JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
25 October 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark Q – Earlier EU figurative mark Q – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑458/21,
Quantic Dream, established in Paris (France), represented by A. Grolée, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Quentia GmbH, established in Gersthofen (Germany), represented by A. Kohn, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva and P. Zilgalvis (Rapporteur), 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, Quantic Dream, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2021 (Case R 2070/2020-4) (‘the contested decision’).
Background to the dispute
2 On 21 May 2019, the applicant filed an application with EUIPO for registration of an EU trade mark in respect of the following figurative sign pursuant to 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):
3 The mark applied for covered goods and services in, inter alia, Classes 9, 35 and 42 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, inter alia, the following description:
– Class 9: ‘Computer software, computer software programs, downloadable software; magnetic data carriers, compact discs, DVDs and other digital recording media’;
– Class 35: ‘Business management; presentation of goods on communication media, for retail and wholesale purposes; document reproduction; wholesaling and retailing of computer software’;
– Class 42: ‘Computer software design, research and development of computer software, updating of computer software’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 122/2019 of 2 July 2019.
5 On 21 August 2019, Quentia GmbH, the intervener, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the earlier EU figurative mark, as reproduced below, which was filed on 19 June 2014 and registered on 19 March 2016 under the number 13 016 464 and covers goods and services in, inter alia, Classes 9, 35 and 42 corresponding, with regard to certain goods and certain services in those classes, to the following description:
– Class 9: ‘Computer software, in particular for goods logistics and warehouse administration; peripherals adapted for use with computers’;
– Class 35: ‘Business consultancy, in particular in the fields of logistics and transport and the use of software in these sectors; compilation, systematization, updating, and administration of information in computer databases; retailing and wholesaling of computer software, computer hardware, office equipment, printers, photocopiers, fax machines, multi-functional office equipment’;
– Class 42: ‘Design and development of computer hardware and software; maintenance and updating of software’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
8 By decision of 28 September 2020, the Opposition Division rejected the opposition.
9 On 30 October 2020, the intervener filed a notice of appeal with EUIPO, on the basis of Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal upheld the appeal, upheld the opposition brought by the intervener and found, in essence, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
11 In particular, the Board of Appeal pointed out, first, that the relevant public was the general public in the European Union, the level of attention of which was normal, with regard to the goods in Class 9, and the specialised public, which displayed a higher level of attention, with regard to the services in Classes 35 and 42. It decided to focus on the English-speaking part of the relevant public. Secondly, the Board of Appeal found that the goods and services covered by the mark applied for were in part similar and in part identical to those covered by the earlier mark. Thirdly, the Board of Appeal found that the signs at issue were visually similar to an average degree, phonetically identical and could not be compared conceptually. Fourthly and lastly, according to the Board of Appeal, the earlier mark had a normal degree of inherent distinctiveness.
Forms of order sought
12 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– reject the opposition brought against the mark applied for;
– order EUIPO and the intervener to pay the costs, including those incurred in the proceedings before EUIPO.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 The intervener contends, in essence, that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those incurred in the proceedings before EUIPO.
Law
The application for annulment of the contested decision
15 In support of its action, the applicant relies on four pleas in law, alleging, first, infringement of Article 71(1)(a) 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), secondly, infringement of Article 7 TFEU, thirdly, infringement of Article 58a of the Statute of the Court of Justice of the European Union and, fourthly, infringement of Article 8(1)(b) of Regulation 2017/1001.
16 In the present case, the Court considers it appropriate to examine the fourth plea first. In the context of that plea, the applicant submits that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in the present case and complains that the Board of Appeal did not take into account all the factors in the case.
17 EUIPO and the intervener dispute the applicant’s arguments.
18 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.
19 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).
20 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).
21 It is in the light of the abovementioned principles that the present plea must be examined.
22 It must be pointed out at the outset that the applicant does not call into question the Board of Appeal’s assessments relating to the relevant public, its level of attention and the comparison of the goods and services at issue.
23 First, in that regard, it must be borne in mind, so far as concerns the relevant public, that the Board of Appeal found that the relevant territory was that of the European Union. However, it decided to focus on the English-speaking public. Likewise, the Board of Appeal stated that the goods in Class 9 were aimed at the general public displaying a normal level of attention and that the services in Classes 35 and 42 were aimed at a specialised public displaying a higher level of attention.
24 Secondly, as regards the comparison of the goods and services concerned, the Board of Appeal found that they were in part identical and in part similar.
25 Those findings, which are not, moreover, disputed by the applicant, must be upheld.
The similarity of the signs
26 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarities 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).
27 In the present case, it is necessary to compare the following figurative signs:
and 
– The perception of the mark applied for
28 The applicant disputes the Board of Appeal’s assessment that the mark applied for will be perceived by the vast majority of the relevant public as a stylised letter ‘q’ in the colours black and blue. According to the applicant, the mark applied for does not have the classic characteristics of the letter ‘q’, but can be divided into two parts, the left part, in black, corresponding to the letter ‘q’, and the right part, in blue, corresponding to the letter ‘d’. It adds that the ‘visual separation by the white … line’ of the sign applied for and the use of two different colours encourages it to be analysed in the light of the applicant’s name. Furthermore, it submits that, even without ‘dissecting’ it, the consumer will probably need more time to analyse that mark. It contends that, consequently, the Board of Appeal did not take all the factors into consideration in deciding that the mark applied for was a stylised version of the letter ‘q’ and could only be interpreted as such.
29 EUIPO and the intervener dispute the applicant’s claims.
30 In the present case, the Board of Appeal pointed out that the mark applied for was a figurative sign and would be perceived by the vast majority of the relevant public as a stylised letter ‘q’ in the colours black and blue. It added that that sign could be perceived as the letter ‘q’ joined to the letter ‘d’ only after an in-depth analysis and provided that the applicant’s name was known. However, according to the Board of Appeal, neither the general public nor the specialised public would carry out such an assessment.
31 It must be pointed out that the mark applied for has the characteristics of the letter ‘q’ and will be perceived as such, even though its shape is more square than oval. Consequently, the Board of Appeal’s finding is free from any error of assessment. The use of two colours in that mark is not capable of casting doubt on that finding.
32 In that regard, it must be borne in mind that, although it is not necessary, in order to conclude that there is a likelihood of confusion, to find that that likelihood of confusion exists for the whole of the relevant public, it is for the applicant to show that the analysis carried out by the Board of Appeal is incorrect with regard to a significant part of the relevant public (see, to that effect, judgment of 5 May 2021, Capella v EUIPO – Cobi.bike (GOBI), T‑286/20, not published, EU:T:2021:239, paragraph 38 and the case-law cited). According to the case-law, a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraph 50 and the case-law cited).
33 However, in the present case, the applicant has not adduced any evidence to show that only a negligible part of the relevant public would be likely to perceive the mark applied for as a letter ‘q’.
34 Moreover, it must be pointed out that the applicant does not rule out the possibility that part of the public, ‘if [it] takes time to study the … sign [applied for]’, may perceive in it a reference to the letter ‘q’. In that regard, it must be added that the Board of Appeal found, a finding which the applicant has not called into question, that the services concerned in Classes 35 and 42 were aimed at a specialised public displaying a higher-than-average level of attention.
35 As regards the claim that the mark applied for can be perceived as a combination of the letters ‘q’ and ‘d’, that would imply, as the Board of Appeal pointed out, that the public knows the applicant’s name. However, it is sufficient to state that the mark applied for does not contain an indication of the applicant’s name.
36 In that regard, it is important to bear in mind that the comparison must be made between the signs as they were registered or as they appear in the application for registration, regardless of whether they are used alone or together with other marks or indications (see judgment of 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL), T‑509/19, not published, EU:T:2021:225, paragraph 95 and the case-law cited).
37 It follows that the Board of Appeal’s finding that a significant part of the relevant public will perceive the mark applied for as a representation of the letter ‘q’ is not vitiated by any error of assessment.
– The assessment of the dominant and distinctive elements of the signs at issue
38 The applicant submits that, in finding that the distinctive element of the earlier mark was the letter ‘q’, the Board of Appeal wrongly reduced it to its word element and analysed the mark applied for in relation to the letter ‘q’ in its word version only. According to the applicant, there are inconsistencies in the Board of Appeal’s reasoning in so far as it acknowledges that the signs at issue contain graphic elements and that those graphic elements must be taken into account, but does not give any weight to that graphic presentation. Moreover, in the applicant’s opinion, the marks at issue are each composed of a single element, with the result that there cannot be a dominant element in those marks. It submits that the graphic presentation is inherent to those signs. It contends that the Board of Appeal should thus have given more weight to the graphic design of each sign or, at least, of the sign applied for.
39 EUIPO takes the view that the Board of Appeal was justified in stating that the font and colour of the earlier mark played only minor roles. It observes that word elements are in principle more distinctive than figurative elements.
40 The intervener submits that the graphic representation of the mark at issue does not affect its conceptual content and is usually not as dominant as its conceptual content. It contends that the consumer is used to deciphering a certain form with regard to a letter, even if it is not written in the usual way.
41 In the present case, the Board of Appeal found, as regards the mark applied for, that the letter ‘q’ was the dominant element of that mark, adding that the graphic representation could not be neglected and had an impact on the perception of the relevant public. As regards the earlier mark, it pointed out that the letter ‘q’ was the distinctive element of that mark. When comparing the signs at issue visually, the Board of Appeal used the expression ‘dominant element’ with regard to both signs.
42 In that regard, it must be borne in mind that, when assessing 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 the other components (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
43 The application of the case-law cited in paragraph 42 above presupposes, however, that the mark at issue is a composite sign. However, it is common ground that the signs at issue consist of a single element, with the result that it is not, in the present case, possible to identify a dominant element. The same is true of the distinctive element, which can be ascertained only where the mark is a composite mark.
44 It follows that, in referring to the verbal aspect of the marks at issue, namely the letter ‘q’, as the dominant or distinctive element of those marks, the Board of Appeal made an error of assessment. It will nevertheless be necessary to assess whether that error had an effect on the Board of Appeal’s reasoning.
– The visual, phonetic and conceptual comparison of the signs
45 First, as regards the visual comparison of the signs at issue, the applicant submits that those signs ‘have been artificially reduced to the letter “q”, in its verbal form’. Moreover, it argues that the Board of Appeal acknowledged that those signs differed in their graphic representation, but did not draw any inference from that. It contends that the Board of Appeal thus made an error of assessment in finding that there was any visual similarity between the signs at issue.
46 EUIPO submits that the Board of Appeal’s finding is free from any error of assessment. It contends that the colours and the font of the earlier mark have only a minor impact on the comparison of the signs at issue.
47 The intervener submits that the Board of Appeal’s conclusion that the signs are identical with respect to their dominant element is correct. It states that the Board of Appeal took the different graphic representations of the signs at issue into account.
48 In the present case, the Board of Appeal found that the signs at issue were visually similar to an average degree since they were identical with respect to their dominant element, but differed with respect to their graphic representation.
49 In that regard, it must be pointed out that, although the signs at issue are similar in so far as they consist of a single letter, namely the letter ‘q’, their graphic stylisation is very different. Whereas the earlier mark, which is red, is represented in a standard font, the mark applied for is highly stylised. The mark applied for is rather square in shape, is divided into two parts by an oblique white line and is represented in the colours blue and black. The differences in stylisation are thus clearly visible.
50 That is particularly the case because the elements are very short elements, which consist of a single letter, with the result that the relevant public is more capable of perceiving such differences easily (see, to that effect, judgments of 23 September 2009, Arcandor v OHIM – dm drogerie markt (S-HE), T‑391/06, not published, EU:T:2009:348, paragraph 41, and of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 31).
51 In those circumstances, it must be held that the degree of visual similarity between the signs at issue has to be categorised as low. In finding that the degree of visual similarity was average, the Board of Appeal therefore made an error of assessment.
52 As regards the Board of Appeal’s error of assessment, inasmuch as it erred in considering the word element to be the dominant element of the mark applied for and the distinctive element of the earlier mark (see paragraph 44 above), it must be pointed out that that error necessarily had an effect on the finding relating to visual similarity. Even though the Board of Appeal took into account the stylisation of the signs at issue, on account of the error made, it gave excessive weight to the verbal aspect of those signs.
53 Secondly, as regards the phonetic comparison of the signs at issue, the applicant complains that the Board of Appeal did not examine those signs as a whole and disputes the finding that those signs are phonetically identical. According to the applicant, as the mark applied for is more a graphic sign than a word in a stylised form, it is difficult to accept that it will automatically be pronounced as the letter ‘q’. Furthermore, that sign could, according to the applicant, not be pronounced at all.
54 EUIPO and the intervener dispute the applicant’s arguments.
55 In the present case, the Board of Appeal found that the signs at issue were phonetically identical, since the graphic representation had no impact in that regard.
56 In that respect, it must be pointed out that the Board of Appeal’s assessment is free from any error of assessment, at least as regards the part of the relevant public which will perceive the signs at issue as representations of the letter ‘q’. The part of the relevant public which will perceive those signs as representations of the letter ‘q’ will pronounce them in the same way.
57 It must be stated that the applicant’s line of argument relates only to the part of the relevant public which will not perceive the signs at issue as a representation of the letter ‘q’. However, in that regard, it must be observed, as has been pointed out in paragraph 32 above, that it is sufficient that a non-negligible part of the relevant public perceives those signs as a reference to the letter ‘q’. That is the case here (see paragraph 37 above), with the result that the applicant’s argument must be rejected.
58 Thirdly, as regards the conceptual comparison of the signs at issue, it is necessary to uphold the Board of Appeal’s assessment, which is not, moreover, disputed by the applicant, that those signs have no meaning for the relevant public and that it was not therefore possible, in the present case, to carry out a conceptual comparison.
The distinctiveness of the earlier mark
59 As regards the distinctiveness of the earlier mark, the applicant submits that the question is not whether or not the letter ‘q’ has any meaning with regard to the goods and services concerned or, at least, it contends that that is not the only criterion to be taken into account. According to the applicant, the earlier mark is a short sign, a classic representation of a simple letter and corresponds to a sign the shape of which is very simple. It contends that the absence of any peculiarity in the presentation, combined with the simple presence of a simple letter, ‘could have led the Board of Appeal to be more severe in the appreciation of the distinctiveness of this sign’. It argues that the distinctiveness of the earlier mark must derive from the graphic presentation of the letter ‘q’. Moreover, the applicant submits that it is recognised that short signs benefit from limited protection. It contends that, consequently, if the earlier mark has distinctiveness, it is quite low in degree and most of that distinctiveness derives from its graphic presentation. Furthermore, the applicant refers to decisions of the Opposition Divisions of EUIPO which considered that the degree of distinctiveness of marks consisting of a single letter is lower than normal and is based mainly on the specific way in which the letters are represented graphically.
60 EUIPO submits that the applicant’s argument that single letters are generally inherently devoid of distinctive character has already been rejected by the General Court. It argues that, since registered trade marks consisting of a single letter represented in standard characters enjoy a presumption of validity, their degree of distinctiveness must be assessed in relation to the goods or services concerned. Likewise, it contends that the mere existence of other earlier marks containing the single letter ‘q’ does not necessarily lead to the earlier mark’s having a weak distinctive character. EUIPO adds that the decision of the Opposition Division of 2010 was given before its practice of always refusing marks consisting of a single letter changed and that, as regards the Opposition Division’s decision of 2020, the Board of Appeal cannot be bound by the decisions of lower-ranking adjudicating bodies.
61 The intervener submits that the Board of Appeal was justified in finding that the letter ‘q’ was distinctive with regard to the goods and services covered by the earlier mark.
62 In the present case, the Board of Appeal stated that the intervener had not expressly claimed that its trade mark was particularly distinctive by virtue of intensive use or reputation. It observed that, consequently, the assessment of the earlier mark’s distinctive character was based on its inherent distinctive character, which the Board of Appeal considered to be normal. Moreover, the Board of Appeal pointed out that the letter ‘q’ was not descriptive or non-distinctive with respect to the goods or services concerned.
63 Contrary to what the applicant, in essence, claims, in order to determine the distinctive character of a mark, an overall assessment must be made of the greater or lesser capacity of that mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 22).
64 That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, secondly, by reference to the perception of the mark on the part of the relevant public, which consists of average consumers of those goods or services, who are reasonably well informed and reasonably observant and circumspect (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
65 As regards marks consisting of a single letter, it must be stated that the legislature expressly included signs consisting of one letter in the list of signs that may constitute an EU trade mark, which is set out in Article 4 of Regulation 2017/1001, and that Articles 7 and 8 of that regulation, relating to refusal of registration, do not lay down any specific rules with regard to signs consisting of one letter. Thus, one letter is, in itself, capable of conferring distinctive character on a trade mark (see judgment of 9 November 2022, L’Oréal v EUIPO – Heinze (K K WATER), T‑610/21, not published, EU:T:2022:700, paragraph 55 and the case-law cited). Consequently, EUIPO is right in stating that the argument that trade marks consisting of a single letter are generally inherently devoid of distinctive character has already been rejected by the Court.
66 However, it is apparent from the case-law that a sign consisting of a single letter has, in principle, a minimum degree of distinctive character or a weak, or even very weak, distinctive character, where that letter is not stylised or is only slightly stylised or where the other figurative elements of the sign in question are not striking. By contrast, where a sign consists of a highly stylised letter or is accompanied by other relatively elaborate figurative elements, that sign may be recognised as having a normal or average degree of distinctive character (see judgment of 9 November 2022, K K WATER, T‑610/21, not published, EU:T:2022:700, paragraph 56 and the case-law cited).
67 In that regard, it must be pointed out that although, as EUIPO and the intervener submit, in accordance with the case-law referred to in paragraph 64 above, the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, secondly, by reference to the relevant public’s perception of that mark, the fact remains that a sign consisting of a single letter must, also in accordance with the case-law cited in paragraph 66 above, be stylised or accompanied by other relatively elaborate figurative elements in order for that sign to be recognised as having a normal degree of distinctive character.
68 However, in the present case, as has already been stated in paragraph 49 above, the earlier mark is represented in a standard font and in red, with the result that it is only very slightly stylised. Consequently, pursuant to the case-law cited in paragraph 66 above, the inherent distinctive character of the earlier mark must be regarded as weak, even though, as the Board of Appeal found, the letter ‘q’ has no meaning with regard to the goods and services covered by that mark.
69 It follows that the Board of Appeal’s finding that the earlier mark had a normal degree of distinctive character is vitiated by an error of assessment.
70 As is apparent from paragraphs 44, 51 and 69 above, the Board of Appeal made, first, an error of assessment in finding that the verbal aspect of the marks at issue, namely the letter ‘q’, was the dominant or distinctive element of those marks and, secondly, errors of assessment in finding that the degree of visual similarity was average and that the inherent distinctive character of the earlier mark was normal. Those errors necessarily vitiated the Board of Appeal’s reasoning relating to the assessment of the likelihood of confusion, since, in particular, in paragraph 49 of the contested decision, the Board of Appeal relied on the average degree of visual similarity in order to find that the different graphic representations of the signs at issue were not sufficient to exclude a likelihood of confusion, including with regard to the public which displayed a higher level of attention.
71 In view of all the foregoing, the fourth plea must be upheld and, as a result, the contested decision must be annulled, without it being necessary to rule on the applicant’s other pleas.
The applicant’s second head of claim
72 As regards the applicant’s second head of claim, requesting that the Court reject the opposition brought against the mark applied for and, thus, alter the contested decision, it must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on the Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision that Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
73 In the present case, it must be held that the conditions for the exercise of the Court’s power to alter decisions are not satisfied. As is apparent from paragraph 70 above, the errors of assessment made by the Board of Appeal necessarily vitiated the global assessment of the likelihood of confusion. Likewise, it must be pointed out that, as is apparent from paragraph 18 of the contested decision, the Board of Appeal focused on the perception of the signs at issue by the English-speaking public in the European Union. However, it cannot be ruled out that the perception of those signs by the other parts of the relevant public may differ from that of the English-speaking public.
74 Consequently, the Court is not in a position to determine what decision the Board of Appeal was required to take and cannot therefore exercise its power to alter decisions, with the result that the applicant’s head of claim seeking the rejection of the opposition brought against the mark applied for must be rejected.
Costs
75 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. Moreover, under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.
76 In the present case, since EUIPO and the intervener have been unsuccessful, they must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant.
77 As regards the applicant’s claim that EUIPO and the intervener should also be ordered to pay the costs incurred by the applicant in the proceedings before EUIPO, it must be borne in mind, first, that costs incurred for the purposes of the proceedings before the Opposition Division cannot be regarded as recoverable costs (see judgment of 25 April 2013, Bell & Ross v OHIM – KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 164 and the case-law cited).
78 Secondly, as regards the costs incurred by the applicant before the Board of Appeal, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, EUIPO and the intervener must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2021 (Case R 2070/2020-4);
2. Dismisses the action as to the remainder;
3. Orders EUIPO and Quentia GmbH to bear their own costs and to pay the costs incurred by Quantic Dream, including those which it incurred for the purposes of the proceedings before the Board of Appeal.
Costeira | Kancheva | Zilgalvis |
Delivered in open court in Luxembourg on 25 October 2023.
V. Di Bucci | | S. Papasavvas |