Corporacio Catalana de Mitjans Audiovisuals v EUIPO - Dalmat (LaTV3D) (EU trade mark - Judgment) [2020] EUECJ T-135/19 (06 February 2020)

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(EU trade mark — Opposition proceedings — Application for EU word mark LaTV3D — Earlier national word mark TV3 — Relative ground for refusal — Likelihood of confusion — Similarity of the services — Similarity of the signs — Distinctive character — Article 8(1)(b) of Regulation (EU) 2017/1001)

Corporació Catalana de Mitjans Audiovisuals, SA, established in Barcelona (Spain), represented by J. Erdozain López, lawyer,

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 13 December 2018 (Case R 874/2018‑2), relating to opposition proceedings between Corporació Catalana de Mitjans Audiovisuals and Mr Dalmat,

composed of D. Spielmann, acting as President, Z. Csehi and O. Spineanu-Matei (Rapporteur), Judges,

having regard to the designation of another Judge to complete the Chamber as one of its Members was prevented from acting,

1 On 8 July 2016, Mr Stéphane Dalmat 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 in Classes 38 and 41 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 41: ‘Education, entertainment and sports; Publishing and reporting; Translation and interpretation’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 14/2017 of 23 January 2017.

5 On 6 April 2017, Televisió de Catalunya, SA, 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 all of the services referred to in paragraph 3 above.

6 The opposition was based on the earlier Spanish word mark TV3, registered on 10 May 2010 under number 2909416 and covering, inter alia, services in Classes 38 and 41 corresponding, for each of those classes, to the following description:

– Class 38: ‘Telecommunication services; Radio and TV broadcasting; Cable TV; transmissions via satellite; Press agency services; Information agency; services (news); Supply of discussion forums by global informatics networks’;

– Class 41: ‘Edition and production services of radio and television programs; montage and production of radio and television programmes; movies (films) production; reporter services; photographic reports; organisation and production of shows; televised entertainment; sports and cultural services; on-line electronic publications of books and newspapers’.

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

8 By decision of 14 March 2018, the Opposition Division rejected the opposition in its entirety.

9 On 14 May 2018, the applicant, Corporació Catalana de Mitjans Audiovisuals, SA, having succeeded to the rights of Televisió de Catalunya, filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.

10 By decision of 13 December 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In essence, the Board of Appeal found, first, that the relevant territory is Spain and that the services covered are directed at both the general public and professional clients, with the result that the level of attention varies from average to high, depending on the service concerned and bearing in mind that, if a service is directed at both of those groups, the likelihood of confusion must be assessed from the point of view of the group with the lowest level of attention. Second, it held that the ‘translation and interpretation’ services in Class 41, covered by the mark applied for, are in no way similar to the services protected by the earlier mark, while the other services in question are partly identical and partly similar, to different degrees. Third, it pointed out that the signs at issue both contain the very weakly distinctive element ‘tv3’, but, in the mark applied for, the number 3 and the letter ‘d’ form the compound expression ‘3d’, meaning three-dimensional, which led it to conclude that the signs are visually and phonetically similar to a low degree, whereas conceptually they are different. Fourth, it stated that, having regard to the meaning of the earlier mark, it has a low degree of inherent distinctiveness in relation to the services concerned and that the applicant did not file any evidence to establish enhanced distinctiveness of the earlier mark as a result of the relevant public’s recognition of it. On that basis, the Board of Appeal found — as the Opposition Division had done — that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It contests the Board of Appeal’s findings relating to the comparison of the services concerned in respect of which no similarity was found, to the comparison of the signs at issue and to the inherent distinctiveness of the earlier mark, and the conclusions which the Board of Appeal drew, in its global assessment of the likelihood of confusion, from its earlier findings.

15 Under Article 8(1)(b) of Regulation 2017/1001, 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, 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier 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 As regards the relevant public, the Court must uphold the Board of Appeal’s findings, which have not been challenged by the parties and were free of errors, that (i) the relevant territory is Spain, since the earlier mark is a Spanish mark; (ii) the services covered are directed at the general public and professional clients, with the result that the level of attention varies from average to high; and (iii) where the relevant public is made up of consumers who are part of the general public and professionals, the group with the lowest level of attention must be taken into account.

18 In the present case, in paragraph 29 of the contested decision, the Board of Appeal, explicitly endorsing the conclusions reached by the Opposition Division in its decision, took the view that the services covered by the signs at issue are partly identical and partly similar to different degrees, with the exception of the ‘translation and interpretation’ services in Class 41 claimed by the mark applied for, which are dissimilar to the services protected by the earlier mark. In paragraphs 30 and 31 of the contested decision, the Board of Appeal rejected the arguments put forward before it by the applicant in asserting that there is a similarity between the ‘translation and interpretation’ services claimed by the mark applied for and the services protected by the earlier mark.

19 As a preliminary observation, it should be pointed out that, as the parties acknowledged at the hearing, in relation to the services at issue other than the ‘translation and interpretation’ services (‘the other services’), the Board of Appeal simply adopted the Opposition Division’s reasoning. In that regard, it should be noted that, according to case-law, when the Board of Appeal confirms some aspects of the Opposition Division’s decision, and given the continuity in terms of function between the Opposition Divisions and the Boards of Appeal, to which Article 71(1) of Regulation 2017/1001 attests, that decision, together with the statement of reasons pertaining to those aspects, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and enables the Court to carry out fully its review as to whether the Board of Appeal’s assessment was well founded (see judgment of 25 October 2012, riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, paragraph 19 and the case-law cited). Consequently, although the Board of Appeal, as regards the other services, referred to there being an identity or similarity ‘to different degrees’, without providing details, on reading the Opposition Division’s decision it should be concluded that, as the parties agreed at the hearing, the Board of Appeal intended to hold that the other services are identical, with the exception of the ‘education’ services in Class 41, covered by the mark applied for, which are similar to a low degree to the services ‘on-line electronic publications of books and newspapers’, also in Class 41, covered by the earlier mark.

20 That having been said, it is necessary to rule on the applicant’s argument that the ‘translation and interpretation’ services in Class 41 are not different, but are similar to a number of services covered by the earlier mark, such as services in respect of ‘televised entertainment’, ‘montage and production of radio and television programmes’ and ‘movies (film) production’, also in Class 41.

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. 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 It should be noted that, as the Board of Appeal acknowledged in paragraph 31 of the contested decision, while ‘translation and interpretation’ services may be necessary for the provision of certain services covered by the earlier mark mentioned in paragraph 20 above, they are nevertheless specific services and are usually provided by either professional individuals or undertakings specialised in the provision of such services. In addition, ‘translation and interpretation’ services are normally covered by separate contracts.

24 As regards the applicant’s argument that, in essence, the ‘translation and interpretation’ services are complementary to services covered by the earlier mark on the ground that the applicant intends, like the other party to the proceedings before the Board of Appeal, to use those services in the course of producing audiovisual material and of the production of programmes, first, it should be noted that, since the specific ways in which services are provided may vary over time and according to the wishes of the proprietors of the marks at issue, it is inappropriate to take them into account for the purposes of analysing whether there will be a likelihood of confusion between the marks (see, to that effect, order of 22 March 2012, Emram v OHIM, C‑354/11 P, not published, EU:C:2012:167, paragraph 73 and the case-law cited).

25 Second, according to case-law, in order to establish whether services are complementary, it is necessary to determine whether there is a close connection between the services at issue, so that the relevant public may think that they are provided by the same undertaking (see, to that effect, order of 8 May 2014, OHIM v Sanco, C‑411/13 P, not published, EU:C:2014:315, paragraph 54). However, as is correctly observed, in essence, by EUIPO, the applicant does not explain how the mere fact that the ‘translation and interpretation’ services covered by the mark applied for may often be used together with some of the services covered by the earlier mark is sufficient to establish a close connection of that kind, even though the nature of those services is very different and the skills that an undertaking requires in order to provide one or other of those categories of services are very different. For example, the applicant fails to explain why the relevant public, when watching a programme falling within a ‘televised entertainment’ service whose content may have been translated or interpreted, would think that that translation or interpretation was carried out by the same undertaking as that which produced the programme in question.

26 In the light of the foregoing considerations, it is appropriate to reject the applicant’s arguments and to uphold the Board of Appeal’s finding that there is no similarity between the ‘translation and interpretation’ services covered by the mark applied for and the services protected by the earlier mark.

27 The applicant submits that the Board of Appeal deconstructed the signs at issue in an artificial manner, and that it ascribed too little importance to the elements which they have in common on the basis that these are not very distinctive, while ascribing too much importance to the elements which are present only in the mark applied for. The applicant argues that the approach taken by the Board of Appeal amounts to refusing to acknowledge that the earlier mark has any distinctive character and to ignoring the principle that the mere fact that one element of a compound sign is of weak distinctive character does not mean that that element cannot be dominant, or that it is negligible. According to the applicant, the elements ‘la’ and ‘d’ in the mark applied for are not liable appreciably to weaken the visual and phonetic similarity resulting from the fact that the earlier mark is found in the mark applied for. In that regard, it contends that the Board of Appeal was wrong to apply the judgment of 20 February 2018, Deutsche Post v EUIPO — bpost (BEPOST) (T‑118/16, not published, EU:T:2018:86), which concerned facts that are not comparable to those of the present case. Moreover, the elements ‘la’ and ‘d’ do not give rise to a conceptual difference between the signs.

28 EUIPO states that, while the Board of Appeal observed that the element ‘tv’, which is common to the signs at issue, is of weak distinctive character, it did not treat it as negligible. Nevertheless, the weight of the other elements making up the signs was, EUIPO submits, rightly evaluated in the light of the weak distinctive character of the element ‘tv’, and of the fact that the number ‘3’, which is also common to the signs at issue, would be perceived differently in relation to each one, given that, in the mark applied for, it would be read together with the letter ‘d’, and thus as referring to the idea of three-dimensionality, while, in the earlier mark, it would be read as indicating television channel No 3. EUIPO contends that the reasoning in the judgment of 20 February 2018, BEPOST (T‑118/16, not published, EU:T:2018:86), could properly be applied to the facts of the present case. Finally, it argues that the mark applied for contains a concept that is strikingly different from that conveyed by the earlier mark, and accordingly that there is a conceptual difference capable of counteracting the visual and phonetic similarity between the signs.

29 It should be recalled that 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).

30 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 of 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 Finally, it should be observed that the greater or lesser degree of distinctiveness of the elements of the marks at issue is one of the relevant factors in assessing the similarity of the signs (see, to that effect, judgment of 14 September 2017, Aldi Einkauf v EUIPO — Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 47 and the case-law cited).

32 In that regard, according to case-law, for the purpose of determining the distinctiveness of a mark or of an element of a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 14 September 2017, Alpenschmaus, T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).

33 In the present case, it is true that, in paragraph 35 of the contested decision, the Board of Appeal recalled the case-law according to which, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he or she will break it down into elements which, for him or her, suggest a specific meaning or which resemble words known to him or her (see judgment of 25 November 2014, UniCredit v OHIM, T‑303/06 RENV and T‑337/06 RENV, EU:T:2014:988, paragraph 52 and the case-law cited). It is also true that, in paragraph 37 of the contested decision, the Board of Appeal focused on the elements ‘tv’ and ‘3d’ and concluded that they are of weak distinctive character in relation to the services covered, as they would very readily be understood to mean ‘television’ and ‘three-dimensional’. Furthermore, in paragraph 38 of that decision, the Board of Appeal added that the number 3 would be perceived differently in the signs at issue, since, in the earlier mark, it refers to the specific number of a television channel, whereas, in the mark applied for, it is combined with the letter ‘d’ to mean three-dimensional.

34 However, it cannot be held that the Board of Appeal failed to examine each of the signs at issue taken as a whole. Indeed, in paragraph 39 of the contested decision, it very clearly stated that the signs were to be compared in their entirety, from a visual, phonetic and conceptual standpoint, which it proceeded to do in paragraphs 40 to 42 of that decision.

35 In that regard, first, concerning the visual and phonetic comparison, the Board of Appeal, in coming to the conclusion that there is only a low degree of similarity, noted in particular, in paragraphs 41 and 42 of the contested decision, that the signs at issue, while both containing the element ‘tv3’, differ significantly, since the mark applied for begins with the element ‘la’ and ends with the element ‘d’, which are not present in the earlier mark. Accordingly, in the Board of Appeal’s view, the signs differ, inter alia, in length, structure, number of syllables and rhythm when they are pronounced.

36 Second, as regards the conceptual comparison, the Board of Appeal noted that the earlier mark refers to the idea of ‘TV channel number 3’, whereas the mark applied for refers to the idea of ‘three-dimensional television’. Thus, in paragraph 42 of the contested decision, the Board of Appeal took the view that, although they share the concept of television, the signs at issue, each taken as a whole, convey different concepts to the relevant public.

37 It is therefore clear that, in its comparison of the signs at issue, the Board of Appeal, after having ruled on the distinctiveness of the elements of which they are made up, concluded, in essence, that none of those elements is dominant or negligible. Accordingly, the applicant’s argument that the Board of Appeal considered the element ‘tv3’ to be negligible, in denying it de facto any distinctive character, must be rejected.

38 However, it is necessary to examine whether, in its visual, phonetic and conceptual comparison of the signs at issue as a whole, the Board of Appeal made any of the other errors which the applicant alleges were made. In that regard, since the signs are purely word signs, the visual and phonetic aspects can be dealt with together.

39 In the first place, it should be noted that, according to case-law, where the word which constitutes the earlier mark is fully contained in the mark applied for, this is an indication that the two marks are similar (judgment of 20 April 2018, holyGhost v EUIPO — CBM (holyGhost), T‑439/16, not published, EU:T:2018:197, paragraph 33; see, also, to that effect, judgments of 11 November 2009, REWE-Zentral v OHIM — Aldi Einkauf (Clina), T‑150/08, not published, EU:T:2009:431, paragraph 38, and of 21 March 2011, Visti Beheer v OHIM — Meister (GOLD MEISTER), T‑372/09, not published, EU:T:2011:97, paragraph 27).

40 In the present case, first, it should be noted that the sign TV3, which constitutes the earlier mark, is fully contained in the sign LaTV3D, which constitutes the mark applied for.

41 Second, since the entirety of the earlier mark is included in the mark applied for, the difference created by the addition of elements that are not more distinctive than the common element ‘tv3’ is not so large as to significantly reduce the visual and phonetic similarity created by the common element.

42 In addition, while it is true that, as the Board of Appeal pointed out in paragraph 40 of the contested decision, the signs at issue differ in their first part, to which, as a general rule, the relevant public attaches greater importance, that consideration cannot, however, hold in all cases or cast doubt on the principle that the assessment of the similarity of the marks must take account of the overall impression that they create (see judgment of 16 September 2009, Hipp & Co v OHIM-Laboratorios Ordesa (Bebimil), T‑221/06, not published, EU:T:2009:330, paragraph 60 and the case-law cited). Furthermore, the significance of the first part of a sign cannot be assessed independently of the facts of the case in point, and in particular of the specific characteristics of the signs at issue (see, to that effect, judgment of 13 April 2011, United States Polo Association v OHIM — Textiles CMG (U.S. POLO ASSN.), T‑228/09, not published, EU:T:2011:170, paragraph 37). In that regard, it should be pointed out that, in the mark applied for, the first part, which precedes the element ‘tv3’ that is common to the signs at issue, is simply the definite article ‘la’. Accordingly, it cannot be found that it is specifically the first part of the mark applied for that will attract the relevant public’s attention in the overall impression created by the mark or in its imperfect recollection of the mark.

43 Moreover, it follows from case-law that, in respect of word marks which are relatively short, such as those in the present case, the central elements are as important as the elements at the beginning and end of the sign (judgment of 20 April 2005, Krüger v OHIM — Calpis (CALPICO), T‑273/02, EU:T:2005:134, paragraph 39). Accordingly, for the purposes of comparing the signs at issue, it is irrelevant that the common element ‘tv3’ appears in the centre, and not at the beginning, of the mark applied for. That is all the more true since the first element of the mark applied for is not very distinctive, in that it is only the article ‘la’, which, moreover, is liable to highlight the word it is introducing.

44 In the second place, it is true that, according to the case-law referred to by the Board of Appeal in paragraph 40 of the contested decision, the shorter the signs are, the easier it is for the general public to perceive clearly the differences between them, especially where the common elements are not very distinctive (see judgment of 20 February 2018, BEPOST, T‑118/16, not published, EU:T:2018:86, paragraph 65 and the case-law cited).

45 However, it follows from the case-law concerning short signs that it is only when the differences between such signs may lead to different overall impressions that the similarity between them is appreciably reduced (see, to that effect, judgment of 3 June 2015, Levi Strauss v OHIM — L&O Hunting Group (101), T‑604/13, not published, EU:T:2015:351, paragraph 35).

46 Since the additional elements of the mark applied for are not particularly distinctive, as they comprise only the feminine definite article and a letter of the alphabet, their presence is not such as to reduce appreciably the visual and phonetic similarity of the signs at issue resulting from the common element ‘tv3’.

47 Thus, contrary to what EUIPO contends, the applicant is justified in maintaining that the circumstances of the present case are not comparable to those in the case which gave rise to the judgment of 20 February 2018, BEPOST (T‑118/16, not published, EU:T:2018:86). It is true that the applicant is wrong to criticise the Board of Appeal for having relied on a case that concerned two figurative marks, since, in actual fact, in the relevant part of that judgment, the word signs BEPOST and POST were compared. However, in that case, the Board of Appeal, whose view was confirmed by the General Court, had, in reaching its conclusion that there was a low degree of similarity between the signs at issue, relied in particular on the finding that, in the mark applied for, BEPOST, the first element ‘be’ was more distinctive than the element ‘post’, which coincided with the earlier mark POST (see, to that effect, judgment of 20 February 2018, BEPOST, T‑118/16, not published, EU:T:2018:86, paragraphs 45, 57 and 69). By contrast, in the present case, the signs at issue do not share only the element ‘tv’, the distinctiveness of which can be considered to be as weak as that of the element ‘post’ in the abovementioned case, but share the element ‘tv3’, which is more distinctive than the element ‘post’.

48 In addition, it is clear from case-law that, even in respect of short signs, what matters in the assessment of the similarity of two word marks is the presence, in each of them, of several letters in the same order. Consequently, the fact that, as is the case here, the earlier mark is entirely contained in the mark applied for is a significant indication that the marks are similar even though the signs are short (see, to that effect, judgment of 21 January 2015, Copernicus-Trademarks v OHIM — Blue Coat Systems (BLUECO), T‑685/13, not published, EU:T:2015:38, paragraphs 32 to 34 and the case-law cited).

49 In the light of the considerations set out in paragraphs 39 to 48 above, it should be concluded that the Board of Appeal was wrong to classify the visual and phonetic similarity of the signs at issue as low. The differences that the elements ‘la’ and ‘d’, which appear only in the mark applied for, introduce between the signs in terms of their length, number of syllables and rhythm when they are pronounced are not capable of significantly reducing the visual and phonetic similarity of the signs resulting from the common element ‘tv3’, which is not less distinctive than the other elements. While that similarity is not high, as the applicant claims, it must nevertheless be classified as average.

50 As regards the conceptual comparison of the signs at issue, it is true that, as EUIPO submits, the Board of Appeal stated that the mark applied for denotes ‘three-dimensional television’ whereas the earlier mark denotes ‘television channel No 3’.

51 However, first, it should be noted that, as the Board of Appeal accepted in paragraph 42 of the contested decision, the presence of the element ‘tv’ in the signs at issue shows that they share the concept of ‘television’. Contrary to the view taken by the Board of Appeal, the existence of that common element makes it possible to find that the signs are conceptually similar.

52 Second, it should be pointed out that the coincidence between the signs at issue is not limited to the element ‘tv’, but also includes the number 3. In that regard, it should be noted that, in the mark applied for, the number 3 is next to both the element ‘tv’, which precedes it, and the letter ‘d’, which follows it. In other words, the structure of that mark is not characterised by the presence of spaces or hyphens before the number 3 which would result in that number being connected only to the letter ‘d’, and not also to the element ‘tv’ which precedes it, as in the earlier mark. Accordingly, when faced with the mark applied for, the relevant public, notwithstanding the additional elements of which that mark is made up, may ascribe a conceptual meaning to the combination of the element ‘tv’ with the number 3. The relevant public may associate that meaning with the meaning of the earlier mark, which has the same combination, it being understood that, according to case-law, the relevant public only rarely has the chance to make a direct comparison between the different marks but must place its trust in the imperfect picture of them that it has kept in its mind (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

53 Third, it should be noted that, in any event, the idea of three-dimensionality arising from the element ‘3d’ which can be identified within the mark applied for merely describes a characteristic which programmes broadcast by a television channel may have. Thus, the addition of that idea does not generate an overall expression that has a completely different meaning from that conveyed by the earlier mark. It follows that, contrary to the view taken by the Board of Appeal, the signs at issue have an average degree of conceptual similarity, since they share the element ‘tv3’ and both refer to the idea of television.

54 Moreover, it cannot be ruled out that the relevant public may think that it is television channel No 3 which provides three-dimensional services. In that regard, since there is no space between the number 3 and the letter ‘d’ in the mark applied for, it is possible that that mark could be interpreted as including a play on words whereby the mark, while avoiding repetition of the number 3, would mean ‘the three-dimensional television channel No 3’.

55 Consequently, the Board of Appeal’s findings on the similarity of the signs at issue must be set aside in part and it must be concluded that the signs are similar visually, phonetically and conceptually to an average degree.

56 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

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

58 As a preliminary remark, it should be confirmed that there is no likelihood of confusion with regard to the ‘translation and interpretation’ services in Class 41 covered by the mark applied for, which are not similar to the services protected by the earlier mark (see paragraph 26 above). According to established case-law, 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) and, in relation to the abovementioned services, the second one is not satisfied in the present case.

59 As regards the other services, the Board of Appeal took the view that there is no likelihood of confusion, including in respect of services that are identical or similar, on account of the relevant public’s level of attention, the very weak distinctiveness of the ‘tv’ element common to the signs at issue, the weak distinctiveness of the earlier mark, and, in essence, the fact that, the low visual and phonetic similarity that the signs at issue may have, despite their differences, is neutralised by their conceptual differences.

60 The applicant submits, in essence, that the earlier mark, since it has been registered, must be regarded as being distinctive and that, even if that distinctiveness is weak, that does not prevent a likelihood of confusion being found.

61 EUIPO responds that the Board of Appeal found that the earlier mark has inherently low distinctiveness and that there is no evidence that the distinctiveness of that mark increased as a result of the relevant public’s recognition of it. In any event, according to EUIPO, even if the earlier mark were of average distinctiveness there would still be no likelihood of confusion, particularly given the weakness of the common element ‘tv’ and the conceptual differences.

62 In the first place, it should be noted that the Board of Appeal failed to take into account the consequences of the fact that the entirety of the earlier mark is contained in the mark applied for and that the additional elements ‘la’ and ‘d’ in the mark applied for are not such as to attract the public’s attention more than the element ‘tv3’, which is common to the signs at issue, even if the latter element were to be considered to be weakly distinctive.

63 It follows from that omission that the Board of Appeal wrongly underestimated the visual and phonetic similarity of the signs and it wrongly denied the existence of a conceptual similarity between them (see paragraphs 39 to 55 above).

64 In the second place, the Board of Appeal was also wrong to take the view that the conceptual differences between the signs at issue neutralise their visual and phonetic similarities. In the present case, as noted in paragraphs 50 to 54 above, conceptually the signs are not different, but similar.

65 Furthermore, it should be noted that the facts of the present case differ from those of the case giving rise to the judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25), which EUIPO referred to at the hearing to contend that the Board of Appeal correctly applied the ‘neutralisation theory’ in the present case. In the abovementioned case, it was found that the visual and phonetic similarities between the signs PICARO and PICASSO were neutralised by the conceptual differences between the signs, the sign PICASSO being immediately recognised by the relevant public as the name of the famous painter Pablo Picasso and therefore having a clear and specific semantic content. By contrast, in the present case, the earlier mark is included in the mark applied for and neither of the signs at issue refers to someone or something famous.

66 In the third place, according to the case-law relied on by the applicant, any finding that the earlier mark has weak distinctive character does not preclude a finding that there is a likelihood of confusion. 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. Thus, even in a case involving a weakly distinctive earlier mark, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

67 In the present case, first, contrary to the view taken by the Board of Appeal, the signs at issue are visually, phonetically and conceptually similar to an average degree.

68 Second, as the Board of Appeal accepted, the other services are identical, with the exception of the ‘education’ services covered by the mark applied for, which are similar to a low degree to the services ‘online electronic publications of books and online newspapers’ covered by the earlier mark (see paragraph 19 above).

69 Third, the level of attention of the public to be taken into account is average, except in relation to the disputed services that might be addressed only to professionals; such services do not include those services covered by the exception mentioned in paragraph 68 above, which are undoubtedly also directed at the general public.

70 In those circumstances, it must be concluded that, as regards the other services, there is a likelihood of confusion, even if the distinctive character of the earlier mark may be weak. As the applicant rightly submits, in view of the factors that have just been highlighted, the relevant public may believe that those services originate from the same undertaking or from economically linked undertakings.

71 Consequently, the applicant’s single plea in law should be upheld in respect of the other services and the contested decision should be annulled to that extent. However, the action must be dismissed in so far as it concerns the ‘translation and interpretation’ services designated in the trade mark application.

72 Under Article 134(3) of the Rules of Procedure of the General Court, each party is to bear its own costs where each party succeeds on some and fails on other heads. In the present case, since the contested decision must be annulled only in part, it is appropriate to order the parties to bear their own costs.

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2018 (Case R 874/2018‑2) in so far as it ruled out the existence of a likelihood of confusion in relation to the services other than ‘translation and interpretation’ services in Class 41 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;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Corporacio Catalana de Mitjans Audiovisuals v EUIPO - Dalmat (LaTV3D) (EU trade mark - Judgment) [2020] EUECJ T-135/19 (06 February 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T13519.html Cite as: EU:T:2020:36, [2020] EUECJ T-135/19, ECLI:EU:T:2020:36

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