JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

11 November 2020 (*)

(EU trade mark – Opposition proceedings – Application for registration of an EU figurative mark representing a stylised horn – Earlier EU figurative mark representing a post horn on a yellow background – Relative ground for refusal – No likelihood of confusion – Similarity of the signs – Lack of distinctive character of the earlier mark – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑25/20,

Deutsche Post AG, established in Bonn (Germany), represented by M. Viefhues, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Pošta Slovenije d.o.o., established in Maribor (Slovenia), represented by M. Kavčič and R. Jerovšek, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 18 November 2019 (Case R 994/2019‑1) relating to opposition proceedings between Deutsche Post and Pošta Slovenije,


THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, U. Öberg (Rapporteur) and R. Mastroianni, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 17 January 2020,

having regard to the response of EUIPO lodged at the Court Registry on 23 March 2020,

having regard to the response of the intervener lodged at the Court Registry on 26 March 2020,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1        On 9 August 2017, the intervener, Pošta Slovenije d.o.o., 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), as amended (replaced by 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)).

2        Registration as a mark was sought for the following figurative sign:

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3        The goods and services in respect of which registration was sought are in, inter alia, Classes 6, 16, 19, 20, 35, 38 and 39 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 6: ‘Letter boxes of metal’;

–        Class 16: ‘Holders for stamps [seals]; franking machines; addressing machines, address plates for addressing machines, address stamps; seals [stamps]; sealing compounds for stationery purposes; sealing wafers; sealing machines for offices; sealing wax; sealing stamps; stamps; postcards; stamps (seals); greeting cards; packets, wrappers of cardboard; plastic materials for packaging (not included in other classes)’;

–        Class 19: ‘Letter boxes of masonry’;

–        Class 20: ‘Letter boxes, not of metal or masonry’;

–        Class 35: ‘Direct mail advertising; dissemination of advertising matter; advertising by mail order; wholesaling and retailing of the following goods: letter boxes of metal, apparatus to check franking, stamp pads, holders for stamps (seals), franking machines, addressing machines, address plates for addressing machines, address stamps, seals (stamps), sealing compounds for stationery purposes, sealing wafers, sealing machines for offices, sealing wax, sealing stamps, postage stamps, postcards, stamps (seals), greeting cards, packets, wrappers of cardboard, plastic materials for packaging, letter boxes of masonry, letter boxes, not of metal or masonry, letter boxes’;

–        Class 38: ‘Message sending; transmission of electronic mail; facsimile transmission; sending of telegrams; telegram transmission; computer aided transmission of messages and images; communication by telegram; telex services’;

–        Class 39: ‘Parcel delivery; mail delivery and courier services; bus transport; car transport; storage of electronically stored data or documents; delivery of goods; delivery of goods by mail order; delivery of newspapers; message delivery; storage information; transportation information; vehicle hire; boat transport; porterage; packaging of goods; freight brokerage; transport brokerage; passenger transport; travel reservation; transport; removal services; storage of goods; storage of goods; chauffeur services; freight forwarding; transport; hauling; armored-car transport; transport reservation; wrapping of goods; transport by air; railway transport; packaging and storage of goods’.

4        The trade mark application was published in the European Union Trade Marks Bulletin No 2017/191 of 6 October 2017.

5        On 19 December 2017, the applicant, Deutsche Post AG, filed an opposition against the application for registration concerning the classes listed in paragraph 3 above, pursuant to Article 46 of Regulation 2017/1001. The opposition was based on the earlier EU figurative trade mark filed on 6 April 1998 and registered on 21 March 2000 under No 797 209, as reproduced below:

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6        The earlier mark covers services in Class 39 corresponding to the following description:

–        Class 39: ‘transport; packaging and storage of goods; follow-up services included in Class 39, involving the electronic tracking of goods and items, and further logistical support services, including the systematic cross-linking of the flow of goods and information; postal, freight and courier services.’

7        Having already requested proof of use of the earlier mark on 22 December 2017, on 26 January 2018, the intervener presented submissions before EUIPO on the absence of a likelihood of confusion between the marks at issue, in view of the significant differences between those marks, the fact that the common element, representing a post horn, was weakly distinctive, as well as the differences in the purpose and methods of use of the goods and services at issue. The intervener explained that it was the national post office of Slovenia, and that the applicant was the national post office of Germany and that both parties were members of PostEurope, the trade association of European public postal operators. The intervener also drew attention to the use of a post horn device placed against a yellow background by other European postal operators, such as, for example:

Czech post Image not found;

Austrian post Image not found;

Lithuanian post Image not found;

Spanish post Image not found;

Bulgarian post Image not found;

Cyprus post Image not found.

8        On 23 April 2019, the Opposition Division of EUIPO rejected the opposition. It essentially based its decision on the fact that the post horns and yellow rectangles used by the marks at issue had very limited, if any, distinctive character, that there were significant differences between those marks, and lastly held that there was no likelihood of confusion between the marks at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009.

9        On 8 May 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10      By decision of 18 November 2019 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal on the same grounds as the Opposition Division of EUIPO and held that there was no likelihood of confusion between the marks at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009. In the contested decision, it essentially held that:

–        the relevant public was, depending on the classes of the goods and services covered by the marks at issue, either the professional public or the public at large;

–        the goods and services at issue covered by the trade mark applied for were either identical or similar to the services in Class 39 covered by the earlier mark, except for the wholesale services in Class 35 of the mark applied for, which were different;

–        the signs at issue had a low degree of similarity;

–        there was no likelihood of confusion with the earlier mark.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

12      EUIPO and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

13      As a preliminary point, it should be noted that, although the Board of Appeal states in the contested decision that it is applying the provisions of Regulation 2017/1001, those references should be understood, as regards the substantive rules, as in fact relating to the identical provisions of Regulation No 207/2009. Given the date on which the application for registration at issue was filed, namely 9 August 2017, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

14      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it submits that, first, except for the wholesale services in Class 35 which it concedes are different, the goods and services at issue are identical or at least very similar, secondly, that the earlier mark has a degree of distinctiveness higher than what was found in the contested decision and, thirdly, that the signs at issue are much more similar than the Board of Appeal found. It claims that there is a likelihood of confusion between the marks at issue.

15      EUIPO and the intervener dispute those arguments.

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 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.

17      According to settled case-law, 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. 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 (judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42).

 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      It is apparent from the contested decision that the relevant public is made up of the professional public for both certain goods in Class 35 which are primarily of interest to companies (franking machines; addressing machines, address plates for addressing machines; address stamps; sealing compounds for stationery purposes; sealing wafers; sealing machines for offices; sealing wax; sealing stamps; holders for stamps [seals]; seals [stamps]; stamps (seals)), and retail services in Class 35 that relate to such goods, as well as direct mail advertising services in that class. The remainder of the goods and services at issue in Classes 6, 19, 20 and 35 and the services in Class 38 are also targeted at the public at large. As to Class 39, some of the services in the application (storage of electronically stored data or documents; freight brokerage; freight forwarding; hauling; armoured-car transport) may be of interest exclusively to attentive professionals, whereas the remainder of the services may be targeted at both the public at large and professionals.

21      That definition of the relevant public is not contested by the parties.

 The comparison of the goods and services at issue

22      According to settled case-law, 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 (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      With regard to the comparison of the goods and services, the Board of Appeal held that the goods and services at issue covered by the mark applied for were either identical or similar to the services in Class 39 covered by the earlier mark and that the wholesale services in Class 35 covered by the mark applied for differed from the goods and services covered by the earlier mark.

24      The applicant does not dispute those findings of the Board of Appeal.

 Comparison of the signs

25      In order to assess the degree of similarity between the signs at issue, it is necessary to determine the degree of visual, phonetic or conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (see judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 27, and of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 36 and the case-law cited).

26      As regards the visual, phonetic or conceptual similarity of the signs at issue, that assessment must be based on the overall impression which they convey to the relevant public (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35).

27      In the contested decision, the Board of Appeal held that, visually, the signs at issue had a low degree of similarity, taking account of, inter alia, the different stylisation of the two marks. According to the Board of Appeal, the relevant public is accustomed to use of the device of the post horn commonly in the side view and will perceive the differences between the respective devices.

28      From a phonetic standpoint, the Board of Appeal held that, as the signs are purely figurative, a comparison is not possible. However, as is illustrated by the numerous images of the use of the earlier trade mark, the earlier mark is intricately connected to and used with the verbal element ‘deutsche post’. The marks would therefore differ phonetically where the earlier mark is referred to as ‘deutsche post’.

29      Conceptually, the Board of Appeal held that a similarity, if any, can be found only from the coincidence of the post horn and the yellow rectangular background, neither of which are distinctive.

30      It held that the signs at issue have a low degree of similarity.

31      The applicant claims that the Board of Appeal was wrong to find that the marks at issue had a low degree of similarity. With regard to the post horns, the mouthpiece and the loop in the middle of the two post horns are nearly identical. Moreover, according to the applicant, in both trade marks, the bell mouth is on the right-hand side and the line of the bell mouth is broader than the rest of the line. However, even though the depth of the line does not change in the mark applied for, the end of the bell mouth has the same width as the end of the bell mouth in the earlier trade mark. Lastly, as both post horns are black, they must be considered highly similar.

32      The applicant adds that, with regard to the yellow background, the tone of the colours differs only slightly. Concerning the comparison of the colours, the applicant claims that the power to recall and remember colours covers only relatively few colours. The number of colours which that public is capable of distinguishing is limited, because it is rarely in a position directly to compare products in various shades of colour. Therefore, differences in colours which are only minor are not noticeable by the relevant public.

33      EUIPO and the intervener dispute those arguments.

34      It should be observed that there are admittedly a number of differences between the marks at issue, which were noted by the Board of Appeal. Accordingly, the tassels and the thick lines that form the post horn in the mark applied for, the different colour of the background, a bright cool yellow in the mark applied for and a warmer yellow in the earlier mark, as well as the different proportions and the stylisation of the post horn are non-negligible differences with the earlier mark. That said, the marks at issue coincide in that they both contain a post horn device on a yellow rectangular background. Therefore, they must be regarded as having an average degree of visual similarity and not a low one, as stated by the Board of Appeal.

35      Phonetic similarity is not relevant in the present case, since the signs at issue do not contain any verbal elements.

36      Conceptually, the signs at issue are similar since the relevant public will perceive the mark applied for as a post horn on a yellow rectangular background.

37      Thus, the Board of Appeal was wrong to find that the signs had a low degree of similarity. Even if account is taken of the non-negligible visual differences mentioned above, those differences are not sufficient in the present case to find a low degree of similarity between those signs, a degree of similarity which should rather be described as average.

 The distinctiveness of the earlier mark

38      It must be borne in mind that, for the purposes of assessing the distinctive character of a mark or an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods 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 for which the mark has been registered (see judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 5 December 2013, Olive Line International v OHIM – Carapelli Firenze (Maestro de Oliva), T‑4/12, not published, EU:T:2013:628, paragraph 48 and the case-law cited).

39      The applicant claims that the Board of Appeal was wrong to find that the earlier mark had only low distinctiveness by taking into account the low distinctiveness (i) of the colour yellow and (ii) of the post horn, in respect of products and services connected with the delivery of post. According to the applicant, the post horn is now associated with the services offered by national postal operators or their successor companies that are continuing operations following privatisation, so that the horn is distinctive in relation to those services.

40      The applicant adds that the national postal operators, whether public or private companies, like the applicant, are using in their respective countries different and individually designed post horn logos. From the design of the post horn it is possible to identify the corresponding postal operator. Those post horns are protected as trade marks, which means, in particular, according to the applicant, that the postal operators do not regard them as mere descriptive symbols for their business activities but as indications of the commercial origin of their services.

41      According to the applicant, the post horns of the marks at issue are both distinctive and refer to only one single commercial origin, that is, an individual company or group of companies. This also applies to the post horn of the applicant in its special and modern stylisation.

42      In a similar way, the postal operators of other EU Member States use, according to the applicant, their post horns as business identifiers. For instance, the Austrian, Spanish, Danish, Swedish, Slovenian, Estonian, Hungarian or Bulgarian post offices use the post horn on their letter collecting boxes, delivery carts or bags:

–        in Austria;

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–        in Spain;