented reality software for use in mobile devices; Augmented reality software; Electronic game software for mobile phones; Animated cartoons; electronic game software for handheld electronic devices’;
– Class 41: ‘Entertainment services, namely, providing on-line computer games; Providing interactive multi-player computer games via the internet and electronic communication networks; Providing information on-line relating to computer games and computer enhancements for games; Electronic games services provided by means of the internet; Organization of competitions [education or entertainment]; Game services provided on-line from a computer network; Game services provided by means of communications by computer terminals or mobile telephone; Providing online entertainment in the nature of game shows; Information relating to computer gaming entertainment provided online from a computer database or a global communication network’.
4 On 22 February 2019, the intervener, Medion AG, filed an opposition to the registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above, with the exception of ‘animated cartoons’ falling within Class 9.
5 The opposition was based in particular on the earlier EU word mark life, filed on 28 April 2017 and registered on 13 January 2020 under number 16673171, designating, in particular, the goods ‘Data recorded electronically; Recorded content’ falling within Class 9, and the services ‘Entertainment’ falling within Class 41.
6 The ground relied on in support of the opposition was that 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 4 February 2022, the Opposition Division upheld the opposition.
8 On 4 April 2022, the applicant filed an appeal at EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.
9 By the contested decision, the Fifth Board of Appeal dismissed the appeal. It found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision by allowing registration of the trade mark applied for;
– order EUIPO and the intervener to pay the costs of the present action and the costs of the proceedings before EUIPO.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs if a hearing is held.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
14 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
15 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. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
16 For the purposes of applying Article 8(1)(b) of Regulation 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).
17 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see judgment of 22 September 2021, Sociedade da Água de Monchique v EUIPO – Ventura Vendrell (chic ÁGUA ALCALINA 9,5 PH), T‑195/20, EU:T:2021:601, paragraph 23 and the case-law cited).
18 The applicant raises two complaints, the first alleging that the word ‘life’ is not distinctive of the goods and services at issue, and the second alleging that there is no likelihood of confusion.
The first complaint, alleging that the word ‘life’ is not distinctive of the goods and services at issue
19 The applicant submits that if the earlier trade mark is devoid of sufficient distinctive character to be considered registrable, it cannot prevent a subsequent trade mark from using the term ‘life’. The earlier mark is descriptive of characteristics of the goods or services which it covers, within the meaning of Article 7(1)(c) of Regulation 2017/1001. It is therefore devoid of distinctive character and cannot form the basis of an opposition.
20 The applicant also submits that, in view of the number of trade mark registrations containing the word ‘life’, the Board of Appeal could not consider the earlier mark to be distinctive. It submits that the lack of distinctive character of the earlier mark, coupled with the widespread use of the word ‘life’ in commerce, further supports the conclusion that there is no likelihood of confusion.
21 It should be noted that the fact that a mark has been registered means that it has a minimum intrinsic distinctive character, since Article 7(1)(b) of Regulation 2017/1001 precludes registration of a mark which is devoid of distinctive character. A trade mark applicant cannot, in the context of opposition proceedings, call into question the validity of that earlier mark. As regards, more specifically, an earlier EU trade mark, as in the present case, that validity can be called into question only in the context of an application for a declaration of invalidity under Article 59 of Regulation 2017/1001 (see judgments of 20 October 2021, St. Hippolyt v EUIPO – Elephant (Strong like nature), T‑352/20, not published, EU:T:2021:720, paragraph 57 and the case-law cited, and of 30 March 2022, Kalita and Haas v EUIPO – Kitzbühel Tourismus (Representation of two animals), T‑206/21, not published, EU:T:2022:191, paragraph 59 and the case-law cited).
22 Consequently, the applicant’s arguments seeking to establish that the earlier mark is descriptive and devoid of distinctive character must be rejected.
23 In addition, the applicant submits that the word ‘life’ is descriptive of the goods and services in Classes 9 and 41 and therefore devoid of distinctive character. It submits that the Board of Appeal overlooked the specific use of that word in the video games sector. The definition of the word ‘life’, as referring to the ‘lives’ of the player in a game, is evidenced by extracts from dictionaries annexed to the application.
24 It is sufficient to note that, in so far as the earlier mark consists solely of the word ‘life’, the applicant’s arguments seeking to establish the descriptive character and lack of distinctive character of the word ‘life’ amount to calling into question the validity of that mark. It follows that those arguments must also be rejected.
25 The same applies to the applicant’s argument that the word ‘life’ is not distinctive because it is included in numerous registrations of European Union trade marks and national trade marks, as well as in coexisting trade marks on the market.
26 In any event, it should be noted, first, that, according to the case-law, the relevant factor for the purposes of disputing the distinctive character of an element is its actual presence on the market and not its having been entered in registers or databases (see judgment of 21 June 2023, International British Education XXI v EUIPO – Saint George’s School (IBE ST. GEORGE’S), T‑438/22, not published, EU:T:2023:349, paragraph 40 and the case-law cited).
27 Consequently, the list of registrations in the European Union of word and figurative marks including the word ‘life’ submitted by the applicant is irrelevant to the assessment of the distinctive character of the earlier mark.
28 Secondly, the Board of Appeal considered that the extracts from websites produced by the applicant before it, which showed that the element ‘life’ was used on the market, including, to a certain extent, in relation to the goods and services at issue, were not sufficient to establish such widespread use of the element ‘life’ in the sector and on the market concerned that the relevant public who has been exposed to that element would not consider it to be distinctive of the goods and services at issue.
29 The applicant merely appended to the application extracts from websites relating to the use of the word ‘life’ in numerous sectors which it had submitted to the Board of Appeal. However, it does not raise any argument to contest the Board of Appeal’s assessment that that evidence, very little of which relates to the video games sector, was insufficient to demonstrate that the word ‘life’ would be perceived by the relevant public as being devoid of distinctive character in relation to the goods and services at issue.
30 In that regard, it should be borne in mind that it is for the applicant to show that the relevant public has been exposed to such frequent use of trade marks containing the element ‘life’ in the sector of the goods and services at issue that that word has lost its distinctive character (see, to that effect, judgments of 13 April 2011, Sociedad Agricola Requingua v OHIM – Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 35, and of 8 March 2013, Mayer Naman v OHIM – Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraphs 77 to 79).
31 The extracts from websites produced by the applicant before the Board of Appeal concern the use of the word life in numerous sectors, such as clothing, health or various commercial sectors, with no link to video games. Out of the numerous extracts from websites produced by the applicant, only four relate to video games and they only show that the word ‘life’ is used, not as a trade mark, but in the titles of certain games.
32 Those four extracts from websites do not make it possible to establish that the general public, which is not made up exclusively of gamers, would be confronted with such widespread use of that word in the video games sector that they would no longer perceive it as likely to indicate the origin of the goods.
33 In addition, the applicant has for the first time annexed to the application other extracts from websites which reveal the existence of trade marks on the market containing the word ‘life’, which indicates that that word is used to describe goods and services in various sectors.
34 It is sufficient to point out that it is not the Court’s function to review the facts in the light of evidence adduced before it for the first time. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine such evidence (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
35 Even if that new evidence produced for the first time before the Court were to be admissible, it is sufficient to note that it concerns numerous sectors unrelated to the goods at issue. As for the six extracts from websites concerning video games, they are similar to those mentioned in paragraph 31 above and are not sufficient to call into question the assessment set out in paragraph 32 above.
36 The first complaint must therefore be dismissed.
The second complaint, alleging no likelihood of confusion
The relevant public
37 It should be borne in mind that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 25 and the case-law cited).
38 The Board of Appeal found that, as the earlier trade mark was a European Union trade mark, the relevant territory was the whole of the European Union, which the applicant does not dispute.
39 The Board of Appeal noted that the goods covered by the trade mark applied for, falling within Class 9, consisted in essence of gaming software which was foremost directed at the general public and that the ‘recorded content’ and ‘data recorded electronically’ covered by the earlier trade mark, also falling within Class 9, were directed at the public at large as well as professionals in all commercial sectors. It found that gaming software and recorded content are selected with special care due to the issues involved as regards privacy, personal data and downloads and that, although gaming software programs are a means of entertainment, many gamers, that is to say people who frequently use that kind of entertainment, pay special attention to their choices and show an enhanced brand loyalty. The Board of Appeal stated that the services covered by the trade mark applied for, falling within Class 41, which were, in essence, entertainment services revolving around gaming software, and the entertainment services covered by the earlier trade mark, falling within the same class, were directed foremost at the public at large, including gamers.
40 However, the Board of Appeal considered that not all persons purchasing gaming software or using entertainment services in connection with gaming software were dedicated gamers, some only purchasing those goods or using those services occasionally without any complex analysis and that, consequently, the degree of attention of the general public could vary from average to above average.
41 The applicant submits that the relevant public consists of video game players with a high degree of attention.
42 In that regard, it must be borne in mind that the relevant public consists both of actual consumers and of potential consumers, that is to say, of consumers who currently purchase the goods or services at issue or who might do so in the future (see judgment of 6 April 2022, Mandelay v EUIPO – Qx World (QUEST 9), T‑516/20, not published, EU:T:2022:227, paragraph 36 and the case-law cited).
43 In the present case, the goods and services covered by the trade mark applied for consist, in essence, of gaming software or services related to gaming software which, while aimed in particular at gamers with a high degree of attention, may also be purchased by any consumer who has no specific knowledge of the sector and therefore has an average degree of attention.
44 The applicant does not explain why the relevant public is limited to specialist gamers only. Nor, therefore, can it assert that the likelihood of confusion must be assessed solely in relation to a public displaying a high degree of attention.
45 So far as concerns the assessment of the likelihood of confusion, it is the public with the lowest level of attentiveness that must be taken into consideration (see judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 29 and the case-law cited).
46 Accordingly, the applicant’s arguments are not such as to call into question the Board of Appeal’s finding that the goods and services covered by the marks at issue target both the general public and specialists and that the likelihood of confusion must be assessed in relation to the perception of that part of the public which displays the lowest degree of attention, namely, in the present case, an average degree of attention.
Comparison of the goods and services at issue
47 The applicant submits that the goods covered by the trade marks at issue are different. First, it submits that they differ in their trade channels, in so far as the goods covered by the trade mark applied for are not sold in supermarkets or traditional retail stores, but exclusively on the internet. Secondly, they differ in their marketing strategies, since consumers may have to carry out specific online searches for those products or be guided by targeted advertising in order to discover them.
48 In the contested decision, the Board of Appeal found that the goods and services covered by the trade marks at issue were identical. It considered that the goods covered by the trade mark applied for, falling within Class 9, in respect of which the opposition had been filed, were included in the goods ‘Recorded content’ and ‘Data recorded electronically’, falling within the same class, covered by the earlier trade mark or that those goods overlapped, given that the various software programs covered by the trade mark applied for were or could be registered. Moreover, the Board of Appeal considered that the services covered by the trade mark applied for, falling within Class 41, were included in the ‘Entertainment’ services, falling within the same class, covered by the earlier trade mark or that those services overlapped.
49 It is sufficient to note that the applicant’s arguments do not invalidate that assessment by the Board of Appeal. First, the applicant does not dispute that the services covered by the trade mark applied for belong to the category of entertainment services. Secondly, it does not raise any argument to call into question the Board of Appeal’s finding that the various gaming software programs covered by the mark applied for are included in the more general category of goods ‘Recorded content’ and ‘Data recorded electronically’.
50 Moreover, even assuming, as the applicant maintains, that the goods covered by the trade mark applied for are sold exclusively on the internet, the applicant does not establish that the goods covered by the earlier trade mark are not also sold online.
51 It follows that the applicant has not established that the Board of Appeal committed an error of assessment in finding that the goods and services covered by the trade marks at issue were identical.
Comparison of the signs at issue
52 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 elements of the mark applied for
53 In the first place, the applicant submits that the Board of Appeal wrongly assumed that only the word ‘life’, and not the word ‘after’, was a basic English word and therefore wrongly concluded that the relevant public would focus their attention solely on the word ‘life’. The applicant submits that the relevant public is the public of the European Union as a whole and that the Board of Appeal erred in relying solely on the perception of the Spanish public. The applicant argues that the word ‘after’ is a basic English word and that the Spanish-speaking public will recognise that word which is included in various words used in Spanish. It maintains that the relevant public, namely video game players, are young people who will understand the meaning of the word ‘after’ and that the use of English terminology is common in the video game sector.
54 In the contested decision, the Board of Appeal pointed out that, according to the case-law, the Spanish-speaking general public comprised a significant proportion of consumers who did not understand English. It considered that at least a significant part of the Spanish-speaking public perceived the basic English word ‘life’ as having a meaning and the word ‘after’ as being devoid of meaning and that that part of the Spanish-speaking public would identify the word ‘life’ in the mark applied for and would therefore break that mark down into two elements, ‘life’ and ‘after’.
55 It is clear from settled case-law that, where the earlier mark relied on in support of opposition proceedings is an EU trade mark, it is not a requirement of Article 8(1)(b) of Regulation 2017/1001 that, for the mark applied for to be refused registration, the likelihood of confusion must exist in all the Member States and in all the language areas of the European Union. The unitary character of the EU trade mark means that such an earlier trade mark can be relied on against any application for registration of a later trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraphs 56 and 57; see, also, judgment of 19 January 2022, Construcciones Electromecánicas Sabero v EUIPO – Magdalenas de las Heras (Heras Bareche), T‑99/21, not published, EU:T:2022:14, paragraph 28 and the case-law cited).
56 Consequently, the applicant cannot validly maintain that the Board of Appeal erred in assessing whether there was a likelihood of confusion in relation to the Spanish-speaking part of the relevant public.
57 Moreover, it must be observed that, contrary to what the applicant maintains, it is not apparent from the contested decision that the Board of Appeal considered that the attention of the relevant public was focused solely on the word ‘life’ on the ground that the public did not understand the word ‘after’.
58 In fact, the Board of Appeal considered that the part of the Spanish-speaking public which understood the meaning of the word ‘life’ and not that of the word ‘after’ would break down the mark applied for into two elements, ‘life’ and ‘after’.
59 In that regard, it should be borne in mind that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he or she will break it down into word elements which, for that consumer, suggest a concrete meaning or which resemble words known to him or her (see judgment of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 24 and the case-law cited). Moreover, the consumer will break the word sign down into elements even if only one of its elements is familiar to him or her (see judgment of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 67 and the case-law cited).
60 It is sufficient to note that the applicant does not dispute that the relevant Spanish-speaking public will break down the mark applied for into two elements, ‘life’ and ‘after’. The fact, assuming that it is established, that the relevant public as a whole understands the meaning of the word ‘after’ cannot mean that it will not make such a breakdown.
61 It follows that the applicant’s argument that the word ‘after’ constitutes a basic English word which is understood by the relevant public as a whole is irrelevant. It is apparent from this that Annexes 15 to 23 to the application, produced in support of that argument, must be disregarded as irrelevant, without it being necessary to rule on their admissibility, which is contested by the EUIPO.
62 In the second place, it should be noted that the applicant refers to its arguments raised in the context of the first complaint to the effect that the word ‘life’, being descriptive of the goods and services at issue, is devoid of distinctive character.
63 The Board of Appeal observed that, as regards the distinctive character of the element ‘life’, common to the signs at issue, it designated the ‘quality which people, animals, and plants have when they are not dead, and which objects and substances do not have’ and that it did not convey any direct meaning in relation to the goods and services at issue and that, consequently, it had to be regarded as normally distinctive for the goods and services concerned falling within Classes 9 and 41.
64 It is sufficient to state that, as indicated in paragraph 24 above, the applicant’s argument must be rejected in so far as it amounts to calling into question the validity of the earlier trade mark.
65 In any event, the applicant’s argument must be examined in so far as it intends to argue that the word ‘life’ is weakly distinctive on the ground that that word has a meaning in the world of video games and refers to the ‘life’ of the player in the game, which is demonstrated by various dictionaries.
66 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35; see, also, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
67 First, it should be noted that, in the present case, the likelihood of confusion must be assessed in relation to the Spanish-speaking general public as a whole and not just video game players. The applicant’s argument does not establish that the average Spanish-speaking consumer who occasionally buys video games would be able to understand the particular meaning of the word ‘life’ in the world of video games.
68 Secondly, the fact that the word ‘life’ is used to refer to a player’s ‘life’ in the context of the use of certain video games does not establish that it would be used in commerce to designate the goods and services at issue or one of their characteristics. Even if the relevant public as a whole is able to establish a connection between the word ‘life’ and video games, that connection must be considered to be non-descriptive in so far as it does not describe a type of game or one of its characteristics. The applicant has not adduced any other evidence capable of calling into question the distinctive character of the element ‘life’.
69 It follows that the signs to be compared are, on the one hand, the word sign life and, on the other, the word sign LifeAfter, the latter being composed of two elements ‘life’ and ‘after’, neither of which is more distinctive or dominant than the other.
– Visual and phonetic comparison
70 The Board of Appeal found that the signs at issue had at least an average degree of visual and phonetic similarity in that they coincided in the distinctive element ‘life’, which was the only element of the mark applied for and which formed the initial part of the earlier mark.
71 It added that, from a visual point of view, the consumer would immediately perceive the initial parts common to the signs at issue and that the difference in length between the signs, resulting from the presence of the five additional letters ‘a’, ‘f’, ‘t’, ‘e’ and ‘r’ in the mark applied for, was not such as to exclude that similarity.
72 From a phonetic point of view, the Board of Appeal took the view that, irrespective of the pronunciation of the ending of the mark applied for, namely ‘after’, the element ‘life’ would be pronounced in the same way in the two signs at issue and that the fact that the signs at issue consisted of a different number of syllables cannot make them different.
73 The applicant submits that the Board of Appeal wrongly concluded that the signs at issue were visually similar. The presence of the word ‘after’ in the mark applied for creates a clear visual distinction between the signs at issue, in that the sign LifeAfter is longer and more complex than the sign life.
74 According to the case-law, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgments of 28 October 2009, X-Technology R & D Swiss v OHIM – Ipko-Amcor (First-On-Skin), T‑273/08, not published, EU:T:2009:418, paragraph 31 and the case-law cited, and of 8 March 2023, Sympatex Technologies v EUIPO – Liwe Española (Sympathy Inside), T‑372/21, not published, EU:T:2023:111, paragraph 107 and the case-law cited).
75 Visually, there is a degree of similarity between the signs at issue because the element making up the earlier trade mark is the first component of the mark applied for (see, to that effect, judgment of 20 January 2010, Nokia v OHIM – Medion (LIFE BLOG), T‑460/07, EU:T:2010:18, paragraph 55).
76 Furthermore, the applicant does not raise any specific argument to contest the Board of Appeal’s finding of an average degree of phonetic similarity. In any event, it should be noted that that conclusion is consistent with the case-law cited in paragraph 74 above.
77 Accordingly, the applicant cannot validly maintain that the fact that the sign LifeAfter is longer than the sign life is sufficient to conclude that there is no visual or phonetic similarity between those signs.
– Conceptual comparison
78 From a conceptual point of view, the Board of Appeal found that, in so far as the signs at issue coincided in the presence of the element ‘life’, which would be understood by at least part of the relevant public, and the additional element ‘after’ in the mark applied for had no meaning for that public, there was an average degree of similarity.
79 The applicant submits that the relevant public will attribute a meaning to the word ‘after’. The combination of the words ‘life’ and ‘after’ create a distinct impression from the meaning of the word ‘life’ on its own. It maintains that the sign life has a specific meaning relating to ‘lives’ within the world of games and that the sign LifeAfter does not have such a meaning. The sign LifeAfter constitutes a complex term, combining two distinct and meaningful elements, the meaning of which is different from that of the sign life.
80 It should be noted that the applicant merely maintains that the addition of the word ‘after’ to the word ‘life’ creates a new term with a different meaning. However, it does not explain what the term ‘lifeafter’ means for the relevant public or the extent to which the combination of the two words ‘life’ and ‘after’ creates a new concept different from the simple sum of those two words, which does not refer to the concept of ‘life’.
81 Thus, the applicant’s argument is not capable of calling into question the Board of Appeal’s assessment that there is an average degree of similarity at conceptual level resulting from the presence of the word ‘life’ in the signs at issue.
82 Moreover, even assuming that the word ‘after’ is understood by the relevant public as a whole, the signs at issue coincide as regards the meaning of the term ‘life’ and differ as regards the term ‘after’. Thus, the difference between the signs arising from the presence of the word element ‘after’ is not sufficient to call into question the similarity at conceptual level which is based on the fact that the signs at issue share the word element ‘life’ (see, to that effect, judgment of 15 October 2018, CompuGroup Medical v EUIPO – Medion (life coins), T‑444/17, not published, EU:T:2018:681, paragraph 56).
83 It follows that the applicant’s arguments are not such as to call into question the Board of Appeal’s finding that the signs at issue had at least an average degree of visual and phonetic similarity and an average degree of conceptual similarity.
Distinctive character of the earlier mark
84 In the contested decision, the Board of Appeal found that, as the intervener had not argued that the earlier mark was particularly distinctive by virtue of intensive use or reputation, its assessment was based on the distinctiveness of that mark per se, which was considered to be normal.
85 It should be observed that the applicant merely refers to the arguments raised in the first complaint that the word ‘life’ and, consequently, the earlier mark are descriptive and devoid of distinctive character. It is sufficient to point out that those arguments have been rejected in the analysis of the first complaint.
86 In so far as, by those arguments, the applicant intends to claim that the earlier mark is not sufficiently distinctive, it must be held that they do not affect the legality of the contested decision for the reasons set out in paragraphs 96 and 97 below.
The likelihood of confusion
87 In the contested decision, the Board of Appeal recalled that the goods and services at issue were identical, that the level of attention of the relevant public at large was considered to vary between average to higher than average and that of the concerned professional public to be higher than average, that the signs at issue had at least an average degree of visual and phonetic similarity and an average degree of conceptual similarity and that the earlier mark enjoyed an inherent normal degree of distinctiveness. Taking into account also the fact that the relevant public had to rely on the imperfect image retained in its memory, the Board of Appeal deduced that the difference between the signs, namely the presence of the additional element ‘after’ at the end of the mark applied for, was not sufficient to exclude the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 from a significant part of the Spanish-speaking part of the relevant public.
88 The applicant submits that there is no likelihood of confusion, given the lack of distinctive character of the word ‘life’, the fact that the signs at issue are visually, phonetically and conceptually different and the high level of attention of the relevant public.
89 It is sufficient to state that the applicant is merely reiterating arguments that have already been rejected.
90 Finally, the applicant’s argument relating to the peaceful coexistence on the market of trade marks containing the element ‘life’ must be examined in so far as it seeks to call into question the existence of a likelihood of confusion.
91 In that regard, the Board of Appeal held that the applicant had not shown that the trade marks relied on actually coexisted on the market and that, in any event, it had not demonstrated that the coexistence of those marks was based on the absence of any likelihood of confusion.
92 It should be borne in mind that, admittedly, the possibility cannot be entirely precluded that, in certain cases, the coexistence of earlier marks on the market might potentially eliminate the likelihood of confusion between two conflicting marks. Nevertheless, that possibility can be taken into account only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, provided that the earlier marks concerned and the marks at issue are identical (see judgments of 20 January 2010, LIFE BLOG, T‑460/07, EU:T:2010:18, paragraph 68 and the case-law cited, and of 26 July 2023, Rada Perfumery v EUIPO – Prada (RADA PERFUMES), T‑439/22, not published, EU:T:2023:441, paragraphs 74 and 75 and the case-law cited).
93 Accordingly, it is for the applicant to prove not only the coexistence of the trade marks, but also that that coexistence was due to the absence of a likelihood of confusion, and to have done so by adducing evidence such as opinion polls, declarations of consumers’ associations or other evidence. That demonstration may be made by way of a body of evidence. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time at which the application for registration of the contested mark was filed is particularly relevant (see judgment of 26 July 2023, RADA PERFUMES, T‑439/22, not published, EU:T:2023:441, paragraph 76 and the case-law cited).
94 In the present case, it should be noted that, of the extracts from websites produced by the applicant, those relating to trade marks show the use of the element ‘life’ together with other terms. Accordingly, the applicant has failed to adduce evidence as to the identity of the registrations coexisting on the market. In any event, the applicant has not adduced any evidence to show that that coexistence was based on the absence of a likelihood of confusion on the part of the relevant public (see, to that effect, judgment of 20 January 2010, LIFE BLOG, T‑460/07, EU:T:2010:18, paragraph 69 and the case-law cited).
95 It follows from all of the foregoing that the applicant has not established that the Board of Appeal erred in finding that there was a likelihood of confusion.
96 Moreover, in the present case, since the goods and services at issue are identical and the signs at issue are similar, the possible weak distinctive character of the earlier trade mark cannot alter the Board of Appeal’s conclusion as to the existence of a likelihood of confusion.
97 Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgments of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited, and of 13 July 2018, Cyprus v EUIPO – Papouis Dairies (Pallas Halloumi), T‑825/16, EU:T:2018:482, paragraph 77 and the case-law cited).
98 It follows that the second complaint must be rejected and, consequently, so must the appeal in its entirety.
Costs
99 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.
100 Since the applicant has been unsuccessful, it must be ordered to pay the intervener’s costs, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Hong Kong NetEase Interactive Entertainment Ltd to bear its own costs and to pay those incurred by Medion AG;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Delivered in open court in Luxembourg on 21 February 2024.
V. Di Bucci | | S. Papasavvas |