Provisional text
JUDGMENT OF THE GENERAL COURT (Third Chamber)
9 February 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative trade mark ZIRO — Earlier EU figurative mark zero — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑106/16,
zero Holding GmbH & Co. KG, established in Bremen (Germany), represented by M. Nentwig, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Vuijst and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Oliver Hemming, residing in Cadbury (United Kingdom),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 12 January 2016 (Case R 71/2015-5), relating to opposition proceedings between zero Holding and Mr Hemming,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 March 2016,
having regard to the response lodged at the Court Registry on 26 May 2016,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 30 October 2013, Mr Oliver Hemming filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in, inter alia, Classes 14 and 25 within the meaning of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments’;
– Class 25: ‘Clothing, footwear, headgear’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 24/2014 of 6 February 2014.
5 On 6 May 2014, the applicant, zero Holding GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier EU figurative mark reproduced below, covering, inter alia, goods in Classes 14 and 25 and corresponding, for each of those classes, to the following descriptions:
– Class 14: ‘Jewellery, including costume jewellery; clocks and watches, watchstraps’;
– Class 25: ‘Outerclothing, including knitted and woven clothing; footwear, headgear, belts (except belts made of common and precious metals and imitations thereof) (clothing), gloves (clothing), scarves, headscarves and neckerchiefs’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 19 December 2014, the Opposition Division rejected the opposition, finding that there was no likelihood of confusion between the marks at issue on the part of the relevant public.
9 On 7 January 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 12 January 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, first, it endorsed the Opposition Division’s assessment that the goods designated by the marks at issue were identical, with the exception, however, of the ‘precious metals and their alloys, not included in other classes’ in Class 14 and covered by the mark applied for, which were dissimilar to the goods covered by the earlier mark (paragraphs 7 to 9 of the contested decision). Second, the Board of Appeal found that the relevant public was the public at large, the level of attention of which, depending on the particular goods, varied from average (in relation to everyday consumer goods such as clothing) to above average (paragraph 10 of the contested decision). Third, it found that the sign applied for was composed of three stylised letters at the beginning followed by a figurative element, which appeared as a simplified representation of crosshairs, whereas the earlier sign was composed of the verbal element ‘zero’, with the letters ‘e’ and ‘r’ being stylised (paragraphs 12 and 13 of the contested decision). Fourth, the Board of Appeal found that the signs at issue were visually and phonetically dissimilar and that, having regard to the clear meaning of the earlier sign and the lack of meaning of the sign applied for, the relevant public was able to distinguish them conceptually (paragraphs 14 to 17 of the contested decision). Fifth, the Board of Appeal found that, given the lack of similarity between the signs at issue, there was no likelihood of confusion between the marks at issue (paragraph 18 of the contested decision) and also that, even if the signs were to be regarded as being similar to a low degree, no likelihood of confusion could arise. The visual aspect, it found, was of particular importance for the goods covered by the signs at issue. Given the clear and immediate visual differences between the signs at issue, their phonetic differences and their lack of conceptual similarity, there was, the Board of Appeal found, no likelihood of confusion between those signs, even for identical goods (paragraph 19 of the contested decision).
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on two pleas in law. The first alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and the second infringement of the second sentence of Article 75 of that regulation.
14 By its first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant claims that the Board of Appeal erred in finding that there was no likelihood of confusion between the marks at issue.
15 EUIPO disputes the applicant’s arguments and contends that the Board of Appeal was fully entitled to conclude that there was no likelihood of confusion between the marks at issue.
16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an 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 mark.
17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, 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).
18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
19 According to the case-law, 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).
20 In the present case, the Board of Appeal was fully entitled to find, in paragraph 10 of the contested decision, that the relevant public was the public at large, the level of attention of which, depending on the category of goods, varied from average to above average, an assessment which has, furthermore, not been called into question by the applicant. First, the goods covered by Class 25, inter alia, ‘clothing, footwear, headgear’, are everyday consumer goods (see, to that effect, judgment of 24 January 2012, El Corte Inglés v OHIM — Ruan (B), T‑593/10, not published, EU:T:2012:25, paragraph 20), for which the public consists of average consumers having an average level of attention. Second, with regard to goods such as those covered by Class 14, which are not bought regularly and are generally bought through a salesperson, the average consumer’s level of attention must be taken to be higher than usual, and therefore fairly high (see, to that effect, judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 63).
21 It must, moreover, be borne in mind that, under Article 8(1)(b) of Regulation No 207/2009, the existence of a likelihood of confusion must be assessed with regard to the public in the territory in which the earlier mark is protected. Since the earlier mark in the present case is an EU trade mark, the relevant public is the public throughout the European Union.
The comparison of the goods
22 According to settled case-law, in assessing the similarity of the goods or services at issue, all of 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 concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
23 In the present case, the Board of Appeal was fully entitled to find, in paragraphs 7 to 9 of the contested decision, that the goods designated by the marks at issue were identical, with the sole exception of the ‘precious metals and their alloys, not included in other classes’ in Class 14, covered by the mark applied for, an assessment which has, furthermore, not been called into question by the applicant. Those latter goods differ from all of the goods and services covered by the earlier mark.
The comparison of the signs
24 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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 of the signs
25 With regard to the visual comparison of the signs, the Board of Appeal found, in paragraphs 12 to 14 of the contested decision, that the first three letters of the sign applied for are stylised in a ‘particular graffiti-like scrawl’, giving them the appearance of being roughly painted. By contrast, the final figurative element is represented in cleanly defined, clear black lines, and appears to be a simplified representation of crosshairs. The earlier sign, the Board of Appeal found, is composed of the verbal element ‘zero’ in lower-case letters, with the letters ‘e’ and ‘r’ being ‘particularly stylised’. According to the Board of Appeal, the signs at issue are visually dissimilar. In the first place, the unusually simplified lower-case letter ‘r’ of the earlier sign is visually totally different from the stylised upper-case letter ‘R’ of the sign applied for. The representations are totally different from a visual point of view even though it is clear that the letter in each case is a representation of the letter ‘r’. In the second place, it cannot be said that the first element of the sign applied for would necessarily be seen as the letter ‘z’, since it resembles the number ‘2’. In the third place, the second letters of the verbal elements in each of the signs at issue, ‘i’ and ‘e’ respectively, are also visually different. In the fourth and last place, the final letter ‘o’ of the earlier sign has no visual counterpart in the sign applied for. The oval shape incorporating intersecting horizontal and vertical lines in the sign applied for presents a very different visual impression from the final letter ‘o’ of the earlier sign.
26 In the present case, while it is true that the earlier sign presents a certain stylisation of its verbal element ‘zero’, the fact remains that that verbal element, represented in lower-case letters, is easily recognisable. Aside from the stylisation of the letters of its verbal element in the same font, the earlier sign has no figurative element.
27 With regard to the sign applied for, that sign is composed of four elements, the first three of which are written in the same font. First of all, the second and third elements are clearly the letters ‘i’ and ‘r’ written in capital letters.
28 Next, as regards the first element, the Board of Appeal found, in paragraph 14 of the contested decision, that the assertion that that element would necessarily be seen as the letter ‘z’ could not be accepted, since it resembles the number ‘2’. It should be noted that that element does not combine a curved component above with an angular component underneath, which is characteristic of the number 2. It corresponds more to a zigzag, formed by two angular components, which is characteristic of the letter ‘z’. In addition, given that the first element is followed by two letters in the same font, the relevant public will normally expect the first element also to be a capital letter and not a number.
29 Last, the fourth and final element of the sign applied for does, admittedly, differ from the ordinary representation of the letter ‘o’, in so far as two lines, horizontal and vertical, intersect perpendicularly within a circle, which therefore gives the impression of crosshairs.
30 Nonetheless, the fact remains that the fourth and final element of the sign applied for is placed in a position where the relevant public will naturally look on it as an extension of the verbal element composed of the three letters ‘z’, ‘i’ and ‘r’. First, there appears to be equal spacing between the four elements of the sign applied for, second, the four elements are, in essence, aligned at the same level and, third, the fact that the first three elements appear in the same font reinforces further the coherence of the four elements of the sign applied for, notwithstanding the fact that the fourth element is not in the same font. The relevant public will therefore seek to understand the fourth element as being a continuation of the preceding three letters, ‘z’, ‘i’ and ‘r’, and, accordingly, as also being a letter. In view of the circle which it contains, the relevant public will recognise the letter ‘o’ in the fourth element, while noting the particularities of that element, in particular the two additional horizontal and vertical lines.
31 That finding is not called into question by the arguments relied on by EUIPO. First, EUIPO claims that the ‘figurative element’, namely the fourth element of the sign applied for, ‘is not placed within the verbal elements’, namely the first three elements of that sign. However, what is significant in the present case is the position of the fourth element within the sign applied for as a whole, which gives the impression that that element is the natural continuation of the first three elements. Given that the first three elements are letters, the relevant public will seek to understand the fourth element as also being a letter and will thus seek to understand the sign applied for as being a word. Second, EUIPO stresses the stylistic aspect of the fourth element, which differs from that of the first three. Although that stylistic difference will not go unnoticed, it cannot, however, counteract the impression of coherence of the various elements in the sign applied for, which is attributable to the similar spacing, alignment at the same level and the fact that the first three elements are in the same font. Third, it is, admittedly, true, as EUIPO submits, that the relevant public would be more inclined to perceive the fourth element as a specific letter if that element, when perceived as a stylised letter, were to give meaning to the verbal element of the mark. However, it cannot systematically be inferred from this that the relevant public must recognise the verbal element as a whole for it to be found that it will perceive a stylised component as a specific letter. In the present case, in the overall context of the sign applied for, the circle contained in the fourth element of that sign can be understood only as the letter ‘o’.
32 The Court accordingly concludes that, contrary to the findings of the Board of Appeal, the relevant public will recognise the verbal element ‘ziro’ in the sign applied for, while at the same time noticing, on the one hand, the font representing graffiti in which the first three letters are represented and, on the other hand, the particular stylisation of the last letter ‘o’, which resembles crosshairs. Accordingly, there is no need to make a detailed assessment of the other submissions made by the applicant with a view to showing that the relevant public would perceive the verbal element of the sign applied for as ‘ziro’, inter alia, the submission that the relevant public generally tends to read figurative elements placed within words as letters, the submission based on the description of the sign applied for by the other party to the proceedings before the Board of Appeal and EUIPO themselves in various documents contained in the EUIPO case file, and the submission that the other party to the proceedings before the Board of Appeal had not, in the course of the proceedings before EUIPO, disputed the contention that the verbal element of the sign applied for was ‘ziro’.
33 Next, it should be borne in mind that, according to case-law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited).
34 In the present case, the verbal elements of the signs at issue are ‘zero’ and ‘ziro’. They have the same number of letters, namely four, and differ with regard only to their second letter. As such, the verbal elements of the signs at issue are therefore highly similar.
35 Nevertheless, as the Board of Appeal was fully entitled to find, and in essence found, in paragraphs 12 to 14 of the contested decision, the verbal elements of the signs at issue are in noticeably different fonts. In addition, whereas the verbal element of the earlier sign is in lower-case letters, the verbal element of the sign applied for is in upper-case letters. Lastly, the particular stylisation of the final element of the sign applied for, namely two horizontal and vertical lines intersecting perpendicularly within a circle, evoking an association with the letter ‘o’ and thus giving to that element the appearance of crosshairs, has no counterpart in the earlier sign.
36 The Court therefore concludes that, as a whole, in view of the similarities and differences mentioned in paragraphs 34 and 35 above, the signs at issue are of average visual similarity. It follows that the Board of Appeal erred in finding that the signs at issue were visually dissimilar.
The phonetic comparison of the signs
37 With regard to the phonetic comparison of the signs, the Board of Appeal properly found, in paragraph 15 of the contested decision, that the earlier sign will be pronounced [ˈzɪə.ɹəʊ] by the English-speaking public.
38 In that regard, according to the case-law, an EU trade mark, such as the earlier mark at issue in the present case, is protected in the same way in all Member States and it is therefore necessary to take into account the perception of the marks at issue by consumers of the goods concerned throughout the Member States (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).
39 It follows that, in order to find that the signs at issue differed phonetically, the Board of Appeal could not confine its analysis to the pronunciation of the signs at issue by the English-speaking public, which it nevertheless did in paragraph 15 of the contested decision.
40 By contrast, the case-law cited in paragraph 38 above must again be borne in mind, according to which, in order 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 No 207/2009 exists in part of the European Union (see judgment of 14 December 2006, 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).
41 In order to establish that the signs at issue are phonetically similar, it would therefore suffice to find that there is phonetic similarity for a part of the relevant EU public, as, for example, for the relevant English-speaking public.
42 In so far as, in order to find in the present case that the signs at issue were phonetically dissimilar, the Board of Appeal took the view, essentially, in paragraph 15 of the contested decision, that the relevant public, first, could perceive the first element of the sign applied for not only as the letter ‘z’, but also as the number ‘2’ and, second, would not understand the last element of that sign as being the letter ‘o’, the Court refers to the reasoning set out in paragraphs 27 to 32 above, from which it appears that the relevant public would recognise the verbal element ‘ziro’ in the sign applied for.
43 In order to answer the applicant, which claims that the signs at issue are phonetically identical since the relevant public will immediately recognise that the verbal element of the sign applied for, ‘ziro’, resembles the English word ‘zero’ and that it will pronounce the former in the same way, it is, admittedly, true that the verbal element ‘ziro’ of the sign applied for does not correspond to any English word. However, unlike the examples invoked by the applicant, in which the relevant verbal elements were phonetically identical to everyday English words of which they could be regarded as misspellings, the verbal elements ‘ziro’ and ‘zero’ are, according to the rules of English pronunciation, not pronounced in the same way. As EUIPO correctly submits, in English the pronunciation of the vowels ‘i’ and ‘e’ differs, with the result that the verbal element ‘ziro’ would be pronounced ['zaɪˌɹɘʊ] according to the rules of English pronunciation, whereas the word ‘zero’ would be pronounced ['zɪə.ɹɘʊ].
44 Although, due to the difference in pronunciation of the first vowel, the signs at issue are therefore not phonetically identical, as the applicant nevertheless maintains, the fact remains that, since the pronunciation of the remainder of those signs is identical, they are similar. The Board of Appeal therefore erred in finding that the signs at issue were phonetically dissimilar.
45 In that connection, EUIPO’s submission that the Board of Appeal examined and rejected, in paragraph 17 of the contested decision, the existence of a likelihood of confusion on the basis of Article 8(1)(b) of Regulation No 207/2009 specifically in the event that the sign applied for were to be pronounced in the same way as the English word ‘zero’ is irrelevant. In that regard, suffice it to note that, in paragraph 17 of the contested decision, the Board of Appeal found that, in the present case, the visual aspect was more important than the phonetic aspect and that the lack of visual similarity between the signs at issue would thus make it possible to dispel any phonetic misunderstanding. As has been found in paragraph 36 above, the signs at issue are, however, of average visual similarity, which renders irrelevant the Board of Appeal’s finding based precisely on the supposed visual dissimilarity of the signs at issue.
46 The Court therefore finds that the signs at issue are phonetically similar to an average degree, at least as far as the English-speaking relevant public is concerned.
The conceptual comparison of the signs
47 With regard to the conceptual comparison of the signs, the Board of Appeal properly found, in paragraph 16 of the contested decision, that the verbal element ‘zero’ of the earlier sign had a meaning for the relevant public, being namely the basic English word indicating the numerical value of nothing or ‘none’. It is not only in English, but also in several other widely spoken languages of the European Union, such as Spanish, French, Italian, Portuguese and Romanian, that identical or highly similar words to ‘zero’ (‘cero’, ‘zéro’ and ‘zero’) indicate the numerical value of nothing.
48 By contrast, in so far as the Board of Appeal also found in paragraph 16 of the contested decision that the verbal element of the sign applied for, whether perceived as ‘2 ir’ or as the string of capital letters ‘ZIR’, had no meaning in relation to the relevant goods, the Court refers, once again, to the considerations set out in paragraphs 27 to 32 above, from which it is clear that the relevant public would recognise the verbal element ‘ziro’ in the sign applied for. That verbal element, however, does not appear to have any clear and specific meaning in any of the widely spoken languages of the European Union, and the applicant, moreover, does not claim that it has.
49 In so far as the applicant claims that the verbal element of the sign applied for, ‘ziro’, will be understood by the relevant public as a misspelling of the English word ‘zero’, the Court refers back to the considerations set out in paragraph 43 above. According to the rules of English pronunciation, the verbal elements ‘ziro’ and ‘zero’ are not pronounced in the same way. To that extent, by contrast to the examples relied on by the applicant, in which the relevant verbal elements were phonetically identical to everyday English words of which they could be regarded as misspellings, the relevant public would not recognise the English word ‘zero’ in the verbal element ‘ziro’.
50 The Court therefore finds that, in the absence of a clear and specific meaning of the verbal element ‘ziro’ of the sign applied for, the signs at issue are not conceptually similar.
The likelihood of confusion
51 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
52 In the present case, the Board of Appeal found, first, in essence, that, since the signs at issue were not similar, it followed that it could not find that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 (paragraph 18 of the contested decision). The Board of Appeal found, second, that, even if the signs were to be considered similar to a low degree, there was no likelihood of confusion between the marks at issue, not even for identical goods, having regard to the visual, phonetic and conceptual differences between the signs at issue, in so far as, first, it took the view that the signs at issue were visually dissimilar, second, in relation to the goods covered by Class 25 such as ‘clothing, footwear, headgear’, the visual aspect was more important than the phonetic aspect, third, the visual aspect also played an important role for ‘jewellery, precious stones, horological and chronometric instruments’, covered by Class 14 and usually examined visually when bought, and, fourth, the level of attention would be higher when those goods were being bought (paragraph 19 of the contested decision).
53 It is, admittedly, true that, as regards the goods in Classes 25 and 14 covered by the marks at issue, the visual aspect has greater importance in the global assessment of the likelihood of confusion (see, to that effect, judgment of 24 January 2012, B, T‑593/10, not published, EU:T:2012:25, paragraph 47 and the case-law cited). Nevertheless, it should be noted that, by contrast to the Board of Appeal’s finding in the contested decision, the signs at issue are of average visual (see paragraph 36 above) and phonetic (see paragraph 46 above) similarity.
54 It is also true that, according to the case-law, conceptual differences between two signs may counteract visual and phonetic similarities existing between them, provided that at least one of those signs has a clear and specific meaning for the relevant public, with the result that that public is capable of grasping it immediately (see, to that effect, judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20). However, EUIPO errs in claiming that, in the present case, the conceptual differences between the signs at issue counteract their visual and phonetic similarity. Although it is true that, unlike the verbal element of the earlier sign, the verbal element of the sign applied for does not have a clear and specific meaning (see paragraphs 47 and 48 above), it cannot, however, be inferred from this that the signs at issue are conceptually different. In the absence of a clear and specific meaning of the verbal element of the sign applied for, it is possible only to find that, conceptually, that element is not similar to the verbal element of the earlier sign, and that, in such circumstances, the absence of similarity is not capable of counteracting, first, the fact that the signs at issue are of average visual similarity, an aspect which is of particular importance for the goods covered by the marks at issue, and, second, the fact that they are of average phonetic similarity.
55 Given that, in the global assessment of the likelihood of confusion, the Board of Appeal therefore based its finding on the signs at issue being similar to a low degree at most (paragraph 19 of the contested decision), the Court finds that such an assessment is erroneous in so far as it fails to take account of the correct degree of similarity between the signs at issue, in particular their visual and phonetic similarity.
56 Since the first plea in law is thus well founded, the contested decision must be annulled, without there being any need to examine the second plea.
Costs
57 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. Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 January 2016 (Case R 71/2015-5);
2. Orders EUIPO to pay the costs.
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 9 February 2017.