JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
26 April 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark XTG – Earlier EU word mark GTX – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑154/22,
Volkswagen AG, established in Wolfsburg (Germany), represented by S. Machei and G. Orsoni, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
XTG S.A., established in Wrocław (Poland),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov (Rapporteur), President, G. De Baere and K. Kecsmár, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 12 January 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Volkswagen AG, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 December 2021 (Case R 1385/2021-5) (‘the contested decision’).
Background to the dispute
2 On 5 September 2019, XTG S.A. filed an application for registration of an EU trade mark with EUIPO in respect of the word sign XTG.
3 The mark applied for covers services in Class 35 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 to the following description: ‘Retail services relating to batteries; wholesale services in relation to information technology equipment; retail services in relation to games; wholesale services in relation to games; retail services in relation to vehicles; retail services in relation to mobile phones; retail services in relation to smartphones; retail of third-party pre-paid cards for the purchase of telecommunication services; retail services in relation to domestic electrical equipment; retail services in relation to smartwatches; retail of third-party pre-paid cards for the purchase of multimedia content; retail services in relation to navigation devices; retail services relating to accumulators; retail services in relation to information technology equipment; retail services in relation to toys; retail services in relation to audio-visual equipment; retail services in relation to computer software; wholesale services in relation to audio-visual equipment; retail services in relation to domestic electronic equipment; retail services relating to audiovisual equipment; wholesale services in relation to computer software; wholesale services in relation to computer hardware; retail services in relation to wearable computers; retail services in relation to computer hardware’.
4 On 16 December 2019, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5 The opposition was based on the earlier EU word mark GTX, which covers, inter alia, services in Class 35 corresponding to the following description: ‘Retailing … relating to motor vehicles’ and ‘Retailing … relating to … motor vehicle parts’.
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 2 June 2021, the Opposition Division rejected the opposition.
8 On 9 August 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division. It sought the partial annulment of that decision, to the extent that it had rejected the opposition as regards ‘retail services in relation to vehicles’, ‘retail services relating to batteries’ and ‘retail services relating to accumulators’ (‘the services at issue’).
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was no 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;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits, in essence, that the Board of Appeal erred in finding that there was no likelihood of confusion within the meaning of that provision.
13 EUIPO disputes the applicant’s arguments.
14 It must be stated at the outset that, in the contested decision, the Board of Appeal found that the rejection of the opposition with regard to all of the services covered by the mark applied for other than the services at issue had become final, a finding which is not disputed by the applicant. Consequently, the present case concerns only the question of whether there is a likelihood of confusion on the part of the relevant public as regards the services at issue.
15 In that regard, it must be borne in mind that 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.
16 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).
17 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).
The relevant public
18 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
19 In the present case, the Board of Appeal found that vehicles, as the subject of ‘retail services in relation to vehicles’, were aimed at the general public as well as professionals, it being noted that those two categories of consumers had a high level of attention when purchasing vehicles, in particular on account of their price. Furthermore, as regards the vehicle batteries and accumulators which are the subject of ‘retail services relating to batteries’ and ‘retail services relating to accumulators’, the Board of Appeal stated that the attention of the relevant public was ‘enhanced’ when purchasing batteries and accumulators, since those goods were not purchased regularly, required a certain financial investment and technical know-how and, as parts of vehicles, had to be compatible with those vehicles.
20 In the first place, as regards ‘retail services in relation to vehicles’, the applicant does not dispute that the relevant public displays a high level of attention when purchasing new motorcars. However, according to the applicant, that public’s level of attention is average when purchasing second-hand motorcars, on the ground that the price of those motorcars may be relatively modest.
21 In that regard, it must be stated, as EUIPO correctly points out, that, although it is true that second-hand motorcars may be less expensive than new motorcars, that is not always the case. Moreover, motorcars, even second-hand ones, are goods which are not purchased regularly and which require a certain financial investment. Furthermore, in the light also of the importance of the reliability and safety of a motorcar, whether new or second hand, the relevant public will generally display a high level of attention when purchasing it, with the result that the applicant’s argument must be rejected.
22 In the second place, as regards the level of attention of the relevant public with regard to ‘retail services relating to batteries’ and ‘retail services relating to accumulators’, the applicant submits that that level of attention is average since batteries and accumulators are basic goods the price of which is not high and which do not pose any particular problem as regards compatibility.
23 In that regard, it must be stated, first, that the applicant does not dispute the Board of Appeal’s finding that batteries and accumulators are not purchased regularly and require a certain technical know-how.
24 Secondly, the applicant’s claim that the price of, inter alia, vehicle batteries is not high must be rejected as unsubstantiated. On the contrary, it is well known that the price of batteries, in particular for hybrid and electric vehicles, is considerable.
25 Thirdly, the applicant has also not demonstrated that, contrary to what the Board of Appeal observed, batteries and accumulators do not pose any particular problem as regards compatibility with the vehicles of which they are a part.
26 As regards batteries, it must be pointed out that, even though most motorcar batteries are standardised at a voltage of 12 volts, it is not disputed that 24 volt batteries are also used for certain types of vehicles, inter alia for heavy goods vehicles. Furthermore, it must be stated, as observed by EUIPO and as the applicant itself acknowledged at the hearing, that the batteries used in hybrid and electric vehicles, on the one hand, and in diesel or petrol vehicles, on the other hand, are different in nature and are not interchangeable. It follows that the relevant public will pay particular attention when purchasing batteries for vehicles, in order to ensure that they are compatible with each other.
27 As regards accumulators, it must be noted that, at the hearing, the applicant confined itself to claiming, in essence, that its argument that motorcar batteries do not pose a particular problem as regards compatibility on account of their standardisation also applies, mutatis mutandis, with regard to accumulators. However, that claim is not in any way substantiated.
28 In the third place, contrary to what the applicant submits, it cannot be deduced from the judgment of 30 January 2019, Bekat v EUIPO – Borbet (ARBET) (T‑79/18, not published, EU:T:2019:39), that the relevant public as regards the services at issue displays an average level of attention. In that judgment, the Court held that the Board of Appeal had been right in finding that the end consumers of ‘alloy wheels’ displayed an average level of attention when purchasing those goods. However, as EUIPO maintains, the abovementioned goods were more of an aesthetic nature, whereas, in the present case, the relevant public will also pay particular attention to the safety and reliability of the goods which are the subject of the services at issue. Consequently, that argument on the part of the applicant must be rejected.
29 In the fourth place, as regards the decisions of the Opposition Division of EUIPO to which the applicant refers, it is sufficient to state that, in principle, neither the Boards of Appeal nor the Court is bound by EUIPO’s decision-making practice (see, to that effect, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 52 and the case-law cited).
30 Likewise, as regards the decision of the Ufficio italiano brevetti e marchi (Patent and Trade Mark Office, Italy) to which the applicant also refers, it must be pointed out that the decisions of national courts and national offices regarding conflicts between marks at national level do not have any binding effect on EUIPO or on the Court, since the EU trade mark regime is an autonomous system and the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001 (see, to that effect, judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
31 Consequently, the applicant’s arguments as regards the relevant public’s level of attention must be rejected.
The comparison of the services
32 In the present case, the Board of Appeal found that the ‘retail services in relation to vehicles’ covered by the mark applied for were identical to the services of ‘retailing … relating to motor vehicles’ covered by the earlier mark, since the latter were included in the more general category covered by the former. According to the Board of Appeal, the same applied to the ‘retail services relating to batteries’ and ‘retail services relating to accumulators’ covered by the mark applied for, which were included in the broader category corresponding to the services of ‘retailing … relating to … motor vehicle parts’ covered by the earlier mark.
33 The applicant does not dispute that assessment.
The comparison of the signs
34 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).
The visual comparison
35 In the present case, the Board of Appeal found that the signs at issue were visually similar to a low degree. In particular, it pointed out, first of all, that the mere presence of the same letters in those signs was not sufficient to conclude that there was an average degree of visual similarity. Next, it stated that those signs coincided only in their middle letter, namely ‘t’, and that, as the letter ‘x’ was to be found in the opposite position in those signs, their overall visual impact on the relevant public was not the same. The Board of Appeal observed that, of the three letters used in the signs at issue, the letter ‘x’ was that which would attract the relevant public’s attention the most, because it was one of the less used letters in the relevant languages and its presence at the beginning of a sign, such as the mark applied for, was unusual and ‘striking’, owing to its bulky, square shape.
36 The applicant submits that there is at least an average degree of visual similarity between the signs at issue.
37 EUIPO disputes the applicant’s arguments.
38 First, it must be noted that the signs at issue differ in their first and last letters, as they are positioned. The first letter in the earlier mark is ‘g’, whereas the first letter in the mark applied for is ‘x’. The last letter in the earlier mark is ‘x’, whereas the last letter in the mark applied for is ‘g’.
39 Secondly, according to the case-law, the relevant public is likely to perceive the differences between the signs at issue more clearly when those signs are short, as in the present case (see, to that effect, judgment of 4 May 2018, El Corte Inglés v EUIPO – WE Brand (EW), T‑241/16, not published, EU:T:2018:255, paragraph 35 and the case-law cited). Consequently, the differences between the signs at issue which have been referred to in paragraph 38 above will be perceived clearly by the relevant public.
40 Thirdly, still according to the case-law, the consumer generally pays greater attention to the beginning of a sign than to the end (see, to that effect, judgment of 20 September 2019, Sixsigma Networks Mexico v EUIPO – Dokkio (DOKKIO), T‑67/19, not published, EU:T:2019:648, paragraph 48 and the case-law cited). In the present case, the signs at issue differ specifically in their beginnings, as has been stated in paragraph 38 above.
41 Fourthly, the fact, put forward by the applicant, that the signs at issue consist of the same letters or that they are words each of which constitutes the other when reversed is not decisive. Since the alphabet is made up of a limited number of letters, which are not, moreover, all used with the same frequency, it is inevitable that a number of words will consist of the same number of letters and even have some of them in common, but they cannot, for that reason alone, be regarded as visually similar (see judgment of 28 April 2021, Nosio v EUIPO – Tros del Beto (ACCUSÌ), T‑300/20, not published, EU:T:2021:223, paragraph 42 and the case-law cited). Furthermore, in the judgment of 4 May 2018, EW (T‑241/16, not published, EU:T:2018:255), the Court found that the figurative sign EW and the word mark WE were visually similar to a low degree, in spite of the fact that they consisted of the same two letters and that they were words each of which constituted the other when reversed. In that context, the Court pointed out that the mere presence of the same two letters in those signs was not sufficient to conclude that there was an average degree of visual similarity (see, to that effect, judgment of 4 May 2018, EW, T‑241/16, not published, EU:T:2018:255, paragraphs 34 and 36).
42 Fifthly, in the light of the foregoing considerations, the fact, raised by the applicant, that neither of the two signs at issue features additional letters or signs or distinctive logos or a graphical representation, gap or punctuation mark does not mean that the degree of visual similarity between those signs must be classified as average.
43 Consequently, the applicant’s arguments as regards the visual comparison of the signs at issue must be rejected.
The phonetic comparison
44 In the present case, the Board of Appeal found that the signs at issue were phonetically similar to a low degree. In particular, it pointed out that, as neither of the two signs contained any vowels, they had to be pronounced as a sequence of single letters, a continuous pronunciation not being possible. Furthermore, it found that the signs coincided only in their middle letter ‘t’ and differed in their first and third letters.
45 The applicant submits that there is at least an average degree of phonetic similarity between the signs at issue.
46 EUIPO disputes the applicant’s arguments.
47 First, it must be pointed out that the signs at issue are pronounced letter by letter as three syllables. It follows that, phonetically, those signs differ in their first and last syllables and coincide in only one of the three syllables of which they consist, namely that associated with the letter ‘t’, which is pronounced in the middle.
48 Secondly, the fact that the signs at issue can be broken down into the same number of syllables is not decisive. A large proportion of abbreviations or acronyms consisting of three letters are pronounced letter by letter as three syllables, even where there are very marked phonetic differences between them.
49 Thirdly, contrary to what the applicant claims, the fact that the signs at issue consist of the same consonants in reverse order is not decisive. It must be observed, as stated by EUIPO, that the particular order of the letters in the signs is of crucial importance in determining the sound that those signs produce. The presence of the same letters in reverse order does not necessarily create a significant phonetic similarity. Thus, as EUIPO maintains, there are significant phonetic differences between pairs of words such as ‘decaf’ and ‘faced’ or ‘live’ and ‘evil’, even though they consist of the same letters in reverse order.
50 Fourthly, it is necessary to reject the applicant’s argument that the letter ‘t’ is the letter in the signs at issue which is most likely to be remembered because it is an occlusive consonant. The applicant’s claim is not based on any evidence which is capable of showing that the sound associated with that letter dominates the pronunciation of the signs at issue.
51 Fifthly, the applicant’s argument that the relevant public could think that the mark applied for is ‘a different language version’ of the earlier mark, also cannot succeed. Contrary to what the applicant claims, even though part of the relevant public might know that, for example, the acronyms ‘NATO’ and ‘OTAN’ refer to the same international organisation in different languages, there is nothing to indicate that such a consideration is relevant with regard to the marks used in the automobile sector.
52 Consequently, the applicant’s arguments as regards the phonetic comparison of the signs at issue must be rejected.
The conceptual comparison
53 In the present case, the Board of Appeal found that the ‘vast majority’ of the relevant public would associate the group of letters ‘gt’ in the earlier mark with grand touring vehicles or parts for that type of vehicle, with the result that the signs at issue were conceptually different. As regards the remaining consumers, it found, in essence, that neither of the two signs at issue had any meaning in any of the relevant languages and that, consequently, it was not possible to carry out a conceptual comparison between those signs.
54 The applicant submits, in essence, that neither of the two signs at issue has a concept and that, even though part of the relevant public might understand the meaning of the group of letters ‘gt’ in connection with the automobile sector, the earlier mark will be read as a unitary acronym.
55 EUIPO disputes the applicant’s arguments.
56 First, as regards the mark applied for, it is common ground that it has no meaning.
57 Secondly, as regards the earlier mark, it must be pointed out, as stated by the Board of Appeal, a statement which is not disputed by the applicant, that the group of letters ‘gt’ is an abbreviation which is commonly used in the automobile sector to refer to the words ‘gran turismo’, ‘grand tourisme’ or ‘grand tourer’, and that it has been used by many car manufacturers. It follows that the Board of Appeal was right in finding that a significant part of the relevant public would associate the group of letters ‘gt’ in the earlier mark with grand touring vehicles or parts for that type of vehicle (see, to that effect, judgments of 21 March 2012, Volkswagen v OHIM – Suzuki Motor (SWIFT GTi), T‑63/09, not published, EU:T:2012:137, paragraph 51, and of 25 November 2015, bd breyton-design v OHIM (RACE GTP), T‑520/14, not published, EU:T:2015:884, paragraph 29), and that therefore, for that part of the relevant public, the signs at issue were conceptually different.
58 Furthermore, it is common ground that, for the part of the relevant public which does not associate the group of letters ‘gt’ with grand touring vehicles or parts for that type of vehicle, the earlier mark has no meaning and it is not therefore possible to carry out a conceptual comparison between the signs at issue.
59 Consequently, the applicant’s arguments as regards the conceptual comparison of the signs at issue must be rejected.
The distinctive character of the earlier mark
60 In the present case, the Board of Appeal found that the distinctiveness of the earlier mark was normal.
61 The applicant submits, in essence, that the earlier mark has a normal, or even high, degree of distinctiveness, because of the ‘super famous’ sign GTI. In that regard, it relies on a decision of the Tribunale di Milano (District Court, Milan, Italy) of 31 March 2010, according to which, because of the continuous use of the sign GTI since the middle of the seventies, that sign has acquired enhanced distinctiveness as regards vehicles.
62 However, without it being necessary to rule on the admissibility of the extract from the decision referred to in paragraph 61 above which the applicant produced at the hearing, it is sufficient to state that, even if the sign GTI has acquired enhanced distinctiveness as regards the services concerned because of its use, there is nothing to indicate that the same conclusion must be drawn as regards the distinctiveness of the earlier mark.
63 Furthermore, at the hearing, the applicant submitted, for the first time, that the earlier mark was part of a family of marks that, taken together, have a high degree of distinctiveness. However, it is clear from Article 84(1) of the Rules of Procedure of the General Court that no new plea in law or argument may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure or amplifies a plea put forward previously, whether directly or by implication, in the original application and which is closely connected therewith (see, to that effect, judgment of 12 May 2021, Alba Aguilera and Others v EEAS, T‑119/17 RENV, EU:T:2021:254, paragraph 121 and the case-law cited). When questioned in that regard at the hearing, the applicant did not claim that that argument was based on matters of law or of fact which had come to light in the course of the procedure or that it amplified a plea which had been put forward previously, whether directly or by implication, in the original application. That argument must therefore be rejected as inadmissible.
The likelihood of confusion
64 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).
65 In the present case, the Board of Appeal concluded that there was no likelihood of confusion, in the light, in essence, of the fact that the level of attention of the relevant public as regards the services at issue was high, that the visual and phonetic similarity between the signs at issue was low, that the ‘vast majority’ of the relevant public was in a position to differentiate between those signs conceptually and that those signs were short and constituted abbreviations or acronyms.
66 The applicant submits that there is a likelihood of confusion, given that, in essence, the level of attention of the relevant public is either normal or high as regards the services at issue, the services concerned are identical, the signs at issue are similar to an average degree and the earlier mark has a normal, or even high, degree of distinctiveness.
67 EUIPO disputes the applicant’s arguments.
68 First, it must be borne in mind that the services concerned are identical, that the signs at issue are visually and phonetically similar to a low degree and are conceptually different for a significant part of the relevant public, and that, for another part of the relevant public, a conceptual comparison is not possible.
69 Secondly, since the signs at issue are short, the relevant public, which displays a high level of attention, will be able to notice clearly the differences between them. Furthermore, it must be stated that, in the motor vehicle sector, marks consisting of abbreviations or acronyms are widespread, with the result that the relevant public is generally used to paying particular attention to the differences between such abbreviations or acronyms.
70 Thirdly, for the reasons set out in paragraphs 23 to 27 above, it is necessary to reject the applicant’s argument that there is a likelihood of confusion as regards ‘retail services relating to batteries’ and ‘retail services relating to accumulators’ because the relevant public purchases batteries and accumulators ‘without thinking too much [about] the costs[,] because they are [i]nexpensive’ and ‘without paying too much attention to the trademarks’.
71 Consequently, the Board of Appeal was right in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
72 In view of all of the foregoing considerations, the action must be dismissed in its entirety.
Costs
73 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
74 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Volkswagen AG to pay the costs.
Delivered in open court in Luxembourg on 26 April 2023.
E. Coulon | | M. van der Woude |