JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
28 September 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark G CORELABS – Earlier EU figurative mark CORE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑454/21,
G-Core Innovations Sàrl, established in Contern (Luxembourg), represented by L. Axel Karnøe Søndergaard, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez 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
Coretransform GmbH, established in Berlin (Germany), represented by U. Hildebrandt, lawyer,
THE GENERAL COURT (Fifth Chamber),
composed, at the time of the deliberations, of D. Spielmann (Rapporteur), President, M. Brkan and I. Gâlea, 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
Background to the dispute
1 By its action based on Article 263 TFEU, the applicant, G-Core Innovations Sàrl, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 May 2021 (Case R 22/2021-2) (‘the contested decision’).
2 On 22 December 2015, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods and services, following the restriction made on 10 August 2018 in the course of the proceedings before EUIPO, in inter alia Classes 9 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, and correspond, for each of those classes, to the following description:
– Class 9: ‘Computer software for use in gaming, content streaming and other content distribution; computer application software for use in gaming, content streaming and other content distribution; computer software for mobile phones, smartphones and computer tablets for use in gaming, content streaming and other content distribution; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; software for enhancing and developing video games’;
– Class 42: ‘Server hosting services; web hosting services; infrastructure as a service [iaas]; platform as a service [paas]; software as a service [saas]; application service provider (asp), namely, hosting computer software applications of others; development of computer game software; development of online software platform; consultancy and information services relating to information technology architecture and infrastructure; information technology support services; computer software technical support services; support and maintenance services for computer software; providing on-line support services for computer program users; technical support services for providing on-line gaming facilities; none of the aforesaid being for use in respect of IT management’.
4 In the application for registration, the applicant claimed the following colours: orange, red, silver, black and grey.
5 The trade mark application was published in Community Trade Marks Bulletin No 2016/024 of 5 February 2016.
6 On 2 May 2016, the intervener, COREtransform GmbH, filed a notice of opposition pursuant to Article 41 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 46 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)) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
7 The opposition was based, inter alia, on the earlier EU figurative mark No 9 232 729 registered on 5 June 2011 and reproduced below:
8 The earlier mark had been registered for services in Classes 41 and 42 corresponding, for each of those classes, to the following description:
– Class 41: ‘Education; Providing of training; Entertainment; Sporting and cultural activities’;
– Class 42: ‘Creation and development of computer software and hardware; Information technology consulting’.
9 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
10 On 10 November 2020, the Opposition Division upheld the opposition and refused registration of the mark applied for in respect of all of the contested goods and services referred to in paragraph 3 above, on the basis of Article 8(1)(b) of Regulation No 207/2009.
11 On 7 January 2021, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
12 By the contested decision, the Second Board of Appeal of EUIPO dismissed the appeal. First, in assessing whether there was a likelihood of confusion from the point of view of the relevant public consisting of the general public and business customers with specific professional knowledge or expertise in the respective fields of industry or commerce, with a level of attention varying from average to high, depending on the price, the specialised nature or the terms and conditions of the goods and services purchased, the Board of Appeal endorsed and referred to the findings of the Opposition Division that the goods and services at issue were in part identical and in part similar to each other. Secondly, it found that the signs at issue were visually similar to a low degree and phonetically similar to at least a lower than average degree. Furthermore, the Board of Appeal took the view that the signs at issue were either not conceptually similar for the non-English-speaking part of the relevant public which would not understand the meaning of the word element common to the signs at issue ‘core’ or similar to an average degree, for the English-speaking part of that public which, on the other hand, would understand its meaning. Thirdly, it found that the inherent distinctive character of the earlier mark was normal, as regards the non-English-speaking part of the relevant public on account of the presence of the word element ‘core’, which was devoid of meaning for the goods and services at issue, and lower than average as regards the English-speaking part of that public which would understand the meaning of that element. Fourthly, in its global assessment, the Board of Appeal concluded that there was a likelihood of confusion for the non-English-speaking part of the relevant public, notwithstanding its high or relatively high level of attention, on account, in particular, of the average degree of distinctiveness of the earlier mark, and, moreover, that there was also a likelihood of confusion for the English-speaking part of the relevant public, on account, in particular, of the average degree of conceptual similarity found between the signs.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– allow registration of the mark applied for in respect of all the goods and services covered;
– order EUIPO to pay the costs of the proceedings before the Court.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 Given the date on which the application for registration at issue was filed, namely 22 December 2015, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). In addition, since, in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
17 Accordingly, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and the parties in their written pleadings to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009 the wording of which is identical.
Substance
18 In support of its action, the applicant raises, in essence, a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In that regard, it submits, first, that the Board of Appeal erred in its assessment of the distinctive and dominant elements of the marks at issue and, secondly, that it incorrectly assessed the likelihood of confusion.
19 EUIPO and the intervener dispute the applicant’s arguments.
20 Under Article 8(1)(b) of Regulation No 207/2009, 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.
21 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).
22 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see 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).
23 As regards the determination of the relevant public, first of all, the Board of Appeal noted that, in the light of the fact that the marks at issue were EU trade marks, the relevant territory was that of the European Union. Next, it found that the relevant public consisted of consumers likely to use both the services covered by the earlier mark and the goods or services covered by the mark applied for. Lastly, it confirmed the Opposition Division’s findings that the goods and services considered to be identical or similar were aimed at the general public and business customers with specific professional knowledge or expertise in the fields of industry or commerce and that the level of attention of the relevant public would vary from average to high, depending on the price, the specialised nature or the terms and conditions of the goods and services purchased. Those findings have not been disputed by the parties.
24 As regards the comparison of the goods and services at issue, the Board of Appeal confirmed the Opposition Division’s findings that the goods and services covered by the application for registration of the mark applied for, in Classes 9 and 42, were in part identical and in part similar to the services covered by the earlier mark in Classes 41 and 42, and that those findings had not, moreover, been challenged before it by the applicant. Those findings have not been disputed by the parties.
The comparison of the signs at issue
25 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).
26 Furthermore, 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).
27 It should be observed that the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited). The descriptive, non-distinctive or weakly distinctive elements of a composite trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by that mark (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).
28 It is in the light of those considerations that the assessment of the degree of similarity between the mark applied for and the earlier mark must be carried out by taking into account, in particular, the dominant elements of which the signs at issue consist.
– The distinctive and dominant elements of the marks at issue
29 First of all, the Board of Appeal took the view that the earlier mark consisted, first, of the word element ‘core’, written in capital letters, in a fairly standardised grey typeface and, secondly, of the additional element ‘®’, which is, for its part, negligible owing to its informative function indicating that the sign has been registered. Consequently, the Board of Appeal held that that additional element would not be taken into consideration for the purposes of the comparison of the signs at issue. In addition, referring to the definition set out in the Collins Dictionary, the Board of Appeal found, inter alia, that, in the field of computing, the word ‘core’ referred to ‘one of several processing units working in parallel in a computer’, with the result that, for the English-speaking part of the relevant public, that word could allude to the services covered by the earlier mark. On the other hand, it noted that, for the non-English-speaking part of the relevant public, since that word is not part of basic English vocabulary likely to be known by anyone, it would be regarded by that part of the public as being an invented term and would therefore be distinctive. Since that assessment has not been disputed by the applicant, there is no need to call it into question.
30 Next, the Board of Appeal found, as regards the mark applied for, that the figurative element consisting of the silver capital letter ‘G’, superimposed on an orange sphere, was visually striking and had significant weight in the overall impression conveyed by the sign on account, primarily, of its large size in relation to the other elements of the contested sign. It nevertheless took the view that that figurative element was not capable of fully obscuring the other word elements that would remain identifiable for consumers. Furthermore, it found that the capital letter ‘G’ and the word element ‘corelabs’ were also distinctive, although the word ‘core’ was allusive for the English-speaking part of the relevant public and the element ‘labs’ was descriptive both for the English-speaking and non-English-speaking parts of the relevant public.
31 Lastly, first, the Board of Appeal took the view that the word elements ‘core’ and ‘labs’ differed from one another by their different shades of colours, namely black as regards the element ‘core’ and a lighter grey as regards the element ‘labs’, enabling the consumer to distinguish between them. Secondly, the Board of Appeal found that the separate element ‘core’ was, due to its lack of meaning for the non-English-speaking part of the relevant public, of average distinctiveness, whereas the word element ‘labs’ was, for its part, associated by the whole of the relevant public with the idea of laboratories where experiments and research were carried out, since that abbreviation was used in English, but also in non-English-speaking regions. Thus, it confirmed the Opposition Division’s view that the element ‘core’ had an average degree of distinctiveness and that the element ‘labs’ had a lower than average degree of distinctiveness.
32 The applicant disputes the Board of Appeal’s assessment that the common element ‘core’ is the distinctive element of the mark applied for. It states that the average consumer will be unable to perceive the element ‘core’ as being more distinctive and dominant than the other elements of which the mark applied for consists and, in particular, its figurative element. In that regard, the applicant submits that it is reasonable to think that, in the light of the presence of the figurative element representing the capital letter ‘G’, the repetition of that letter below that element, and the presence of the central point which may be equated with the meaning of the English word ‘by’, followed by the word element ‘corelabs’, the consumer will understand that the reference below the figurative element means ‘G’ by ‘corelabs’.
33 EUIPO and the intervener dispute the applicant’s claims.
34 It should be borne in mind that, with regard to the assessment of the dominant character of one or more given components of a complex 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 complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
35 Furthermore, for the purpose of assessing the distinctive character of a mark or of an element making up a mark, an assessment must be made of the greater or lesser capacity of that mark or 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, account should be taken, in particular, of the inherent characteristics of the mark or of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).
36 In the present case, first, the Board of Appeal’s assessment that the figurative element of the mark applied for is the dominant element of the sign must be upheld. That element, owing to its large size, its specific graphic design and colours, consisting of the silver capital letter ‘G’, which is superimposed on an orange sphere, partially illuminated in its centre and partially shaded on its edges, will immediately affect the consumer’s visual perception of the sign.
37 Secondly, it should be noted that the word elements have an appreciable significance in the mark applied for. In that regard, where a trade mark is composed of verbal and figurative elements, the former are, in principle, 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 (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
38 Thirdly, in the mark applied for, the figurative element represents, in particular, the capital letter ‘G’, which is also located below that capital letter, in dark grey, in a relatively standard typeface, to the left, separated by a dot from the word element ‘corelabs’. Accordingly, the association between those two elements will confer on the capital letter ‘G’ additional significance in the overall impression of the contested mark.
39 Fourthly, it is appropriate to endorse the Board of Appeal’s assessment that the use of different shades of colours, namely dark grey as regards the element ‘core’ and light grey as regards the element ‘labs’, will enable the consumer to distinguish between them. Furthermore, since the element ‘core’ has no specific meaning for the non-English-speaking consumer, unlike the element ‘labs’ which, as the Board of Appeal noted, will be understood by the relevant English-speaking and non-English-speaking public as a diminutive form of the word ‘laboratories’, the former will be regarded as having an average degree of distinctiveness for the goods and services at issue, whereas the latter will be regarded as weakly distinctive for those goods and services.
40 It follows that the Board of Appeal did not err in finding, in paragraphs 35, 36 and 41 of the contested decision, that the dominant element of the mark applied for was the figurative element representing a letter ‘G’, that the word element ‘core’ had an average degree of distinctiveness for the non-English-speaking part of the relevant public and, lastly, that the element ‘labs’ was weakly distinctive both for the English-speaking and non-English-speaking parts of the relevant public.
– The visual similarity of the signs
41 First of all, the Board of Appeal found that the signs at issue were similar on account of the presence of the word element ‘core’ in the two signs, which would be immediately perceived by the relevant public. Next, it took the view that the main differences between the signs at issue resided in the presence in the mark applied for of the figurative element and of the letter ‘G’ located below it, and that the word element ‘labs’, in the mark applied for, was of lesser significance due to its pale colour and its limited distinctiveness. Lastly, the Board of Appeal noted that the figurative element of the mark applied for was the most striking element visually, but that, in view of the fact that the mark applied for was composed of word and figurative elements, the former usually produced a stronger impression on the consumer than the latter because the public more easily referred to a word element by quoting it than to a figurative element by describing it. Thus, the Board of Appeal concluded that the signs at issue were similar to a low degree.
42 The applicant disputes the Board of Appeal’s findings. It claims that the earlier mark is composed of one single element ‘core’ of a dark grey tone, in a standard typeface, and that the mark applied for, for its part, consists, first, of a ‘large’ figurative element representing the letter ‘G’ superimposed on an orange circle which is shaded and illuminated, and, secondly, the element ‘g.corelabs’. It submits that the signs at issue differ significantly visually on account of the addition of the figurative elements contained in the mark applied for. Furthermore, the applicant adds that the single element of the earlier mark consists of only four characters whereas the additional elements, located below the main figurative element of the mark applied for, have 10 characters in all.
43 EUIPO and the intervener dispute the applicant’s arguments.
44 In the present case, it must be borne in mind, as a preliminary point, that the earlier mark consists of the single word element ‘core’ in dark grey, represented in a relatively standard bold typeface, and that the mark applied for is, for its part, made up of a dominant figurative element and additional elements composed of the letter ‘G’ followed by a dot, and the elements ‘core’ and ‘labs’, which are, respectively, distinctive to an average degree and weakly distinctive.
45 It should also be noted that the signs at issue are distinguished by the presence of the dominant and distinctive figurative element of the mark applied for and, to a lesser extent, by the presence of the capital letter ‘G’ below that figurative element. The dot located between the elements ‘g’ and ‘corelabs’, taking account of its size, and the term ‘labs’, taking account of its lighter grey colour, which is less visible and dominant than the other elements, and its weak distinctive character, will not give rise to an impression of a significant visual difference between the marks at issue.
46 The fact remains that, as has been pointed out in paragraphs 39 and 40 above, the word element ‘core’, which is common to the marks at issue, has an average degree of distinctiveness for the non-English-speaking part of the relevant public and will therefore be of average significance in the overall visual impression of the sign for that public. In that regard, it cannot be overlooked that there are significant visual similarities in the graphic representation of the element ‘core’ common to the two signs, both in the typeface and in the shades of colours, dark grey in the earlier mark and black in the mark applied for.
47 Therefore, taking into account, first, the presence of the visually dominant figurative element in the sign applied for, the capital letter ‘G’ and the weakly distinctive word element ‘labs’, and, secondly, the visual similarity resulting from the representation of the word element ‘core’, being of average distinctive character for the non-English-speaking part of the relevant public and common to the marks at issue, the Board of Appeal’s assessment that the marks at issue have a low degree of visual similarity must be upheld.
– The phonetic similarity of the signs
48 First of all, the Board of Appeal found that the marks at issue both had the word element ‘core’ which is pronounced identically, as one or two syllables, by the English-speaking and non-English-speaking parts of the relevant public, and that the pronunciation of the marks at issue is distinguished by the presence of the additional elements ‘G’ and ‘labs’ of the mark applied for, both pronounced as one syllable. Next, it found that the figurative element representing the capital letter ‘G’ would be regarded as a mere reference to the capital letter ‘G’ of the element ‘g.corelabs’ of the sign applied for and would therefore probably not be pronounced by the relevant public. Lastly, it found that, having regard to the fact that the term ‘labs’ had, on account of its position and its shade of grey, which is lighter than the other elements of the sign, secondary importance in the overall impression of the mark applied for, that element was also less significant in the pronunciation of the sign. In the light of those elements, the Board of Appeal took the view that the marks at issue had at least a lower than average degree of phonetic similarity, due, in particular, to the element ‘core’, which has a central position in the pronunciation of the mark applied for.
49 The applicant submits that the earlier mark is composed of the single word ‘core’, whereas the mark applied for contains three or even four word elements, namely ‘g’, ‘core’ and ‘labs’ to which the element ‘by’ may be added, depending on the pronunciation of the dot between the letter ‘g’ and the element ‘corelabs’. According to the applicant, when pronouncing the signs, regardless of the language used, the consumer will emphasise the first syllable of the signs differently, on account of the presence of the first elements, respectively, ‘core’, in the earlier mark, and ‘g’ in the mark applied for, and the consumer will pronounce all the phonetic elements of the sign applied for, including, to a certain extent, the dot that will either give rise to a pause in the pronunciation, or will serve to express that the element ‘corelabs’ is an addition to the element ‘g’. Therefore, the mark applied for is phonetically three times longer than the earlier mark.
50 The applicant states further that the average consumer will pronounce all the word elements of the sign applied for without omitting or abbreviating any of them and that he or she will give the same weight to the pronunciation of each of them. In that regard, the applicant submits that the element ‘core’ will not be pronounced in such a way that it will be perceived orally as having more phonetic importance than the other elements of the sign applied for and adds that the fact that the element ‘labs’ has a certain indirect meaning in respect of the goods and services will not change the importance of that element in the pronunciation of the sign.
51 EUIPO and the intervener dispute those arguments.
52 In the present case, first of all, it is necessary to uphold the Board of Appeal’s assessment that, in the mark applied for, the figurative element will probably not be pronounced by the relevant public, regardless of the language used, in view of its stylisation and the fact that it will appear rather as a simple graphic reference to the capital letter ‘G’ located below it, at the beginning of the word element ‘g.corelabs’. Therefore, the only elements which are relevant and must be taken into consideration for the purposes of the phonetic comparison of the marks at issue are the elements ‘g’, ‘core’ and ‘labs’, to which may be added, to a certain extent, the dot between the elements ‘g’ and ‘corelabs’.
53 Next, it is also necessary to uphold the Board of Appeal’s assessment that the mark applied for and the earlier mark share an identical phonetic element, namely the word ‘core’, which will be pronounced by the relevant public as one or two syllables, depending on the language used. Lastly, it must be stated that the word element ‘labs’, located at the end of the sign applied for, will have an appreciable weight in the pronunciation of the phonetic elements of the mark applied for, but still less significant than the other two elements of the mark applied for in view, in particular, of its lighter grey colour.
54 Therefore, in the light of the presence of the word element ‘core’ in both the signs at issue, its position in the pronunciation of the mark applied for and all the other phonetic elements of which it consists, which are liable to create impressions of phonetic differences between the marks at issue, the Board of Appeal was correct in finding that the signs at issue were similar to at least a lower than average degree.
– The conceptual similarity of the signs
55 The Board of Appeal took the view that, conceptually, the signs were dissimilar for the relevant non-English-speaking public and similar to an average degree for the relevant English-speaking public. In that regard, first, it found that, for the non-English-speaking part of the relevant public, the word element ‘core’ will be meaningless and that, in the mark applied for, the capital letter ‘G’ will be perceived by the relevant public as not conveying any semantic connotation, whereas the element ‘labs’ will, for its part, be perceived as relating to the concept of a laboratory or to the fields of research or experimentation. Secondly, it held that, for the English-speaking part of the relevant public, the element common to both signs, namely ‘core’, referred, in the context of computing, to a ‘processing unit working in parallel in a computer’. That term is not descriptive, but merely allusive to the goods and services at issue and has a certain weight in the conceptual comparison. In addition, the Board of Appeal found that the word element ‘labs’ had less significant weight for the relevant public owing to its descriptive character and that the capital letter ‘G’ and the figurative element of the mark applied for had no equivalent in the earlier mark.
56 The applicant disputes that assessment, and submits that there is no conceptual similarity between the signs at issue and that a comparison is obsolete in that regard.
57 EUIPO and the intervener dispute those arguments.
58 First, as was held by the Board of Appeal, the marks at issue both share the word ‘core’ which, in the context of computing for the English-speaking part of the relevant public, refers to the concept of a ‘processing unit working in parallel in a computer’ and which, by contrast, the non-English-speaking part of the relevant public will not be able to understand, since that word is not part of basic English vocabulary understandable by a non-English-speaking public. Secondly, it is necessary to uphold the Board of Appeal’s findings that the figurative element of the earlier mark and the capital letter ‘G’ will not convey any particular concept either for the English-speaking public or for the non-English-speaking public, with the result that those elements will have no influence on the assessment of the similarity of the signs in that regard. Thirdly, it must also be noted that the word ‘labs’, present only in the mark applied for, will be understood by the English-speaking and non-English-speaking parts of the relevant public as referring to ‘laboratories’ or to the fields of research and experimentation, with the result that that element will convey a concept for the whole of the relevant public.
59 Therefore, having regard, first of all, to the lack of conceptual meaning produced by the figurative element and the element ‘G’ of the mark applied for, next, to the meaning conveyed by the element ‘core’ for the English-speaking public and its lack of meaning for the non-English-speaking public and, lastly, to the meaning, for the relevant English-speaking and non-English-speaking public, of the element ‘labs’ in the mark applied for, the Board of Appeal was correct in finding that the marks at issue were conceptually, first, dissimilar for the non-English-speaking part of the relevant public and, secondly, similar to an average degree for the English-speaking part of the relevant public.
The global assessment of the likelihood of confusion
60 As regards the distinctive character of the earlier mark, first, the Board of Appeal found that the intervener had not claimed that its mark has acquired distinctive character through use or reputation and that, consequently, the assessment of its distinctive character is based solely on its inherent distinctiveness. Secondly, it took the view that the earlier mark consisted primarily of the word element ‘core’, which has no descriptive meaning for the goods and services at issue for the non-English-speaking part of the relevant public and that, for the English-speaking part of the relevant public, that element alluded to the goods and services at issue. Therefore, the Board of Appeal held that the distinctive character of the earlier mark was normal as regards the non-English-speaking part of the relevant public and lower than average as regards the English-speaking part of the relevant public.
61 Furthermore, the Board of Appeal took the view that, as regards the non-English-speaking part of the relevant public, there was a likelihood of confusion, notwithstanding its high level of attention, taking into account, first of all, the similarity or identity of the goods and services at issue, next, the low degree of visual similarity and the lower than average degree of conceptual similarity and, lastly, the average degree of distinctiveness of the earlier mark.
62 As regards the English-speaking part of the relevant public, the Board of Appeal also concluded that there was a likelihood of confusion. It found, in that regard, that there was a likelihood of confusion notwithstanding the lower degree of inherent distinctiveness of the earlier mark for that part of the relevant public on account, in particular, of the existence of an average degree of conceptual similarity between the marks at issue.
63 In addition, according to the Board of Appeal, the element ‘core’ common to the signs at issue, notwithstanding its lower than average distinctiveness, will be distinguished by the relevant public on account of the fact that it will appear in a relatively isolated manner in the mark applied for. Furthermore, the Board of Appeal found that the other elements in the mark applied for would not be capable of counteracting the similarities caused by the word element ‘core’.
64 The applicant disputes the Board of Appeal’s assessments and submits in that regard that, in view of the low degree of visual similarity of the marks at issue, their lower than average degree of phonetic similarity and the neutral conceptual comparison, it is unreasonable to assume that the marks at issue are sufficiently similar to give rise to confusion. It states, in particular, that they contain more differences than common elements and that the Board of Appeal erred in finding that the distinctive and dominant figurative element of the mark applied for had only a secondary role in the overall impression of the sign, consisting simply in drawing the relevant public’s attention to the word element ‘g’. The applicant claims that that figurative element is, on the contrary, entirely independent of the word elements and is visually relevant as are the additional word elements at the beginning and at the end of the mark applied for.
65 Furthermore, the applicant puts forward, in support of its arguments, the example of an earlier decision of EUIPO (rejecting opposition No B 3 069 672) relating to opposition proceedings between the intervener and an applicant, in which a composite mark, composed of a weakly distinctive figurative element and the word element ‘netmindcore’, had been regarded by the Opposition Division as visually similar to a low degree and phonetically similar to a lower than average degree, with the earlier mark.
66 EUIPO and the intervener dispute the applicant’s arguments.
67 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).
68 In the present case, in the first place, it should be borne in mind, as has already been pointed out in paragraph 24 above, that the Board of Appeal found, without being contradicted in that regard by the applicant, that the services covered by the earlier mark were either identical or similar to the goods and services covered by the mark applied for and that that assessment did not have to be called into question.
69 In the second place, the example put forward by the applicant based on the previous decision-making practice of the Opposition Division of EUIPO in opposition proceedings other than those forming the subject matter of the present action must be rejected. In this respect, it is important to note that the decisions which the Boards of Appeal of EUIPO are led to take under Regulation No 207/2009 concerning registration of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the EU Courts and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
70 In addition, notwithstanding the principle referred to in paragraph 69 above, it should be noted that there is, moreover, no contradiction between the Board of Appeal’s assessments in the contested decision and the assessments made by the Opposition Division of EUIPO in the decision rejecting opposition No B 3 069 672. The Board of Appeal found, in the same way as the assessments made by EUIPO in that decision, that the marks at issue were visually similar to a low degree and, therefore, did indeed take into consideration the significance of the figurative element representing the capital letter ‘G’ in the mark applied for and its additional word elements at the stage of assessing the visual similarity of the signs at issue. The same finding relating to the absence of any contradiction in EUIPO’s previous practice may be made as regards the degree of phonetic similarity of the marks at issue noted by the Board of Appeal, which correctly found, as did the Opposition Division in the decision rejecting opposition No B 3 069 672, that the signs at issue were similar to a lower than average degree.
71 In the third place, it must be held that the marks at issue have an average degree of conceptual similarity for the English-speaking part of the relevant public and that they are dissimilar for the non-English-speaking part of the relevant public on account of the lack of understanding of the meaning of their common element ‘core’.
72 In the fourth place, as the Board of Appeal held in paragraphs 56 to 58 of the contested decision, the earlier mark has an average degree of inherent distinctiveness for the non-English-speaking part of the relevant public due to the lack of descriptive meaning for the goods and services at issue of the main element ‘core’ of which that mark is composed and has a lower than average degree of distinctiveness for the English-speaking part of the relevant public, which will, by contrast, be able to understand that element and, consequently, attribute to it a descriptive meaning or, at the very least, a meaning which alludes to those goods and services.
73 Therefore, having regard, in particular, to the identity and similarity of the goods and services at issue, the low degree of visual similarity, the lower than average degree of phonetic similarity, the average conceptual similarity for the English-speaking part of the relevant public and, lastly, the lack of conceptual similarity between the marks at issue for the non-English-speaking part of the relevant public, offset, inter alia, by the existence of an average degree of distinctiveness of the earlier mark in respect of that public, the Board of Appeal was right to find that there was a likelihood of confusion both for the English-speaking and non-English-speaking parts of the relevant public and that notwithstanding the degree of attention, varying from average to high, which that public may display in the choice of goods and services at issue.
74 In the light of all of the foregoing, the single plea in law of the action, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected.
75 Consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim requesting the Court to allow registration of the mark applied for in respect of all the goods and services covered.
Costs
76 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.
77 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders G-Core Innovations Sàrl to pay the costs.
Delivered in open court in Luxembourg on 28 September 2022.