JUDGMENT OF THE GENERAL COURT (Third Chamber)
5 June 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark COMMUTE WITH ENTERPRISE – Earlier EU word mark Qommute – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑500/23,
Enterprise Holdings, Inc., established in Saint-Louis, Missouri (United States), represented by M. Forde, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Qommute, established in Marseille (France), represented by S. Sioën-Gallina, lawyer,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, I. Nõmm (Rapporteur) and D. Kukovec, 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, Enterprise Holdings, Inc., seeks the annulment and the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 June 2023 (Case R 989/2022-5) (‘the contested decision’).
Background to the dispute
2 On 24 August 2018, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign COMMUTE WITH ENTERPRISE.
3 The mark applied for covered services in Class 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Application service provider services, namely, hosting an online platform and website for booking, facilitating, and managing carpooling, vanpooling and ridesharing, and vehicle rentals; Software-as-a-service services featuring software for booking, facilitating, and managing carpooling, vanpooling and ridesharing, and vehicle rentals; Providing temporary use of non-downloadable software for booking, facilitating, and managing carpooling, vanpooling and ridesharing, and vehicle rentals; Providing a website that enables users to find existing vanpools, carpools and rideshares; Provision of information, advisory and consultancy services in relation to the aforesaid services’.
4 On 19 December 2018, MYTECHTRIP SARL, the predecessor in law to the intervener, Qommute, 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 Qommute, filed on 27 March 2018 and registered on 3 October 2018 under number 17880364, covering, inter alia, services in Class 42 corresponding to the following description: ‘Development, design, rental and updating of computer software, in particular computer software for the real-time management of public transport networks, urban passenger transport, calculation of public transport routes, traffic information, namely buses, metros, trams, trains, boats; Computerised data storage services; Hosting and maintenance of computer software that communicates online via an interface relating to the real-time management of public transport networks, namely buses, metros, trams, trains, boats; Publication of computer software for the real-time management of public transport networks, for urban passenger transport, for calculating public transport routes, for traffic information, namely road traffic (buses, metros, trams), rail traffic and maritime traffic’.
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 29 March 2019, the transfer of the earlier mark to the intervener was communicated to EUIPO.
8 On 6 April 2022, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
9 On 6 June 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal dismissed the appeal, on the ground that there was a likelihood of confusion on the part of the relevant public, in view of the fact that, first, the services at issue were identical or highly similar, second, the signs at issue were visually and phonetically similar to at least an average degree, whereas it was impossible to carry out a conceptual comparison, third, the inherent distinctiveness of the earlier mark was average and, fourth, the level of attention of the relevant public varied between average and higher than average.
Forms of order sought
11 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– alter the contested decision to the effect that the opposition should be remitted to the Opposition Division for reconsideration;
– order EUIPO and the intervener jointly and severally to pay the costs incurred by the applicant in the present action and 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 an oral hearing is convened.
13 The intervener contends, in essence, that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by the intervener in the present action and before the Board of Appeal.
Law
14 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, breach of the principle of impartiality.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
15 In the context of the first plea, the applicant submits that the Board of Appeal erred in finding, first, that the services at issue were similar, second, that the signs at issue were similar, and, third, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
16 EUIPO and the intervener dispute the applicant’s arguments.
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).
20 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
21 The present plea in law must be examined in the light of those considerations.
The relevant public
22 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).
23 If the services covered by the marks at issue are aimed at the same relevant public, consisting of both the general public and professionals, the public with the lowest attention level must be taken into consideration (see, to that effect, judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 27 to 29 and the case-law cited).
24 In the present case, the Board of Appeal found that the services at issue were aimed at the general public and at the professional public with a level of attention which varied between average and higher than average.
25 Furthermore, it found that the protection of the earlier mark extended to the European Union. However, for reasons of procedural economy, it based the comparison of the signs on the perception of the non-English-speaking part of the European Union, and in particular on the perception of the French- and German-speaking public.
26 The applicant criticises the Board of Appeal for not basing its assessment on the English-speaking public, which would attribute a meaning to the mark applied for.
27 In that regard, as is apparent from the case-law referred to in paragraph 20 above, it is sufficient, in order for registration of an EU trade mark to be refused, that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union. Therefore, contrary to what the applicant claims, the Board of Appeal did not make an error of assessment in focusing its examination on the French- and German-speaking public, with the result that the applicant’s line of argument relating to the English-speaking public cannot be taken into consideration in the present action.
28 Consequently, there is no reason to call into question the Board of Appeal’s assessment as regards the relevant public and its level of attention.
The comparison of the services at issue
29 The Board of Appeal found that the services at issue were in part identical and in part similar to a high degree.
30 The applicant submits, in essence, that, first, the Board of Appeal’s assessment is contrary to Article 33(2) of Regulation 2017/1001, in that it was not in a position to determine the extent of protection of the earlier mark, given that the list of services covered by the earlier mark lacked clarity and precision. Second, the applicant criticises the Board of Appeal for having interpreted the words ‘in particular’ in the list of services designated by the earlier mark as indicating only examples. Consequently, that interpretation did not restrict the scope of the services included in that list and thus wrongly extended the scope of those services and the extent of protection afforded to the earlier mark. Third, the applicant submits that some of the services at issue can have only a low degree of similarity.
31 EUIPO and the intervener dispute the applicant’s line of argument.
32 First, as regards the alleged infringement of Article 33(2) of Regulation 2017/1001, it must be borne in mind that, according to the case-law, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (see judgment of 23 March 2022, Vetpharma Animal Health v EUIPO – Deltavit (DELTATIC), T‑146/21, not published, EU:T:2022:159, paragraph 21 and the case-law cited).
33 In the present case, it is apparent from the file that it was for the first time at the stage of the proceedings before the Court that the applicant claimed that the list of services covered by the earlier mark lacked clarity and precision within the meaning of Article 33(2) of Regulation 2017/1001. It is therefore a new argument that the applicant did not put forward before EUIPO and which the latter was not required to take into account of its own motion, since Article 95(1) of Regulation 2017/1001 restricts its examination to the facts, evidence and arguments provided by the parties (see, to that effect, judgment of 13 June 2019, MPM-Quality v EUIPO – Elton Hodinářská (MANUFACTURE PRIM 1949), T‑75/18, not published, EU:T:2019:413, paragraph 81). That argument is therefore inadmissible.
34 Second, as regards the interpretation of the words ‘in particular’ appearing in the list of services covered by the earlier mark, it should be noted that, according to the case-law, those words, used in a description of services, are merely indicative of an example. Furthermore, those words do not exclude any other service from the list, but merely indicate a category of services of particular interest to a party (see, to that effect, judgment of 18 October 2018, Next design+produktion v EUIPO – Nanu-Nana Joachim Hoepp (nuuna), T‑533/17, not published, EU:T:2018:698, paragraph 64 and the case-law cited).
35 Thus, in accordance with the case-law cited above, even though the intervener may, in the present case, have a particular interest in services connected with public transport, the category ‘development, design, rental and updating of computer software’ should not be regarded as being limited solely to those services. Consequently, the Board of Appeal cannot be criticised for extending the scope of the services covered by the earlier mark or, in itself, the extent of protection of the earlier mark.
36 Therefore, in paragraph 30 of the contested decision, the Board of Appeal was right to conclude that the services covered by the earlier mark and entitled ‘Development, design, rental and updating of computer software’ and those covered by the mark applied for and entitled ‘Software-as-a-service services featuring software for booking, facilitating, and managing carpooling, vanpooling and ridesharing, and vehicle rentals; providing temporary use of non-downloadable software for booking, facilitating, and managing carpooling, vanpooling and ridesharing, and vehicle rentals’ were identical. There is no reason to call into question that finding of the Board of Appeal in the light of the fact that the broader category of services covered by the earlier mark encompasses the services covered by the mark applied for, with the result that those services are in fact identical or must be regarded as such (see, to that effect, judgments of 17 February 2017, Construlink v EUIPO – Wit-Software (GATEWIT), T‑351/14, not published, EU:T:2017:101, paragraph 62 and the case-law cited, and of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 105 and the case-law cited).
37 Third, as regards the degree of similarity between the services covered by the earlier mark and entitled ‘Hosting and maintenance of computer software that communicates online via an interface relating to the real- time management of public transport networks, namely buses, metros, trams, trains, boats’ and those covered by the mark applied for and entitled ‘Application service provider services, namely, hosting an online platform and website for booking, facilitating, and managing carpooling, vanpooling and ridesharing, and vehicle rentals (including information, advisory and consultancy services)’, it is clear that the applicant does not put forward any argument in support of its complaint relating to the low degree of similarity between the services at issue. The applicant merely asserts that the Board of Appeal adopted a ‘broad brush’ approach without providing any further explanation.
38 In those circumstances, there is no reason to call into question the Board of Appeal’s assessment, which found not only that the abovementioned services at issue were similar, but also that there was a similarity between, on the one hand, the services covered by the earlier mark and entitled ‘Rental of computer software’ and ‘Computerised data storage services’ and, on the other hand, the services covered by the mark applied for and referred to in paragraph 37 above, which has not, moreover, been disputed by the applicant. Thus, the complaint in question must be rejected as unfounded.
39 In the light of the foregoing, it must be held that the applicant does not put forward any argument capable of calling into question the Board of Appeal’s assessment relating to the similarity of the services at issue.
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 In the present case, the Board of Appeal found that there was an average degree of visual and phonetic similarity and that it was impossible to carry out a conceptual comparison between the marks at issue.
42 The applicant claims, in essence, that the Board of Appeal did not examine the signs at issue as a whole and that it erred in finding that the word ‘commute’ was the most distinctive element of the mark applied for.
43 EUIPO and the intervener dispute the applicant’s line of argument.
44 In the present case, before dealing with the question of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the mark applied for.
– The distinctive and dominant elements of the mark applied for
45 As regards the mark applied for, the Board of Appeal found that the element ‘commute’ was the dominant and most distinctive element of that mark, which had an average degree of distinctiveness.
46 The applicant submits that, contrary to what is stated in the Board of Appeal’s assessment, the most distinctive element of the mark applied for is not the word ‘commute’, but that the mark is distinctive as a whole.
47 EUIPO and the intervener dispute the applicant’s line of argument.
48 According to the case-law, for the purposes of determining the distinctive character of an element making up 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, account should be taken, in particular, of the inherent characteristics 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 6 April 2022, Moio v EUIPO – Paul Hartmann (moio.care), T‑276/21, not published, EU:T:2022:221, paragraph 50 and the case-law cited).
49 Although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will break it down into word elements which, for him or her, suggest a specific meaning or which resemble words known to him or her (see judgment of 17 January 2024, Ona Investigación v EUIPO – Formdiet (BIOPÔLE), T‑61/23, not published, EU:T:2024:10, paragraph 36 and the case-law cited).
50 First, as regards the dominant element of the mark applied for, the Board of Appeal found that the element ‘commute’ was the dominant element of that mark. There is no reason to call into question that assessment, which appears to be consistent with the material in the case file and which, moreover, is not disputed by the applicant.
51 Second, the Board of Appeal rightly found that the word ‘commute’ was the most distinctive element of the mark applied for, in view of the fact that it had no meaning for the relevant French- or German-speaking public, given that it was an English word which did not form part of basic English vocabulary. By contrast, it found that the words ‘with’ and ‘enterprise’ formed part of basic English vocabulary and were therefore likely to be understood by the relevant public. In addition, the Board of Appeal stated that the word ‘enterprise’ would be understood by the relevant public as alluding to a company, project or undertaking, given the existence of the French word ‘entreprise’ and the fact that the word ‘die Entreprise’ was also used in German as a synonym for a project or a company.
52 It must be noted that the applicant does not put forward any specific argument running counter to the Board of Appeal’s assessment. In those circumstances, there is no reason to call into question that assessment, which is, moreover, correct, and it must be held that the word ‘commute’ constitutes the dominant and most distinctive element of the mark applied for.
– Visual similarity
53 The Board of Appeal found that there was at least an average degree of visual similarity between the signs at issue, in view of the fact that the beginnings of those signs were highly similar.
54 The applicant submits that the signs at issue are visually different because the relevant public will perceive a striking visual difference inherent in the first letter of the term ‘qommute’ as compared to the word ‘commute’.
55 EUIPO and the intervener dispute the applicant’s line of argument.
56 The Board of Appeal found that the signs at issue were similar to at least an average degree, given that they coincided in the sequence of the letters ‘o’, ‘m’, ‘m’, ‘u’, ‘t’ and ‘e’ and that the first letters ‘q’ and ‘c’, written in upper-case letters, were round in shape and also produced a visually comparable effect.
57 It must be borne in mind that, as regards a word mark, the protection which results from the registration of such a mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic aspects which that mark might have. Thus, it is irrelevant to compare the letters ‘q’ and ‘c’ in their upper-case form (see, to that effect, judgment of 25 November 2015, Soprema v OHIM – Sopro Bauchemie (SOPRAPUR), T‑763/14, not published, EU:T:2015:883, paragraph 56 and the case-law cited).
58 Furthermore, the Court has already held that the presence of the letter ‘c’ instead of the letter ‘q’ may make a slight difference in a sign (see, to that effect, judgment of 8 September 2010, 4care v OHIM – Laboratorios Diafarm (Acumed), T‑575/08, not published, EU:T:2010:359, paragraph 41). However, it must be stated that such a difference cannot constitute a striking difference and counteract the similarities between the signs at issue, the distinctive and dominant elements of which largely overlap. In the present case, given the presence of the additional elements ‘with’ and ‘enterprise’ in the mark applied for and the difference between the first letters of the signs at issue, those signs are visually similar only to an average degree.
– Phonetic similarity
59 The Board of Appeal found that the signs at issue were phonetically similar to at least an average degree, given that, first, the pronunciation of the beginnings of those signs was almost identical and, second, the element ‘with enterprise’ would probably not be pronounced by consumers.
60 The applicant submits that the signs at issue are phonetically different given that the mark applied for contains two additional words as compared to the earlier mark and that those words form part of the most distinctive element of that mark.
61 EUIPO and the intervener dispute the applicant’s line of argument.
62 As the Board of Appeal found, it must be held that the beginnings of the signs at issue are phonetically almost identical. Therefore, even if the relevant public pronounces the additional non-distinctive elements of the mark applied for, the signs at issue are nevertheless phonetically similar to an average degree, in view of the fact that the beginnings of those signs, which, moreover, constitute the dominant and most distinctive elements of those signs, overlap.
– Conceptual similarity
63 The Board of Appeal found that it was not possible to carry out a conceptual comparison between the signs at issue, given that those signs as a whole had no clear meaning for the relevant public.
64 Although the applicant does not expressly dispute the assessment of the conceptual similarity of the Board of Appeal as regards the French- and German-speaking public, it complains that the Board of Appeal attributed different meanings to the mark applied for in the other languages without considering that the mark applied for was expressed, as a whole, in English.
65 EUIPO and the intervener dispute the applicant’s line of argument.
66 As with the reasoning set out in paragraphs 24 to 28 above, it must be borne in mind that the Board of Appeal did not err in finding that the French- and German-speaking public constitutes the relevant public in the present case. Therefore, contrary to what the applicant claims, it is not necessary to take into account the perception of the English-speaking public.
67 Consequently, there is no reason to call into question the Board of Appeal’s assessment of the conceptual similarity as regards the French- and German-speaking public, which, moreover, is not disputed by the applicant.
The distinctive character of the earlier mark
68 In paragraph 58 of the contested decision, the Board of Appeal found that the earlier mark had a ‘normal’ distinctive character for the relevant public, which must be understood, according to the case-law, as corresponding to an average degree of distinctiveness (see, to that effect, judgment of 26 April 2023, Pinar Kuruyemiş Gida Ve Ihtiyaç Maddeleri Sanayi Ticaret v EUIPO – Yadex International (pinar KURUYEMIŞ), T‑147/22, not published, EU:T:2023:213, paragraph 82 and the case-law cited).
69 There is no reason to call into question that finding, which appears to be consistent with the material in the case file and which, moreover, is not disputed by the applicant.
The global assessment of the likelihood of confusion
70 The Board of Appeal found that there was a likelihood of confusion, in view of the fact that, first, the services at issue were identical or highly similar, second, the earlier mark was almost identical to the first part of the mark applied for, namely the dominant and most distinctive element of that mark, third, the inherent distinctiveness of the earlier mark was average and, fourth, the relevant public had a higher than average level of attention for some of the services at issue.
71 The applicant submits that, in the absence of similarity between the signs at issue, the likelihood of confusion should have been ruled out. Even if there is a low degree of similarity between those signs, that does not lead to the conclusion that there is a likelihood of confusion, in particular in view of the fact that the level of attention of the relevant public proved to be average or higher than average.
72 EUIPO and the intervener dispute the applicant’s line of argument.
73 As regards the applicant’s argument that a similarity between the signs at issue does not lead to the conclusion that there is a likelihood of confusion between those signs where the level of attention of the relevant public is average or higher than average, it must be borne in mind that, although the services covered by the two marks at issue are aimed at the same relevant public, consisting of both the general public and professionals, the public with the lowest attention level must be taken into consideration (see, to that effect, judgment of 20 May 2014, ARIS, T‑247/12, EU:T:2014:258, paragraphs 27 to 29 and the case-law cited).
74 In the present case, given that the services at issue are aimed at the general public and at the professional public with a level of attention varying between average and higher than average, the public with an average level of attention must be taken into consideration.
75 As with the reasoning set out in paragraphs 53 to 62 above, it must be borne in mind that the Board of Appeal correctly concluded that the signs at issue had an average degree of visual and phonetic similarity, and not a low degree of similarity as the applicant claims. Therefore, contrary to what the applicant submits, the fact that the relevant public has an average level of attention is not capable of offsetting the average degree of similarity between the signs at issue or, consequently, of avoiding the existence of a likelihood of confusion. That is all the more the case considering that, in the present case, the services at issue are identical or highly similar.
76 Therefore, the applicant has not put forward any argument capable of calling into question the Board of Appeal’s assessment that there is a likelihood of confusion within the meaning of Article 8(1) of Regulation 2017/1001.
77 In the light of the foregoing, the first plea in law must be rejected.
The second plea in law, alleging breach of the principle of impartiality
78 The applicant submits that the Board of Appeal was not impartial in its examination of the relative ground for refusal under Article 8(1)(b) of Regulation 2017/1001, since it based its decision entirely on an earlier decision, namely on the decision of 1 June 2023 in Case R 1015/2022-5, relating to the opposition proceedings between the applicant and the intervener.
79 EUIPO and the intervener dispute the applicant’s line of argument.
80 It should be borne in mind that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. However, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).
81 In the present case, it must be held that the signs in question in Cases R 1015/2022-5 and R 989/2022-5 before EUIPO were identical. Therefore, it is entirely logical that the Board of Appeal’s assessments concerning the similarity of those signs should be uniform.
82 It is true that the goods and services covered by the marks at issue are different, with the exception of the services in Class 42 covered by the earlier mark. In that regard, in the present case, the Board of Appeal compared the services and determined the relevant public by taking into account only the services covered by the marks at issue in the present case. Furthermore, an analysis of the two decisions of the Fifth Board of Appeal of EUIPO of 1 June 2023 in Cases R 1015/2022-5 and R 989/2022-5 shows that the parts dedicated to the assessment of the relevant public and the comparison of the goods and services do not overlap. However, it must be stated that, in both decisions, the Board of Appeal reached an almost identical conclusion as regards the relevant public and the similarity of the goods and services at issue. In particular, the Board of Appeal found in those decisions that, first, the relevant public included the general public and the professional public, whose level of attention varied between average and higher than average, and that, second, the goods and services at issue were in part identical and in part similar to an average degree or highly similar.
83 Consequently, the Board of Appeal did not err when it carried out an almost identical assessment in the two decisions in question as regards not only the similarity of the signs at issue, but also the global assessment of the likelihood of confusion.
84 Given that the Board of Appeal carried out a separate examination for the determination of the relevant public and for the comparison of the goods and services covered by the marks at issue, there is nothing in the file to establish that the Board of Appeal did not carry out a stringent and full examination of each individual case submitted to it or that it demonstrated any bias.
85 In that regard, without it being necessary to rule on the potential inadmissibility of the present plea in law, as raised by EUIPO, that plea must be rejected as unfounded.
86 In view of all of the foregoing considerations, since none of the pleas relied on by the applicant in support of the form of order which it seeks can be upheld, the action must be dismissed in its entirety.
Costs
87 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.
88 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 latter. In that regard, although the intervener has applied for the applicant to be ordered to pay the costs incurred by the intervener for the purposes of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, the operative part of that decision continues to govern the costs incurred in the appeal proceedings before EUIPO (see, to that effect, judgment of 14 July 2021, Cole Haan v EUIPO – Samsøe & Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 64 and the case-law cited). 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 (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Enterprise Holdings, Inc. to bear its own costs and to pay those incurred by Qommute;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Delivered in open court in Luxembourg on 5 June 2024.
V. Di Bucci | | M. van der Woude |