JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
8 May 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark gamindo – Earlier EU word mark gamigo – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 – Article 41(2)(c) of the Charter of Fundamental Rights)
In Case T‑91/23,
Ofree Srl, established in Treviso (Italy), represented by L. Sergi, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno and T. Klee, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
gamigo AG, established in Hamburg (Germany), represented by P. Lange, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg and E. Tichy-Fisslberger (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, Ofree Srl, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 January 2023 (Case R 632/2022-2) (‘the contested decision’).
Background to the dispute
2 On 9 August 2019, 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 covers goods and services in Classes 9, 35 and 36 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
– Class 9: ‘Software; computer gaming software; computer game software, downloadable; electronic game software for mobile phones; electronic game software for wireless devices; electronic game software for handheld electronic devices; downloadable software applications; downloadable application software for smart phones; downloadable applications for use with mobile devices’;
– Class 35: ‘Promotional marketing; internet marketing; marketing; publicity services; publicity and sales promotion services; provision of advertising space on electronic media; business consultancy services relating to the promotion of fund raising campaigns; business consultancy services relating to management of fund raising campaigns’;
– Class 36: ‘Charitable fund raising; arranging charitable collections (for others); arranging charitable fundraising activities; electronic funds transfer’.
4 On 20 November 2019, the intervener, gamigo AG, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on the earlier EU word mark gamigo, which covers, inter alia, services in Class 41 corresponding to, inter alia, the following description: ‘Internet provider services relating to the providing and offering of games, including computer games’.
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 Following a request made by the applicant, EUIPO invited the intervener to furnish proof of genuine use of the earlier mark that had been relied on in support of the opposition. The intervener complied with that request within the time limit set.
8 On 21 February 2022, the Opposition Division partially upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 in respect of all the goods in Class 9 covered by the mark applied for, on the ground that there was a likelihood of confusion. It rejected the opposition in respect of the services covered by the mark applied for.
9 On 14 April 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it had upheld the opposition.
10 By the contested decision, the Board of Appeal dismissed the appeal. In particular, it found, in essence, first of all, that the goods and services concerned were at least similar to a low degree and were aimed at the general public in the European Union with an average level of attention. It focussed on the Italian-speaking public. Next, it observed that, for that part of the relevant public, first, the signs at issue were visually and phonetically similar to an average degree and, secondly, a conceptual comparison of those signs was not possible. Lastly, in the light of those findings and also of the finding that the distinctiveness of the earlier mark was normal, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs incurred in the present proceedings and in the proceedings before the Board of Appeal.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs of the proceedings, including the intervener’s costs.
Law
14 The applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 94(1) of Regulation 2017/1001, Article 41(2)(c) of the Charter of Fundamental Rights of the European Union and the second paragraph of Article 296 TFEU.
The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
15 The applicant disputes, in essence, the Board of Appeal’s findings regarding, first, the relevant public, secondly, the comparison of the goods and services concerned, thirdly, the comparison of the signs at issue and, fourthly, the global assessment of the likelihood of confusion.
16 EUIPO and the intervener dispute the applicant’s arguments. They support the Board of Appeal’s findings in the contested decision regarding those matters.
17 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.
18 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).
19 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
20 In the present case, the Board of Appeal found, in paragraphs 22 and 26 of the contested decision, that, first, in the light of the fact that the earlier mark was an EU trade mark, the relevant territory with regard to the assessment of the likelihood of confusion was that of the European Union and, secondly, the relevant public consisted of the general public. Like the Opposition Division, it also found, in paragraph 24 of the contested decision, that the assessment of the likelihood of confusion should be based on the perception of the Italian-speaking public.
21 Those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.
22 Furthermore, the Board of Appeal concluded, in paragraph 26 of the contested decision, that the relevant public’s level of attention was average.
23 The applicant disputes that finding. It submits that the Board of Appeal should have found that the general public displays a particularly high level of attention since the goods and services concerned are technological in nature. The applicant argues that the average consumer wishes and needs those goods or services to be compatible with existing components or devices. In addition, it contends that the Court confirmed in its judgment of 8 September 2011, MIP Metro v OHIM – Metronia (METRONIA) (T‑525/09, not published, EU:T:2011:437, paragraph 47), that gaming services are relatively expensive, with the result that they are acquired after reflection and after comparing various offers.
24 EUIPO and the intervener dispute the applicant’s arguments.
25 As regards the definition of the relevant public’s level of attention, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the goods or services in question, who is deemed to be 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 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).
26 As regards the average consumer’s level of attention with regard to the goods and services concerned, contrary to what the applicant claims, the Court holds that, although the purchase price of some goods and services in Classes 9 and 41 may be relatively high and those goods and services may be subject to a period of use spanning several years, the majority of them are electronic goods and services aimed at the general public, which, nowadays, are used on a daily basis by the end consumer, are relatively inexpensive, have a relatively short lifespan and do not require any particular technical knowledge (see, to that effect and by analogy, judgment of 5 December 2017, Xiaomi v EUIPO – Apple (MI PAD), T‑893/16, not published, EU:T:2017:868, paragraph 25). For that reason, the present case differs from the case relied on by the applicant which gave rise to the judgment of 8 September 2011, METRONIA (T‑525/09, not published, EU:T:2011:437).
27 It is true that the average consumer’s level of attention varies from average to high, depending on the complexity and the price of the goods and services concerned. However, it is apparent from the case-law that, as regards the assessment of the likelihood of confusion, the public with the lowest level of attention must be taken into consideration (see, to that effect, judgments of 23 October 2017, Tetra Pharm (1997) v EUIPO – Sebapharma (SeboCalm), T‑441/16, not published, EU:T:2017:747, paragraph 32 and the case-law cited, and of 10 October 2019, Kalypso Media Group v EUIPO – Wizards of the Coast (DUNGEONS), T‑700/18, not published, EU:T:2019:739, paragraph 34 and the case-law cited).
28 Consequently, the Board of Appeal was right in finding that the level of attention of the relevant public is average.
The comparison of the goods and services
29 In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods or services concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
30 Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
31 The applicant claims that the Board of Appeal contradicted itself, because it initially found that the goods and services concerned were in part at least similar to a low degree and partially dissimilar and subsequently concluded that those goods and services were at least similar to a low degree. It also submits that the Board of Appeal does not in the contested decision specify the goods and services concerned which are to be considered to be, first, at least similar to a low degree and, secondly, partially dissimilar.
32 EUIPO and the intervener dispute the applicant’s arguments.
33 In the present case, to begin with, the Board of Appeal, first, defined in paragraph 13 of the contested decision the scope of the proceedings as concerning only the goods in Class 9 covered by the mark applied for, and, secondly, stated in paragraph 14 of the contested decision that genuine use had been proved only in respect of some of the services in Class 41 covered by the earlier mark, namely ‘internet provider services relating to the providing and offering of games, including computer games’.
34 Next, in paragraph 20 of the contested decision, the Board of Appeal upheld the Opposition Division’s findings. The Opposition Division had found, first, that the goods in Class 9 covered by the mark applied for were at least similar to a low degree to the services in Class 41 covered by the earlier mark because computer games were often distributed to consumers on online platforms which could be accessed through software applications on tablets or computers. Consequently, there was, according to the Opposition Division, a complementary relationship between the goods and services concerned. Secondly, it found that the services in Classes 35 and 36 covered by the mark applied for were dissimilar to the services in Class 41 covered by the earlier mark.
35 In so far as the applicant claims that the Board of Appeal contradicted itself as regards the comparison of the goods and services concerned, it must be stated, as observed by EUIPO and the intervener, that the applicant is misreading the contested decision.
36 In paragraph 20 of the contested decision, the Board of Appeal found, in essence, that the goods in Class 9 covered by the mark applied for were at least similar to a low degree to the services in Class 41 covered by the earlier mark and it subsequently reiterated that finding in paragraphs 26 and 43 of the contested decision. The finding that the services in Classes 35 and 36 covered by the mark applied for were dissimilar to the services in Class 41 covered by the earlier mark, is merely an obiter dictum and is not considered to be relevant with regard to the outcome of the proceedings in the light of the definition of the scope of those proceedings in paragraphs 13 and 14 of the contested decision.
37 The Board of Appeal did not therefore contradict itself by reiterating, in paragraphs 26 and 43 of the contested decision, the finding that the goods in Class 9 covered by the mark applied for were at least similar to a low degree to the services in Class 41 covered by the earlier mark.
38 Furthermore, as was found by the Opposition Division and confirmed by the Board of Appeal, the goods concerned in Class 9 covered by the mark applied for are various types of software, some of which are necessary in order to have access to computer games and video games. Computer games can be distributed to consumers by means of software installed on mobile phones and smartphones. The ‘internet provider services relating to the providing and offering of games, including computer games’ in Class 41 covered by the earlier mark are therefore complementary to the goods covered by the mark applied for because there is a close connection between them, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services.
39 Consequently, the Board of Appeal did not make any error of assessment in finding, in essence, that the goods in Class 9 covered by the mark applied for are at least similar to a low degree to the services in Class 41 covered by the earlier mark.
The comparison of the signs at issue
40 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).
41 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).
42 In the present case, it must be pointed out, first, that the earlier mark is a word mark consisting of a single element, namely ‘gamigo’. Secondly, the mark applied for is a figurative mark consisting of the word element ‘gamindo’ and a figurative element. The word element in that mark is written in black, in a large standard font. The figurative element in that mark is fanciful, as it resembles two superimposed leaves placed opposite each other, one of which is represented by two gradations of colours going from orange to yellow, and the other of which is represented by a gradation going from black to orange. The figurative element is large and is situated above the word element of the mark applied for.
43 Before examining the three aspects of similarity as regards the signs at issue, the Board of Appeal observed, first, in paragraphs 32 to 34 of the contested decision, that the assessment was based on the perception of the Italian-speaking public, which would not break the signs down and would not therefore recognise the word ‘game’ or ‘gaming’ followed by a sequence of other letters which made no sense. The Board of Appeal found that there was no evidence that ‘gam’ or ‘gami’ would be a commonly used abbreviation for the word ‘game’ or ‘gaming’. Furthermore, it stated that the relevant public would normally perceive the mark as a whole and would not proceed to analyse its various details and that there would not therefore be any reason to dissect the word element of the signs at issue. In paragraph 35 of the contested decision, it found, secondly, that the figurative element of the mark applied for was a distinctive element. Thirdly, the Board of Appeal also observed, in paragraph 36 of the contested decision, that the mark applied for did not contain any element that could be considered more dominant than the others.
44 In the first place, the applicant submits that the component ‘gami’ in the signs at issue is weakly distinctive. In that regard, first, it complains that the Board of Appeal excluded the specific context of game software, since the goods in Class 9 covered by the mark applied for include, in particular, software for games, which are specific computer programs. Secondly, it cannot, according to the applicant, be ruled out that the component ‘gami’ may suggest, on the one hand, the term ‘game’ and, on the other hand, the term ‘gaming’. It submits, on the one hand, that game software is constructed primarily with English as the main language and, on the other hand, that the word ‘game’, which designates computer games and computer game programs, is a basic English word which appears in numerous dictionaries of languages spoken in the European Union. According to the applicant, users of game software will break down the word elements and will associate them with the word ‘game’, the meaning of which they are familiar with, since the component ‘gami’ is placed at the beginning of the word elements, with the result that it is clearly visible. It adds that the same considerations apply to the word ‘gaming’, which means either the practice and the action of engaging in gaming or entertainment, or the video games themselves. Furthermore, the applicant also submits that, given that the component ‘gami’ is followed by the letter ‘n’ in the mark applied for as it is in the word ‘gaming’, it seems unlikely that the relevant public will not be led to think of the word ‘gaming’. Thirdly, the applicant contends that the intervener itself argued before the Board of Appeal during other opposition proceedings that the prefix ‘gami’ was intended to evoke the concept of ‘game’.
45 In the second place, the applicant criticises the Board of Appeal for not finding that the figurative element was as important as the word element when comparing the signs at issue, in spite of its conclusion that the sign applied for contained no element that could be considered more dominant than the others. The fact that no element is more dominant than the others means, according to the applicant, that the elements are ‘co-dominant’. It submits that, in the case of a composite mark, the figurative element may rank equally with the word element on account of its shape, size, colour or position, which is the case here.
46 EUIPO and the intervener dispute the applicant’s arguments.
47 EUIPO, supported by the intervener, submits that the Italian-speaking consumer of the goods and services at issue will not spontaneously and immediately dissect the letter combination ‘gami’ in the context of the word elements ‘gamindo’ in the mark applied for and ‘gamigo’ in the earlier mark, and will not associate it with the terms ‘game’ and ‘gaming’, in spite of the fact that the goods and services at issue are in some way related to game software or to internet services which are themselves related to games. It argues that, first, the words ‘game’ and ‘gaming’ are English words which are not in Italian dictionaries and that their equivalents in Italian are different. Secondly, it argues that the word elements of the mark applied for and of the earlier mark have no meaning of their own and are not likely to be associated with the terms ‘game’ and ‘gaming’ or evoke the meaning of those terms.
48 For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited).
49 As regards the component ‘gami’, which is common to the signs at issue, contrary to what EUIPO and the intervener claim, the Court points out that that component may refer to the terms ‘game’ and ‘gaming’. It must be borne in mind that, even though knowledge of a foreign language cannot in general be assumed, it is apparent from the case-law that many consumers in the European Union know basic English vocabulary (see, to that effect, judgment of 23 September 2020, Osório & Gonçalves v EUIPO – Miguel Torres (in.fi.ni.tu.de), T‑601/19, not published, EU:T:2020:422, paragraph 119 and the case-law cited). Since the word ‘game’ is a common English word (see, to that effect, judgment of 19 May 2010, Ravensburger v OHIM – Educa Borras (EDUCA Memory game), T‑243/08, not published, EU:T:2010:210, paragraph 38), it must be held that it is understood by a large part of even the non-English-speaking general public, which has a sufficient knowledge of English (see judgment of 16 March 2017, Sociedad agraria de transformación No 9982 Montecitrus v EUIPO – Spanish Oranges (MOUNTAIN CITRUS SPAIN), T‑495/15, not published, EU:T:2017:173, paragraph 53 and the case-law cited).
50 Having regard to the goods covered by the mark applied for and the services covered by the earlier mark, the Court holds that the public will perceive the component which is common to the signs at issue, namely ‘gami’, as describing the nature and characteristics of those goods and services. Some of the goods and services concerned, namely the computer gaming software, computer game software, downloadable, electronic game software for mobile phones, electronic game software for wireless devices and electronic game software for handheld electronic devices in Class 9 covered by the mark applied for and the ‘internet provider services relating to the providing and offering of games, including computer games’ in Class 41 covered by the earlier mark, are directly descriptive of the characteristics of computer games, whereas there are direct and specific links between the games sector and the other goods concerned, namely the software, downloadable software applications, downloadable application software for smart phones and downloadable applications for use with mobile devices in Class 9 covered by the mark applied for, since they are essential for the functioning of computer games (see, to that effect, judgment of 26 October 2022, Gameageventures v EUIPO (GAME TOURNAMENTS), T‑776/21, not published, EU:T:2022:673, paragraph 44). In those circumstances, that component could be regarded as descriptive with regard to those goods and services, contrary to what the Board of Appeal stated in paragraph 32 of the contested decision.
51 As regards the components ‘go’ in the earlier mark and ‘ndo’ in the mark applied for, the Court points out that they have no connection with the goods and services concerned and have no specific meaning with regard to them.
52 It must be borne in mind that the weak distinctive character of an element of a mark does not necessarily mean that that element will not be taken into consideration by the relevant public. Consequently, it cannot be ruled out that, in the perception of the relevant public, on account, in particular, of its position in the sign or its size, such an element holds a specific position in the overall impression conveyed by the mark concerned (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited). Likewise, despite its weak distinctive character, a descriptive element of a trade mark is likely to attract the attention of the relevant public on account of its length and its position at the beginning of that 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 26 and the case-law cited).
53 That is the case here as regards the component ‘gami’, which is common to the signs at issue, constitutes four of the six or seven letters in the earlier sign and the sign applied for respectively and will therefore contribute, to a not insignificant extent, to the overall impression created by those signs. That component in common is likely to attract the attention of the relevant public, in particular on account of its length and its position at the beginning of those signs.
54 Therefore, even if the component ‘gami’, which is common to the signs at issue, may refer to the terms ‘game’ and ‘gaming’ and has a weak distinctive character with regard to the goods and services concerned on account of its descriptiveness, it must be held, in the light of its length and its position at the beginning of the signs at issue, that the Board of Appeal did not make any error of assessment in finding, in essence, that that component is not negligible with regard to the assessment of the similarity of the signs at issue.
55 As regards the figurative element of the mark applied for, it must be borne in mind that, for the purposes of assessing whether one or more given components of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).
56 It is true that, as the applicant submits, in the case of a composite mark, the figurative element may rank equally with the word element (judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 37). However, it is also apparent from the case-law that the figurative elements of a figurative mark are not necessarily the dominant elements in that mark (judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 36), as the assessment with regard to which elements are dominant depends, in particular, on an assessment of the intrinsic qualities of each element in the sign by comparing them with those of the other elements in the same sign (judgment of 6 April 2022, Moio v EUIPO – Paul Hartmann (moio.care), T‑276/21, not published, EU:T:2022:221, paragraph 66).
57 In the present case, first, on account of the simple and not very elaborate representation of the figurative element in the mark applied for, that element is not capable of conveying a message which would enable the relevant public to memorise it easily. Furthermore, notwithstanding its position, that element is only slightly larger than the word element in that mark. Secondly, as is apparent from paragraph 42 above, the word element in the mark applied for is large and is clearly visible. Consequently, no part of the mark applied for can be considered to be negligible. The Board of Appeal was therefore right in finding that none of the elements in the mark applied for is more dominant than the others.
58 It is in the light of the foregoing considerations that it must be examined whether the visual, phonetic and conceptual comparison of the signs at issue carried out by the Board of Appeal is vitiated by any errors of assessment.
– The visual similarity
59 In paragraphs 37 and 38 of the contested decision, the Board of Appeal pointed out, in essence, that the word elements were almost the same length, that they had the sequence of letters ‘g’, ‘a’, ‘m’ and ‘i’ in common and that they also coincided in their last letter, ‘o’. It drew attention to the importance of the fact that the initial part of the signs would attract the consumer’s attention more, which would, consequently, reduce the effect of the differing letters ‘g’ in the earlier mark and ‘n’ and ‘d’ in the mark applied for. The Board of Appeal also found, in paragraph 35 of the contested decision, that the figurative element of the mark applied for was a fanciful distinctive element. However, it pointed out that the word element had a stronger impact on the consumer than the figurative element. Accordingly, it concluded that the signs at issue were visually similar to an average degree.
60 The applicant complains that the Board of Appeal did not attach at least the same importance to the figurative element of the mark applied for as to the word element and did not take the figurative element into account in the overall visual impression created by the signs at issue.
61 EUIPO and the intervener dispute the applicant’s arguments.
62 It must be stated out at the outset, as is apparent from paragraphs 2 and 5 above, that the earlier mark is a word mark, whereas the mark applied for is a composite mark consisting of a word element and of a figurative element.
63 First, it must be pointed out that, according to the case-law, where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have a significant number of letters in the same position in common and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different fonts, in italics or bold, in lower case or upper case, or in colour (see, to that effect, judgment of 9 September 2019, SLL Service v EUIPO – Elfa International (LUMIN8), T‑680/18, not published, EU:T:2019:565, paragraph 32 and the case-law cited).
64 In the present case, the Court notes that the signs at issue are almost the same length and have in common, on the one hand, the same sequence of letters placed in the same order, namely the letters ‘g’, ‘a’, ‘m’ and ‘i’, and, on the other hand, the same last letter, namely ‘o’. That partial identity reduces the effect of the differing letters, namely the letter ‘g’ in the earlier mark and the group of letters ‘nd’ in the mark applied for. That partial identity is liable to create a certain impression of visual similarity in the mind of the relevant public (see, to that effect, judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 92).
65 Secondly, as regards the figurative element of the sign applied for, it is indeed true that, on account of its size and position (see paragraph 57 above), the figurative element of the mark applied for is not negligible. However, where a trade mark consists of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name of the mark than by describing the figurative element of that mark (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
66 Accordingly, the Board of Appeal was right in finding, in paragraph 38 of the contested decision, that the signs at issue are visually similar to an average degree.
– The phonetic similarity
67 In paragraph 33 of the contested decision, the Board of Appeal pointed out, in essence, that the component ‘gam’ in the signs at issue would not be pronounced ‘gayme’ by the relevant Italian-speaking public as in the English words ‘game’ or ‘gaming’, but as ‘gam’. It found that the identity of the initial parts of the signs at issue, which attracted the consumer’s attention, reduced the effect of the differing letters, namely the letter ‘g’ in the earlier mark and the letters ‘n’ and ‘d’ in the mark applied for, from a phonetic standpoint. Furthermore, it found that the signs at issue coincided in their last sound, namely ‘o’. Consequently, the Board of Appeal concluded that the signs at issue were phonetically similar to an average degree.
68 The applicant submits that the signs at issue are phonetically different. It argues that the relevant public will pronounce the beginning of the word element of the mark applied for in the same way as it would pronounce the word ‘gaming’, namely as ‘gayming’, since the component ‘gami’ is followed by the letter ‘n’. The applicant contends that, since the component ‘gami’ in the signs at issue has a weak distinctive character, consumers will pay more attention to the final parts of the signs, which are phonetically different. Furthermore, the applicant submits that the Court held, in the judgment of 8 September 2011, METRONIA (T‑525/09, not published, EU:T:2011:437, paragraphs 38 to 47), that the visual impression is, in the case of video games, computer games and gaming, more relevant than the phonetic impression.
69 EUIPO and the intervener dispute the applicant’s arguments.
70 It must be borne in mind, contrary to what the applicant claims, that it is difficult to establish with certainty how the average consumer will pronounce a word from a foreign language in his or her own language (see judgment of 6 April 2022, Mandelay v EUIPO – Qx World (QUEST 9), T‑516/20, not published, EU:T:2022:227, paragraph 94 and the case-law cited).
71 Consequently, it is necessary to examine, as did the Board of Appeal, the signs at issue according to the rules of pronunciation of the Italian language.
72 In that regard, the Court points out, first, that the signs at issue consist of three syllables, the first syllable of which, namely ‘ga’, is identical. The signs are similar as regards the second and third syllables, namely ‘mi’ and ‘go’ with regard to the earlier mark and ‘min’ and ‘do’ with regard to the mark applied for. It is true that they differ in the sound of the consonants, namely ‘g’ with regard to the earlier mark and ‘n’ and ‘d’ with regard to the mark applied for. However, the length and the sound of the pronunciation of the signs at issue are similar.
73 Furthermore, as is apparent from paragraphs 53 and 54 above, and contrary to what the applicant submits, in spite of its weak distinctive character, the component in common, ‘gami’, is not negligible with regard to the assessment of the similarity of the signs at issue.
74 Moreover, in spite of the visual impression being of some importance in the computer games sector, the relevance of the phonetic similarity between the signs at issue must be pointed out, in the light, in particular, of the fact that the word elements will more readily be used to designate the marks than the figurative elements, since they are the only elements which are pronounced, internet searches are carried out primarily on the basis of the word elements alone and oral advertising is particularly important (see, to that effect, judgment of 25 May 2016, Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (ocean beach club ibiza), T‑5/15, not published, EU:T:2016:311, paragraph 59).
75 Consequently, the Board of Appeal was right in finding, in paragraph 38 of the contested decision, that the signs at issue are phonetically similar to an average degree.
– The conceptual similarity
76 In paragraph 39 of the contested decision, the Board of Appeal found that neither of the signs at issue had a meaning for the relevant public. It concluded that a conceptual comparison was not therefore possible.
77 In that regard, it must be borne in mind that, even though the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, that does not prevent that consumer, when faced with a word sign, even within a composite mark, from breaking it down into word elements which, for him or her, suggest a specific meaning or resemble words known to him or her (see judgment of 23 April 2015, Iglotex v OHIM – Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 84 and the case-law cited). Consequently, the word component ‘gami’, which is common to the signs at issue, will be perceived by that public as a neologism referring to the field of computer games (see paragraph 49 above), with the result that there is, on account of the presence of that component, at least a low degree of conceptual similarity.
78 Accordingly, there is at least a low degree of conceptual similarity between the signs at issue.
The likelihood of confusion
79 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).
80 Those factors also include the distinctiveness of the earlier trade mark, which determines the extent of its protection. The Court of Justice has already stated that the more distinctive the earlier mark, the greater will be the likelihood of confusion. However, the fact that a trade mark has a weak distinctive character does not exclude a likelihood of confusion, in particular where the signs and the goods or services covered are similar (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraphs 42 and 44).
81 It must also be pointed out that, although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70).
82 Furthermore, the consumer only rarely has a chance to compare the various marks directly and must therefore rely on his or her imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
83 In the present case, the Board of Appeal found, in paragraphs 43 to 46 of the contested decision, that the goods and services at issue were at least similar to a low degree, that the signs at issue were visually and phonetically similar to an average degree, that, from a conceptual standpoint, the signs were neutral for the Italian-speaking public and that the distinctiveness of the earlier mark had to be regarded as normal. The Board of Appeal concluded that there was a likelihood of confusion between the signs at issue.
84 The applicant claims, in essence, that there is no likelihood of confusion between the earlier mark and the mark applied for. It submits, to begin with, that the Board of Appeal should have recognised the low degree of distinctiveness of the component ‘gami’ and that the average consumer would therefore pay more attention to the final parts of the signs at issue, namely ‘go’ and ‘ndo’, which are ‘morphologically’ and phonetically different. Next, as regards the visual comparison of the signs at issue, it argues that the Board of Appeal should have taken into consideration, first, the importance of the figurative element of the mark applied for, which is equal to that of the word element of that mark, and, secondly, the importance of the visual aspect in relation to marks designating video games and software for games. Lastly, the applicant submits that the average consumer’s level of attention is particularly high when purchasing technological goods and services.
85 EUIPO, supported by the intervener, disputes the applicant’s arguments.
86 To begin with, the Court takes the view that, since it is not negligible, on account of its length and its position at the beginning of the signs at issue (see paragraph 53 above), the component ‘gami’, which is common to those signs, contributes towards bringing them closer together from a visual, phonetic and conceptual point of view in spite of its descriptiveness with regard to the goods and services concerned (see paragraphs 48 to 51 above). As is apparent from the considerations set out above, the signs at issue are visually (see paragraphs 63 to 66 above) and phonetically (see paragraphs 70 to 75 above) similar to an average degree and are conceptually similar to at least to a low degree (see paragraphs 76 to 78 above).
87 Next, the Court points out, first, that the relevant public consists of the general public, which has an average level of attention (see paragraphs 25 to 28 above). Secondly, the goods and services at issue are at least similar to a low degree (see paragraphs 38 to 39 above).
88 Lastly, as regards the distinctive character of the earlier mark, it must be recognised, in the context of opposition proceedings, that the earlier mark has a minimum degree of inherent distinctiveness merely because it has been registered (judgment of 10 October 2019, DUNGEONS, T‑700/18, not published, EU:T:2019:739, paragraph 58).
89 In that regard, the Court states that the earlier mark is a word sign, the sole element of which consists of two components. Although the first component, ‘gami’, represents two thirds of the length of that sign and comes first in that sign, as has been pointed out in paragraph 53 above, it is nonetheless weakly distinctive with regard to the services in Class 41 covered by the earlier mark. As for the second component, ‘go’, although it has a significant distinctive position in relation to the word component ‘gami’, neither its length, which is shorter than that of the first component, nor its visual, phonetic and conceptual characteristics are capable of strengthening the distinctiveness of the earlier mark, taken as a whole, beyond the minimum level which it necessarily has by virtue of its registration.
90 Consequently, it is true that the Board of Appeal erred in finding, in paragraph 41 of the contested decision, that the distinctiveness of the earlier mark was normal. However, as has been pointed out in paragraph 81 above, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered.
91 Accordingly, and on account of the interdependence between the factors which must be taken into account in the global assessment of the likelihood of confusion, the Board of Appeal was right in finding, in paragraph 46 of the decision, that there was a likelihood of confusion, on the part of the Italian-speaking part of the relevant public, between the earlier mark and the mark applied for with regard to the goods in Class 9 covered by the mark applied for.
92 Consequently, the applicant’s first plea must be rejected as unfounded.
The second plea, alleging infringement of Article 94(1) of Regulation 2017/1001, Article 41(2)(c) of the Charter of Fundamental Rights and the second paragraph of Article 296 TFEU
93 The applicant claims that the Board of Appeal failed to comply with its obligation to state reasons. It submits, first, that the Board of Appeal did not provide the reasons why the signs at issue were found to be visually similar to an average degree. It adds that the Board of Appeal did not take the figurative element of the mark applied for into account in the global assessment of the likelihood of confusion. Secondly, the applicant submits that the Board of Appeal did not explain why there would be a likelihood of confusion, although the goods and services concerned are similar only to a low degree, the signs at issue are visually and phonetically similar only to an average degree, the relevant public’s level of attention is average and the earlier mark has an average degree of distinctiveness.
94 EUIPO and the intervener dispute the applicant’s arguments.
95 It must be borne in mind that Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU and Article 41(2)(c) of the Charter of Fundamental Rights, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: (i) to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and (ii) to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 186 (not published)).
96 In the present case, first, as is apparent from paragraph 59 above and from paragraphs 35, 37 and 38 of the contested decision, the Board of Appeal set out clearly and unequivocally the reasons why the signs at issue are visually similar to an average degree.
97 Secondly, as is apparent from paragraph 83 above, the Board of Appeal also clearly and unequivocally set out, in paragraphs 43 to 46 of the contested decision, the reasons which led it to find that there was a likelihood of confusion between the earlier mark and the mark applied for on the part of the relevant public.
98 The Board of Appeal therefore set out the legal considerations having decisive importance in the context of the contested decision. The statement of reasons set out by the Board of Appeal in the contested decision enabled the applicant to understand the reasons for that decision and to bring an action disputing its merits and then enabled the Court to exercise its power of review. It cannot therefore be held that there has been any infringement of the first sentence of Article 94(1) of Regulation 2017/1001, of Article 41(2)(c) of the Charter of Fundamental Rights and of Article 296 TFEU.
99 The present plea must therefore be rejected.
100 In view of all of the foregoing considerations, since none of the pleas relied on by the applicant in support of its claims is to be upheld, the action must be dismissed in its entirety.
Costs
101 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.
102 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Ofree Srl to bear its own costs and to pay those incurred by gamigo AG;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira | Öberg | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 8 May 2024.
V. Di Bucci | | S. Papasavvas |