EOS Deutscher Inkasso-Dienst v EUIPO - IOS Finance EFC (IOS FINANCE) (EU trade mark - Judgment) [2019] EUECJ T-583/17 (12 June 2019)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark IOS FINANCE — Earlier national figurative mark EOS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

EOS Deutscher Inkasso-Dienst GmbH, established in Hamburg (Germany), represented by B. Sorg, lawyer,

European Union Intellectual Property Office (EUIPO), represented by A. Söder, acting as Agent,

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

IOS Finance EFC, SA, established in Barcelona (Spain), represented by J.L. Rivas Zurdo, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 June 2017 (Case R 2262/2016-2), relating to opposition proceedings between EOS Deutscher Inkasso-Dienst and IOS Finance EFC,

composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 25 August 2017,

having regard to the response of EUIPO lodged at the Court Registry on 21 December 2017,

having regard to the response of the intervener lodged at the Court Registry on 22 January 2018,

having regard to the written questions put by the Court to EUIPO and the intervener and their answers to those questions lodged at the Court Registry on 30 July and 21 August 2018,

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,

1 On 29 January 2014, the intervener, IOS Finance EFC SA, 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)).

3 The services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in, inter alia, Class 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Financial affairs; monetary affairs; real estate affairs; all the aforesaid relating to the management and transfer of credit claims (bills)’.

4 The trade mark application was published in Community Trade Marks Bulletin No 55/2014 of 24 March 2014.

5 On 24 June 2014, Deutscher Inkasso-Dienst GmbH & Co. KG, now the applicant, EOS Deutscher Inkasso-Dienst GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

7 The earlier mark was registered on 23 October 2003 under the number 30340659 in respect of services in Class 36 corresponding to the following description: ‘Debt-collection business, debt-collection services’.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9 On 5 October 2016, the Opposition Division rejected the opposition in respect of all the contested services.

10 On 5 December 2016, Deutscher Inkasso-Dienst GmbH & Co. KG filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division, in so far as the opposition had been rejected in respect of the services ‘financial affairs’ and ‘monetary affairs’.

11 By decision of 6 June 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In essence, it upheld the findings of the Opposition Division and found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the part of the relevant public. In particular, it found that the relevant public, the level of attention of which was high, consisted of both the general public and of the specialist public in Germany. As regards the comparison of the services, it pointed out that the parties did not dispute the Opposition Division’s assessment that the services at issue were identical and it, in essence, confirmed that analysis. As regards the comparison of the signs at issue, it found that they were visually similar to a low degree and phonetically similar to at least an average degree. Furthermore, it found that the conceptual comparison was not possible and that, in any event, the element ‘finance’ in the mark applied for introduced some degree of conceptual dissimilarity. In the context of the global assessment of the likelihood of confusion, the Board of Appeal found that there was no such likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the part of the relevant public. It stated, inter alia, that the visual aspect of the signs at issue was predominated in respect of the services at issue and that those signs created very different impressions overall.

14 In support of the action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It submits that the Board of Appeal erred in assessing the visual and phonetic similarity of the signs at issue and that it should have found that there was a higher degree of similarity between them. Furthermore, it maintains that the global assessment of the likelihood of confusion is marred by errors of law, with the result that the Board of Appeal’s finding that there is no likelihood of confusion is incorrect.

15 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

16 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).

17 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).

18 It is in the light of the foregoing considerations that it must be assessed whether there is a likelihood of confusion in the present case.

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 As regards the relevant public, the Board of Appeal found that the services at issue could be of concern both to the general public and to other investors or specialists acting in the financial and money markets. It stated that, in both cases, those services had a direct impact on their economic and financial assets and that therefore the relevant public’s level of attention was high. It also found that, in view of the fact that the earlier mark was a German trade mark, the perception of consumers in Germany was relevant for the purposes of assessing whether there was a likelihood of confusion. Those findings, which are not, moreover, disputed by the applicant, must be upheld.

21 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. 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).

22 In the present case, the Board of Appeal was right in finding, a finding which has not, moreover been disputed by the applicant, that the services ‘financial affairs; monetary affairs; all the aforesaid relating to the management and transfer of credit claims (bills)’ in Class 36 covered by the mark applied for were identical to the services ‘debt-collection business, debt-collection services’ in that class in respect of which the earlier mark had been registered, since the services covered by the mark applied for encompassed the ‘debt-collection services’ covered by the earlier mark.

23 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).

24 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).

25 In the present case, as the Board of Appeal observed in paragraph 35 of the contested decision, the earlier mark is a figurative mark consisting of the word element ‘EOS’ which is written in slightly stylised white capital letters and is placed in the lower half of a rectangular background that is divided into two colours by a white curved line. The upper part of the rectangle is dark red and the lower part, in which the word element in question is situated, is black. As regards the mark applied for, it must be pointed out that, as is apparent from paragraph 41 of that decision, that mark is also a figurative sign. It consists of the word element ‘ios’ written in blue capital letters, which is followed by the word element ‘finance’ written in blue capital letters in a smaller typeface. Furthermore there is a graphic representation of a puzzle in blue, orange and red on the left-hand side of the two word elements in the mark applied for.

26 As far as the earlier mark is concerned, the Board of Appeal found that the word element ‘eos’ was the dominant and distinctive element, but that the figurative elements of that mark, namely the stylisation and colour of the letters in that word element and the dark-red and black rectangle separated by a curved white line, were not negligible in the overall impression created by the mark.

27 As regards the mark applied for, the Board of Appeal found that the word element ‘ios’ in that mark was the dominant and distinctive element. However, it also found that both the word element ‘finance’ and the figurative elements of that mark, namely the stylisation and colour of the letters in the word elements and the blue, orange and red puzzle, were not negligible and had to be taken into consideration in the context of the overall impression created by that mark.

28 The applicant submits, in essence, that the Board of Appeal erred in relying on elements other than the dominant and distinctive elements ‘eos’ and ‘ios’ of the signs at issue in assessing whether those signs were similar.

30 It should be noted at the outset that assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

31 In the present case, it must be pointed out that, in the context of the comparison of the signs at issue, the Board of Appeal did not find, contrary to what the applicant, in essence, submits, that the word element ‘eos’ in the earlier mark and the word element ‘ios’ in the mark applied for were capable on their own of dominating the images of those marks. It is clear from the contested decision that the other components of those marks were not regarded as negligible and therefore had to play a role in the assessment of whether those marks were similar.

32 The applicant’s argument that the contested decision contains contradictory reasoning, inasmuch as the Board of Appeal, on the one hand, took all the elements of the signs at issue into consideration in comparing them and, on the other hand, found that their word elements ‘eos’ and ‘ios’ were dominant, must also be rejected. As is clear from the case-law (see paragraph 30 above), it is only if all the other components of those signs are negligible that the assessment of their similarity can be carried out solely on the basis of their dominant elements. The judgment of 22 October 2015, BGW (C‑20/14, EU:C:2015:714, paragraph 37), relied on by the applicant, merely confirms that principle. However, in the present case, as stated by EUIPO, the Board of Appeal did not classify any element of the signs at issue as negligible.

33 Consequently, the applicant’s claims cannot succeed because they are based on a misreading of the contested decision.

34 If, however, the applicant’s line of argument were to be understood as seeking to maintain that the figurative elements of the signs at issue and the word element ‘finance’ in the mark applied for are negligible, it must be stated that such a line of argument also cannot succeed.

35 In that regard, first, it must be stated that the applicant confines itself, in essence, to referring to findings in the contested decision without substantiating its claims.

36 Secondly, as far as the word element ‘finance’ in the mark applied for is concerned, it is true that the Board of Appeal found that that element was not particularly relevant in the context of the comparison of the signs at issue in view of its position and size in relation to the other word element ‘ios’ and its descriptiveness with regard to the contested services.

37 However, the word element ‘finance’ is not capable of being disregarded by the relevant public in the overall impression created by the mark applied for.

38 In spite of its position in the mark applied for and its smaller size in relation to the word element ‘ios’, that element will clearly be perceived by the relevant public.

39 Furthermore, although it is true that, as a general rule, the public will not consider a descriptive word element of a mark to be the distinctive and dominant element in the overall impression created by that mark, that does not, however, mean that a descriptive element of a mark is necessarily negligible in the overall impression created by that mark (see, to that effect, judgments of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraph 101; of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 54; and of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑566/15, not published, EU:T:2016:517, paragraph 28). In that regard, it is necessary, in particular, to examine whether other elements of the mark are capable on their own of dominating the image of that mark which members of the relevant public retain (judgments of 24 February 2016, REAL HAND COOKED, T‑816/14, not published, EU:T:2016:93, paragraph 54, and of 20 September 2016, MERLIN’S KINDERWELT, T‑566/15, not published, EU:T:2016:517, paragraph 28).

40 In the present case, although it is true that the word element ‘finance’, which is placed at the end of the mark applied for, plays a secondary role in relation to the word element ‘ios’, which is placed between the figurative element representing a puzzle and the word element ‘finance’, the element ‘ios’ cannot, however, contrary to what the applicant submits, be regarded as dominating, on its own, the image that the relevant public retains.

41 In those circumstances, the fact that the word element ‘finance’ is not negligible in the mark applied for and cannot therefore be disregarded must be taken into account in comparing the signs at issue.

42 Thirdly, as regards the figurative elements of the signs at issue (see paragraphs 25 to 27 above), it must be pointed out, as the Board of Appeal, in essence, found, that those elements are commonplace and are likely to be perceived by the relevant public as decorative and ancillary, but will not, however, in view of their colours, size and position, go unnoticed.

43 Consequently, the figurative elements of the signs at issue cannot be regarded as negligible in the context of the comparison of those signs.

44 As regards the distinctive character of the elements of which the signs at issue consist, it must be pointed out that the Board of Appeal found, in essence, that their word elements ‘eos’ and ‘ios’ were their most distinctive elements. That finding, which has not, moreover, been called into question by the applicant, must be upheld.

45 Where a mark consists of word and figurative elements, the former should, in principle, be considered to be more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name of the mark than by describing the figurative element of the mark (see judgment of 28 September 2016, LLR-G5 v EUIPO — Glycan Finance (SILICIUM ORGANIQUE G5 LLR-G5), T‑539/15, not published, EU:T:2016:571, paragraph 56 and the case-law cited).

46 However, in the light of the characteristics of the figurative element, that element may contribute visually to the overall impression made by the mark or be the dominant element of that mark (see judgment of 8 May 2014, Pyrox v OHIM — Köb Holzheizsysteme (PYROX), T‑575/12, not published, EU:T:2014:242, paragraph 84 and the case-law cited).

47 Accordingly, in the present case, the figurative elements of the signs at issue contribute, in view of their colours, size and position, visually to the overall impression made by those signs, although they are less distinctive than their word elements ‘eos’ and ‘ios’.

48 Furthermore, it is apparent from the case-law that, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see judgment of 24 February 2016, REAL HAND COOKED, T‑816/14, not published, EU:T:2016:93, paragraph 54 and the case-law cited). Consequently, the applicant’s argument that the word element ‘finance’ in the mark applied for is devoid of any distinctive character also cannot succeed.

49 In view of all of the foregoing, it must be held that the Board of Appeal was right in taking all the elements of the signs at issue into consideration in comparing those signs and in not confining itself to comparing their dominant and most distinctive elements ‘eos’ and ‘ios’.

50 From a visual standpoint, the Board of Appeal found that the signs at issue were similar to a low degree. It pointed out, in essence, that those signs coincided visually in the letters ‘o’ and ‘s’ of their word elements ‘eos’ and ‘ios’ and differed in other elements, such as the first letters in those elements, the stylisation of the word elements of the signs at issue, the typefaces, the colours used and the graphic representations of those signs.

51 The applicant submits that there is at least an average degree of visual similarity between the signs at issue in view of the similarities between their word elements ‘eos’ and ‘ios’. In particular, it maintains that the capital letters ‘e’ and ‘i’ resemble each other visually because they consist of straight lines, do not contain any slanted components and have a perpendicular line in common. It also submits that too much weight was attached to the difference in one letter between ‘eos’ and ‘ios’. Furthermore, it argues that the principle that the consumer normally attaches more importance to the first part of words does not apply to short signs consisting of three letters.

53 In that regard, in the first place, it must be borne in mind that the signs at issue are composite figurative signs in which the dominant and most distinctive elements are the word elements ‘eos’ and ‘ios’. As is apparent from the contested decision, those elements, which each consist of three letters, coincide in their second and third letters, ‘o’ and ‘s’, which are in the same order, and differ in their first letters which are the vowels ‘e’ and ‘i’ respectively.

54 Furthermore, it must be pointed out that, contrary to what the applicant submits, whether the principle that the consumer normally attaches more importance to the first part of words is applicable to short signs consisting of three letters is, in the present case, irrelevant. The signs at issue contain figurative elements in addition to the word elements ‘eos’ and ‘ios’, including a puzzle which comes at the beginning of the mark applied for, and the mark applied for also contains the word element ‘finance’. As has already been stated (see paragraphs 34 to 43 and 47 above), those elements are not negligible in the context of the comparison and contribute, in view of their colours, size and position, visually to the overall impression made by those signs.

55 In the second place, it is apparent from the case-law that, in short signs, differences are more clearly perceived (see, to that effect, judgment of 23 September 2009, Arcandor v OHIM — dm drogerie markt (S-HE), T‑391/06, not published, EU:T:2009:348, paragraph 41). As the dominant and most distinctive elements of the signs at issue, namely the word elements ‘eos’ and ‘ios’, are short, that finding may also be applied in the present case.

56 In that respect, as regards the supposed similarity between the capital letters ‘e’ and ‘i’, as claimed by the applicant, it is sufficient to state that the relevant public is deemed to be capable of distinguishing the letters of the Latin alphabet and that, in the present case, having regard also to the fact that the word elements ‘eos’ and ‘ios’ are short, that public will perceive the differences between those letters. That is particularly true in the present case because that public’s level of attention is high. Consequently, the relevant public will certainly perceive the difference between the capital letters ‘e’ and ‘i’, even if it has only an imperfect recollection of the signs at issue.

57 Accordingly, the Board of Appeal did not err in finding, in essence, that the difference between the first letters of the dominant and most distinctive elements of the signs at issue was a significant distinguishing factor of those signs.

58 The applicant’s other arguments alleging that the word elements ‘eos’ and ‘ios’ in the signs at issue are similar are not capable of calling that finding into question.

59 First, in so far as the applicant refers to a previous decision of the Board of Appeal of EUIPO regarding the word sign EBF and the figurative sign IBF (Case R 878/2011-2) in order to have it declared, in essence, that the difference in a single letter does not constitute a significant visual difference, it should be observed that, according to settled case-law, the legality of decisions of the Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of EUIPO’s previous decision-making practice, which cannot, in any event, bind the EU judicature (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 33; and of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 35).

60 In any event, there are significant differences between the signs at issue in the previous decision of the Board of Appeal of EUIPO referred to in paragraph 59 above and those at issue in the present case, with the result that no relevant information can be derived from that decision. In the present case, the signs at issue are composite figurative signs, a number of elements of which do not have any equivalent in the word sign EBF and the figurative sign IBF which were examined in that decision.

61 Secondly, as is apparent from the contested decision, it must be pointed out that the circumstances in the present case are different from those in the case that gave rise to the judgment of 23 October 2002, Institut für Lernsysteme v OHIM — Educational Services (ELS) (T‑388/00, EU:T:2002:260), which is relied on by the applicant. It is true that, in paragraph 66 of that judgment, it was acknowledged that, as a result of the fact that two of the three letters in the word elements of the signs at issue, namely the elements ‘ils’ and ‘els’, were identical, the difference in the first letter could not be regarded as constituting a significant visual difference. However, in that case, first of all, the earlier mark was purely a word mark. Next, the figurative elements of the earlier mark in that case were merely a slight stylisation of the word element ‘ils’, which was written in white letters on a black background in a rectangular frame with a white border. Lastly, neither of the two signs at issue in that case included an additional word element. Consequently, the applicant cannot establish, by relying on the abovementioned judgment, that, in the present case, the visual similarity between the signs at issue is at least average.

62 Thirdly, in so far as the applicant refers, in order to deny that there is a principle that a likelihood of confusion is ruled out as soon as a single letter in the signs at issue differs, to a series of previous decisions of the Opposition Division and the Boards of Appeal of EUIPO in which the likelihood of confusion was examined with regard to signs containing three letters, it is appropriate to refer to the case-law cited in paragraph 59 above. Furthermore, it must be pointed out that, in the present case, the Board of Appeal did not establish such a principle and carried out a specific comparison of the signs at issue considered as a whole. In any event, the Board of Appeal did not maintain that the fact that the dominant and most distinctive elements of the signs at issue differed in one letter made it possible to rule out any visual similarity.

63 In view of all of the foregoing, the applicant cannot, in addition, reasonably maintain that the Board of Appeal did not examine the first letters in the signs at issue and their impact on the overall impression made by those signs.

64 In the third place, it must be pointed out that the other elements of the signs at issue, which cannot be regarded as negligible in the context of the comparison (see paragraphs 34 to 43 above), reinforce the difference that exists between the word elements ‘eos’ and ‘ios’.

65 First, it must be stated that the figurative elements in the earlier mark constitute a specific graphic whole which is very different from that formed by the mark applied for. The differences concern the overall structures of the signs at issue as well as the graphic representations of those signs and the colours used.

66 As EUIPO points out, the earlier mark appears as a square divided into two by a curved line in which the word element ‘eos’ is placed in the lower part of that square. It must also be pointed out that that square is relatively large. By contrast, the mark applied for consists of the graphic representation of a puzzle, followed by the word elements ‘ios’ and ‘finance’, which are aligned and are not written on a background which has a specific shape. Furthermore, the colours used in the earlier mark are dark red, black and white, whereas the mark applied for is dominated by the colour blue and the colours orange and red are also used in that mark.

67 Secondly, the mark applied for also contains the word element ‘finance’ which has no equivalent in the earlier mark. Although the distinctive character of that element is weak (see paragraph 48 above) and it therefore plays a less important role than the word element ‘ios’ in that mark in the overall impression created by the mark, its presence in the mark applied for cannot be disregarded. That element therefore also represents an element which introduces some degree of visual difference between the signs at issue.

68 Accordingly, it must be held that the visual differences between the signs at issue prevail over the similarity arising from the partial identity of their dominant and most distinctive elements and that the overall visual impression created by those signs is different. It follows that those signs, considered as a whole, are visually different and not similar to a low degree, as the Board of Appeal incorrectly found.

69 Consequently, the arguments alleging that the signs at issue are visually similar must be rejected and it must be held that the signs at issue, considered as a whole, are visually different.

70 From a phonetic standpoint, the Board of Appeal found that there was ‘at least’ an average degree of similarity between the signs at issue. It pointed out that part of the relevant public would probably omit the word element ‘finance’ when pronouncing the mark applied for. As regards the word elements ‘eos’ and ‘ios’ in those signs, it stated that there was no reason that led to the conclusion that those elements would be pronounced as acronyms. Furthermore, it stated that the pronunciation of those elements coincided in the sound of the letters ‘o’ and ‘s’ and differed in the sound of the first letters, ‘e’ and ‘i’. As regards the first letters, ‘e’ and ‘i’, of those elements, it admitted that the pronunciation of those letters in German could be similar, although it stated that it was difficult to determine how the elements in question would be pronounced on the ground that they are not German words. In those circumstances, it found that, when the elements in question were pronounced, the overall sounds produced would be ‘at least’ similar to an average degree.

71 The applicant submits that the degree of phonetic similarity between the signs at issue is above average. First, it submits that, when the word element ‘eos’ in the earlier mark is pronounced according to the rules of the English language, the pronunciation of that element is identical to that of the word element ‘ios’ in the mark applied for when it is pronounced according to the rules of the German language. Secondly, it maintains that, even assuming that the word elements ‘eos’ and ‘ios’ in those signs are pronounced according to the rules of the same language, the pronunciation of the first letters of those elements is very similar.

73 In that regard, it must be pointed out that, in finding that the signs at issue were phonetically similar to ‘at least’ an average degree, the Board of Appeal did not rule out the possibility that the degree of phonetic similarity could, at least for part of the relevant public, be above average. As is apparent from paragraph 59 of the contested decision, it expressly departed from the Opposition Division’s finding that the signs at issue were phonetically similar to an average degree. Furthermore, the wording used includes both the possibility of an average degree of phonetic similarity and of an above-average degree of phonetic similarity.

74 In those circumstances, as the Board of Appeal also took into consideration the possibility suggested by the applicant, it is sufficient to state that the applicant’s arguments seeking to have the phonetic similarity between the signs at issue declared to be above average are ineffective.

75 In so far as the applicant submits that the signs at issue are phonetically identical, it must be stated that that is not so.

76 It is true that, as is apparent from the contested decision, part of the relevant public will tend not to pronounce the word element ‘finance’ in the mark applied for simply in order to economise on words. That element, which is descriptive with regard to the services concerned, can easily be separated from the most distinctive element of the mark applied for, ‘ios’, is smaller than that element and is situated at the end of that mark.

77 However, the word elements ‘eos’ and ‘ios’ in the signs at issue cannot be held to be phonetically identical.

78 Those elements coincide only in their second and third letters, ‘o’ and ‘s’, and differ in their first letters, which are the vowels ‘e’ and ‘i’ respectively.

79 As regards the pronunciation of those elements, it must be pointed out that the way in which they are pronounced as a single term, an acronym or letter by letter, has no bearing on the assessment of the phonetic comparison of the signs at issue.

80 Next, it must be stated that, for the relevant public, which is by definition German speaking, the word elements ‘eos’ and ‘ios’ are meaningless. Consequently, as is apparent from the contested decision, the way in which those elements will be pronounced by that public cannot easily be determined.

81 Contrary to what the applicant submits, it must be pointed out that nothing in the case file permits the inference that the relevant public will pronounce the word element ‘eos’ in the earlier mark in accordance with the rules of the English language. That element has no meaning in English and nothing permits the inference that, as the applicant suggests, it is common for the German public to pronounce signs consisting of three letters in English.

82 Consequently, as EUIPO maintains, the relevant public will tend to pronounce the word elements ‘eos’ and ‘ios’ in accordance with the rules of the German language. It also follows that the pronunciation of those elements will not be identical, although, as the two vowels which differentiate them have a similar sound in German, the sound produced by the pronunciation of those elements will be similar, a point which the Board of Appeal did not fail to have regard to.

83 The same is true if the word element ‘ios’ in the mark applied for is pronounced in English by the relevant public, given that the relevant public will associate it with English in the light of the presence of the English word element ‘finance’ in that mark. Even in such a case, the English pronunciation of the word element ‘ios’ would not be identical to the German pronunciation of the word element ‘eos’.

84 In view of the foregoing, the Board of Appeal did not err in finding that the signs at issue are phonetically similar to at least an average degree.

85 From a conceptual standpoint, the Board of Appeal found, in essence, that a conceptual comparison of the signs at issue was not possible on the ground that one of those signs had no meaning for the relevant public (see paragraph 61 of the contested decision). It also pointed out that the conceptual difference introduced by the element ‘finance’ in the mark applied for, which would be associated with the German term ‘Finanzen’, was not particularly relevant in assessing the conceptual similarity in view of the descriptive content of that term with regard to the services at issue. Furthermore, it stated, in paragraph 66 of the contested decision, that there was no conceptual similarity between those signs.

86 In that regard, it must be pointed out that the earlier mark does not convey any concept. By contrast, although the dominant and distinctive element of the mark applied for, ‘ios’, has no meaning for the relevant public, the second word element in that mark, which is not negligible in the context of the comparison and does appear in the earlier mark, will be understood by the relevant public and associated with the German term ‘Finanzen’. Furthermore, the representation of a puzzle in the mark applied for conveys an additional concept, which is not present in the earlier mark.

87 In those circumstances, as only one of the signs at issue conveys a concept or concepts, it must be pointed out that those signs are not conceptually similar.

88 It follows from the foregoing that the signs at issue are visually different and phonetically similar to at least an average degree. Furthermore, those signs are not conceptually similar.

89 It must be borne in mind that the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, and that that global assessment entails a degree of interdependence between the factors taken into account (see judgment of 26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 24 and the case-law cited; see also, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

90 Furthermore, the more distinctive the trade mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).

91 The Board of Appeal found, in the present case, that there was no likelihood of confusion. After reiterating its findings regarding the identity of the services at issue, the similarity of the signs at issue and the high level of attention of the relevant public, it observed that, in the light of those services, the visual aspect of those signs played a greater role in the global assessment of that likelihood of confusion. It also found, in essence, that the relevant public, the level of attention of which was high, would perceive the clear phonetic and visual differences between those signs, and even an absence of any conceptual similarities, and would be able, in view of the fact that those signs create very different overall impressions, to distinguish between them. Furthermore, it pointed out that the relevant public’s perception that the signs in question are different could not be offset by any enhanced distinctiveness acquired through use which the earlier mark might have.

92 The applicant submits that the Board of Appeal erred in finding that there was no likelihood of confusion. It maintains that the Board of Appeal did not correctly apply the principle of interdependence, since it concluded that there was no likelihood of confusion despite having found that the services in question were identical and the signs at issue were similar. Furthermore, the applicant complains that the Board of Appeal did not examine the enhanced distinctiveness of the earlier mark. It states that the case-law cited in the contested decision does not justify the conclusion that that aspect is irrelevant. It also calls into question the Board of Appeal’s findings relating to the lesser importance of the phonetic similarity of the signs at issue in the context of the global assessment of the likelihood of confusion and submits that, in any event, a likelihood of confusion should have been found to exist on account of the identity of the services at issue and the low degree of visual similarity between those signs. Lastly, it alleges that the Board of Appeal made a number of errors in assessing the differences between the signs in question and submits that it failed to have regard to the principle of imperfect recollection in the present case and that an independent distinctive role should have been given to the word element ‘ios’ in the mark applied for.

94 As a preliminary point, even assuming that some of the applicant’s arguments seek a declaration that the Board of Appeal infringed the obligation to state reasons on the ground that, in the applicant’s view, the contested decision contains contradictions as regards the assessment of the similarity of the signs at issue, does not refer to any weighing up of the relevant factors in the application of the principle of interdependence and does not refer to any examination of the earlier mark’s enhanced distinctiveness, it must be pointed out that such arguments cannot succeed.

95 Although it is true that the Board of Appeal could have been clearer in its reasoning, the part of the contested decision that deals with the global assessment of the likelihood of confusion (see paragraphs 64 to 80 of the contested decision) makes it possible to understand that the Board of Appeal carried out the global assessment of the likelihood of confusion taking all the relevant factors into account. The Board of Appeal emphasised the differences between the signs at issue and the high level of attention of the relevant public, without, however, denying that there were similarities between those signs, which were established in the part of that decision that deals with the comparison of the signs, and without disregarding the fact that the services covered by the signs at issue were identical.

96 Furthermore, it is not apparent from the contested decision that the Board of Appeal carried out, in the context of the global assessment of the likelihood of confusion, a fresh assessment of the similarity of the signs at issue or disregarded the findings set out in that regard in paragraphs 30 to 61 of that decision.

97 As regards the earlier mark’s enhanced distinctiveness acquired through use, which the applicant invokes as a factor that is capable of increasing the probability of a likelihood of confusion, it is clear from paragraph 63 of the contested decision that the Board of Appeal took into account the situation most favourable to the applicant, namely that in which it was accepted that such distinctiveness existed. Next, in the context of the global assessment of the likelihood of confusion (see paragraphs 76 and 77 of that decision), the Board of Appeal found, in essence, that the role of the earlier mark’s enhanced distinctiveness in establishing whether there was a likelihood of confusion was offset by the fact that the relevant public had a high level of attention, which enabled it to grasp the differences between the signs at issue.

98 It is true that the Board of Appeal referred, in paragraphs 76 and 77 of the contested decision, to a number of decisions of the Court of Justice and the General Court (judgment of 12 October 2004, Vedial v OHIM, C‑106/03 P, EU:C:2004:611; order of 24 September 2007, Torres v OHIM and Bodegas Muga, C‑405/06 P, not published, EU:C:2007:546; and judgment of 7 May 2009, Klein Trademark Trust v OHIM — Zafra Marroquineros (CK CREACIONES KENNYA), T‑185/07, EU:T:2009:147) which concerned cases in which it was held that there was no similarity between the signs at issue and that the question of enhanced distinctiveness through use was, in essence, irrelevant, since a likelihood of confusion had to be excluded simply by reason of the fact that the condition relating to the identity or similarity of the signs had not been fulfilled. However, in view of the clear wording of paragraph 63 of the contested decision, the presence in that decision of those references to case-law is not in itself sufficient for it to be held that the Board of Appeal did not take any enhanced distinctiveness that the earlier mark might have into account in the context of the global assessment of the likelihood of confusion. Such an argument on the part of the applicant cannot therefore succeed.

99 The analysis in paragraphs 64 to 80 of the contested decision, which deals with the global assessment of the likelihood of confusion, must therefore be understood as meaning that the Board of Appeal ruled out such a likelihood of confusion on the ground that the identity of the services, the at least average degree of phonetic similarity between the signs, the low degree of visual similarity between those signs and any enhanced distinctiveness the earlier mark might have were offset by the fact that the relevant public, the level of attention of which is high, would easily grasp the visual differences between the signs at issue, in particular as regards the figurative elements of those signs, by the fact that the phonetic similarity played a less important role than that of the visual similarity, on account of the way in which services at issue are used, and by the lack of conceptual similarity.

100 It is therefore necessary to examine whether the Board of Appeal was right in finding that there was no likelihood of confusion.

101 In that regard, in the first place, it must be borne in mind that the Board of Appeal erred in so far as it found that the signs at issue were visually similar to a low degree, instead of finding that, considered as a whole, they were visually different (see paragraphs 50 to 69 above). However, that error cannot call into question the Board of Appeal’s finding as regards the lack of a likelihood of confusion since it is a factor which reinforces the reasoning that makes it possible to conclude that there is no such likelihood of confusion.

102 In the second place, it must be pointed out that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market (judgments of 3 July 2003, Alejandro v OHIM — Anheuser-Busch (BUDMEN), T‑129/01, EU:T:2003:184, paragraph 57, and of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).

103 In the present case, as is apparent from the contested decision, the services at issue are often used on the basis of written offers or via the internet, with the result that the visual differences are of more importance than the phonetic similarities (see, to that effect, judgment of 26 November 2015, Junited Autoglas Deutschland v OHIM — United Vehicles (UNITED VEHICLEs), T‑404/14, not published, EU:T:2015:893, paragraph 44).

104 The applicant’s argument that, in the industry concerned, recommendations by satisfied customers are made to a decisive extent by word of mouth, must be held to be unsubstantiated. In any event, even though it cannot be ruled out that there may be oral communication regarding the mark and the services covered by that mark in an after-sales context, that cannot call into question the Board of Appeal’s finding that the choice of service in question is generally made visually.

105 Consequently, contrary to what the applicant submits, the Board of Appeal did not err in according, in the context of the global assessment of the likelihood of confusion, more weight to the visual aspect of the signs at issue.

106 In the third place, it must be borne in mind that, although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgments of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70, and of 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279, paragraph 70).

107 In the present case, it must be pointed out that the different overall visual impressions created by the signs at issue cannot be offset, in the context of the global assessment of the likelihood of confusion, by an at least average degree of phonetic similarity between the signs, the identity of the services at issue and any enhanced distinctiveness the earlier mark might have, with the result that there is no likelihood of confusion.

108 The clear visual differences between the signs will not escape the notice of the relevant public, the level of attention of which is high, particularly because, in view of the services in question, the visual differences will be more important than the phonetic similarities. Furthermore, the relevant public will perceive that those signs are not conceptually similar. In those circumstances, that public will be capable of distinguishing between those signs despite their phonetic similarity and the identity of the services at issue and that is so, in the light of its high level of attention, even if the earlier mark has a high degree of distinctiveness acquired through use.

109 The finding that there is no likelihood of confusion cannot be called into question by the other arguments put forward by the applicant.

110 In so far as the applicant submits that the Board of Appeal did not correctly apply the principle of interdependence on the ground that it found that there was no likelihood of confusion despite finding that the services in question were identical and the signs at issue were similar, it must be borne in mind that the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (see paragraph 16 above), which also include factors such as the relevant public’s level of attention or the weight to be given to the visual, phonetic or conceptual aspects of the signs at issue. In addition, it follows that, contrary to what the applicant submits, the principle of interdependence does not automatically give rise to a likelihood of confusion where the services in question are identical and there is some degree of visual and phonetic similarity between the signs at issue.

111 As regards the applicant’s arguments relating to alleged errors made by the Board of Appeal as regards the comparison of the signs at issue in the context of the global assessment, it must be pointed out that the applicant’s arguments relating to the irrelevance of the beginning of the sign in short signs and to the difference in a single element in short signs have already been examined in the context of the comparison of the signs at issue (see paragraphs 53 to 63 above). Those arguments must therefore be rejected for the same reasons as those set out in the context of that analysis.

112 In so far as the applicant calls into question, in essence, the Board of Appeal’s taking into consideration of the figurative elements of the signs at issue and of the word element ‘finance’ in the mark applied for in the context of the global assessment of the likelihood of confusion, the Court refers to the findings in paragraphs 26 to 49 above, from which it is clear that the Board of Appeal was right in taking all the elements of the signs at issue into consideration in comparing those signs and not confining itself to comparing their dominant and most distinctive elements ‘eos’ and ‘ios’.

113 Furthermore, in so far as the applicant invokes the principle of imperfect recollection in order to establish that the relevant public will not recall the figurative elements of the signs at issue, it is true that the average consumer only rarely has a chance to compare the various marks directly and must therefore rely on his imperfect recollection of them (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26) and that that principle is applicable, as the applicant points out, even with regard to a public with a high level of attention (judgment of 21 November 2013, Equinix (Germany) v OHIM — Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraph 54).

114 However, in the present case, the figurative elements of the signs at issue will not go unnoticed in view of their colours, size and position and constitute, both in the earlier mark and in the mark applied for, different specific graphic wholes (see paragraphs 42, 65 and 66 above). Consequently, the relevant public, the level of attention of which is high, will perceive the differences between the signs which relate to their figurative elements, even though it has only an imperfect recollection of those signs. It also follows, as has already been held, that those elements reinforce the visual difference that exists between the word elements ‘eos’ and ‘ios’ in those signs (see paragraph 64 above).

115 As regards the applicant’s argument alleging that the word element ‘ios’ has an independent distinctive role in the mark applied for, it must be stated that the principle established by the Court of Justice in the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), to which the judgment of 22 October 2015, BGW (C‑20/14, EU:C:2015:714, paragraph 40), cited by the applicant refers, cannot be applied in the present case. None of the elements in the mark applied for corresponds to the earlier mark. If, by that argument, the applicant seeks a declaration that the word element ‘ios’ in the mark applied for dominates on its own the image of that mark, the Court refers to the findings in paragraphs 26 to 49 above.

116 In the light of the foregoing, it must be held that the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 by finding that there was no likelihood of confusion in the present case. The applicant’s single plea in law must therefore be rejected.

117 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.

118 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> EOS Deutscher Inkasso-Dienst v EUIPO - IOS Finance EFC (IOS FINANCE) (EU trade mark - Judgment) [2019] EUECJ T-583/17 (12 June 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T58317.html Cite as: ECLI:EU:T:2019:403, EU:T:2019:403, [2019] EUECJ T-583/17

Court of Justice of the European Communities (including Court of First Instance Decisions)