Scorify v EUIPO - Scor (SCORIFY) (EU trade mark - Judgment) [2020] EUECJ T-328/19 (08 July 2020)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark SCORIFY — Earlier EU word mark SCOR — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Scorify UAB, established in Vilnius (Lithuania), represented by V. Viešūnaitė, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Botis and H. O’Neill, acting as Agents,

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

Scor SE, established in Paris (France), represented by T. de Haan and C. de Callataÿ, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 March 2019 (Case R 1639/2018‑4), relating to opposition proceedings between Scor and Scorisk,

composed of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 23 October 2019,

having regard to the response of the intervener lodged at the Court Registry on 21 October 2019,

having regard to the change in the composition of the Chambers of the General Court,

having regard to the fact that no request for a hearing was submitted by the 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 2 January 2017, Scorisk UAB, now Scorify UAB, the applicant, 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 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 various services in the fields of insurance, finance and real estate, as referred to in paragraph 1 of the decision of the Fourth Board of Appeal of 26 March 2019 (Case R 1639/2018‑4) (‘the contested decision’).

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 32/2017 of 16 February 2017.

5 On 16 May 2017, the intervener, Scor SE, 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.

6 The opposition was based on, inter alia, the EU word mark SCOR, filed on 19 March 2001 and registered on 18 August 2003 under No 2 158 400, covering services in Class 36 and corresponding to the following description: ‘Insurance and reinsurance, including insurance and reinsurance advice, consultancy and information; insurance and reinsurance brokerage; actuarial services; consultancy and information relating to financial matters; cash flow management consultancy; acquisition of holdings in firms and commercial companies; consultancy and expert advice relating to financial evaluation of the tangible or intangible assets of companies; consultancy and expert advice relating to financial evaluation of business and/or welfare risks; consultancy and expert advice relating to financial evaluation of insurance and reinsurance claims’.

7 The grounds relied on in support of the opposition were, inter alia, those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 26 June 2018, the Opposition Division upheld the opposition in part and rejected the EU trade mark application for the services in respect of which registration had been sought, with the exception of the following services, which concern real estate and which have been regarded as being different to the services covered by the earlier mark: ‘real estate affairs; real estate services; real estate agency services relating to the purchase and sale of land; real estate equity sharing; housing agencies; residential real estate agency services; provision of information relating to the property market [real estate]; apartment locating services for others [permanent accommodation]; domestic property finding services; financial nominees services for the holding of properties for others; commercial real estate agency services; computerised information services relating to real estate; real estate consultancy; consultancy in the purchasing of real estate; real estate agency; estate agency; real estate agency services relating to the purchase and sale of buildings; estate agency services for sale of buildings; providing real estate information relating to property and land; real estate selection and acquisition [on behalf of others]; real estate acquisition services; assessment of real estate; providing information relating to real estate affairs, via the internet; administration of financial affairs relating to real estate; provision of information relating to property [real estate]; estate agency services for sale of businesses; estate management services relating to transactions in real property; research services relating to real estate acquisition; agency services for the selling on commission of real property; acquisition of land to be let; land acquisition services; land acquisition services [on behalf of others]; rent collection; accommodation bureaux (real estate property); provision of housing accommodation; rental of offices; rental of offices; rental of apartments and offices; apartments (arranging letting of -); rental of flats, studios and rooms; accommodation bureaux [apartments]; apartment house management; apartment house management leasing; housing management; letting agency for sheltered accommodation; rental of apartments; leases (arranging of -) [real estate property only]; management of commercial properties; arranging of leases for the rental of commercial property; renting of commercial premises; leasing and rental of commercial premises; time share management services; leasing of accommodation in a retail outlet; rental of apartments; real estate agency services for the rental of buildings; real estate agency services for the leasing of land; estate agency services for rental of buildings; real estate and property management services; agency services for the leasing of real estate property; real estate lease renewal services; real estate lease surrender services; arranging of leases and rental agreements for real estate; arranging letting of real estate; real estate lending services; leasing of freehold property; real estate administration; real estate management services relating to office premises; real estate management services relating to industrial premises; real estate management services relating to residential buildings; real estate management services relating to housing estates; real estate management services relating to commercial buildings; real estate management services relating to retail premises; real estate management services relating to building complexes; real estate management services relating to entertainment venues; real estate management services relating to shopping malls; management of real estate; letting and rental of permanent accommodation; provision of permanent housing accommodation; leasing of farms; arranging of lease agreements; property portfolio management; leasing of shopping mall space; letting of trade centres; leasing of shopping premises; providing information relating to the rental of buildings; providing information relating to the leasing of land; providing information relating to land management; estate agency services for rental of businesses; estate management; estate management services relating to horticulture; estate management services relating to agriculture; land leasing services; management of land’.

9 On 20 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By the contested decision, the Fourth Board of Appeal of EUIPO dismissed the appeal, finding that there was a likelihood of confusion in the present case.

11 In particular, the Board of Appeal observed, first, that the services in question were aimed at the general public and at professionals, both of whom will display a high degree of attention; second, that the services in question were either identical or similar to various degrees; third, that the most distinctive and dominant part of the mark applied for was the word element ‘scorify’; fourth, that the signs in question were visually and phonetically similar to an average degree and that the conceptual comparison remained neutral since the word elements of the signs in question did not evoke any concept; and, fifth, that the earlier word mark had an inherently normal distinctive character in respect of the services in question.

– carefully consider the applicant’s original pleadings and its grounds of action, and alter the decision of the Board of Appeal of EUIPO, stating that its appeal submitted to the Board of Appeal of EUIPO was justified and, therefore, reject the opposition;

– order the other party to bear all the costs paid and incurred by the applicant within the meaning of Articles 134, 139, 140 and 190 of the Rules of Procedure of the General Court.

– order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal.

15 By the first head of claim, the applicant requests the Court to ‘carefully consider [its] original pleadings and its grounds of action, and alter the decision of the Board of Appeal of EUIPO, stating that [its] appeal submitted to the Board of Appeal of EUIPO was justified [and, therefore, reject the opposition]’.

16 EUIPO submits that the first part of the applicant’s first head of claim requesting the Court to ‘carefully consider the applicant’s original pleadings’ is inadmissible. In that regard, it argues that the points of fact and of law on which the action is based must be made clear in the application itself and that a general reference to the arguments advanced in the administrative proceedings cannot replace a statement of legal arguments which constitute the basis of the application. With regard to the second part of the applicant’s first head of claim, EUIPO contends that it is inadmissible by submitting that the Board of Appeal made findings only in relation to part of the opposition, since it did not assess the existence of a likelihood of confusion in relation to all the earlier rights. It is for that reason that the Court cannot alter the contested decision.

17 By the first head of claim, the applicant requests the Court to alter the contested decision, upholding the appeal and, therefore, to reject the opposition.

18 In that regard, it should be noted that, by its first head of claim, the applicant is formally seeking the alteration of the contested decision without seeking the annulment of that decision of the Board of Appeal. In this respect, it must nevertheless be held that it is apparent from the content of the application that that head of claim necessarily comprises a request for annulment and that, by its action, the applicant seeks, in essence, annulment of the contested decision, on the ground that the Board of Appeal erred in finding that there was a likelihood of confusion in the present case (see, to that effect and by analogy, judgment of 7 November 2013, Budziewska v OHIM — Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 18 and the case-law cited).

Admissibility of the reference to the pleadings before the Board of Appeal

19 As regards the first sentence of the applicant’s first head of claim, that is to say, that the Court should ‘carefully consider [its] original pleadings’, it must be noted, as did EUIPO, that this is a general reference to the arguments submitted in the administrative proceedings before EUIPO.

20 Such a reference must be declared inadmissible in so far as, pursuant to Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure, the application must contain a summary of the pleas in law on which it is based. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for a failure to set out the essential elements of the legal argument, which must, under the provisions recalled above, appear in the application itself (see judgment of 16 November 2017, Nanogate v EUIPO (metals), T‑767/16, not published, EU:T:2017:809, paragraph 31 and the case-law cited).

21 Similarly, it is not for the Court to assume the role of the parties by seeking to identify the relevant material in the documents to which they refer (see judgment of 16 November 2017, metals, T‑767/16, not published, EU:T:2017:809, paragraph 32 and the case-law cited).

22 It follows that the applicant’s reference to the arguments submitted in the course of the administrative proceedings before EUIPO must be rejected as being inadmissible.

23 The intervener submits that Annex A.3 to the application is inadmissible in the present case on the ground that that document has been produced for the first time before the Court.

24 In that regard, it must be noted that, under Article 188 of the Rules of Procedure, the pleadings of the parties before the Court cannot change the subject matter of the proceedings before the Board of Appeal. The task of the Court is to review the legality of decisions of the Boards of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. Likewise, an applicant does not have the power to alter before the Court the terms of the dispute, as delimited in the respective claims and allegations submitted by itself and by the intervener. Furthermore, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, for the purposes of Article 72 of Regulation 2017/1001, with the result that it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (judgments of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19, and of 15 March 2018, La Mafia Franchises v EUIPO — Italy (La Mafia SE SIENTA A LA MESA), T‑1/17, EU:T:2018:146, paragraph 16).

25 In the present case, Annex A.3 to the application contains information relating to the applicant’s commercial activities. Since that information does not appear in EUIPO’s administrative file, it must be declared inadmissible, in accordance with the case-law cited in paragraph 24 above.

26 In support of the action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

27 The applicant submits that there is no likelihood of confusion in the present case and disputes the Board of Appeal’s assessments relating to the comparison of the signs in question and to that of the services in question. In particular, it argues that the element common to the marks at issue — ‘scor’ — is not distinctive or weakly distinctive and that the Board of Appeal erred in finding that the figurative element of the mark applied for is purely decorative.

29 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

30 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 that 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).

31 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

32 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 or services 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).

33 In the present case, the Board of Appeal observed that, since the earlier mark is an EU trade mark, the relevant territory is that of the European Union. Similarly, it found, in paragraph 12 of the contested decision, that the relevant financial, monetary and insurance services in Class 36 target the general public and professionals and that the general public displays a high level of attention with respect to those services.

34 The applicant submits that the services in question are aimed only at highly qualified professionals with a very high level of attention.

35 In that regard, it should be noted, as did EUIPO, that the services in question cover a very broad category of financial, monetary and insurance services. Although some of them are likely to be aimed solely at professionals, others, such as insurance services or advice and information regarding financial matters, are aimed at all consumers.

36 In the present case, the level of attention of the general public is high since the services in question are liable to have a direct impact on the economic and financial assets of consumers, as the Board of Appeal correctly held. In addition, it should be recalled that the global assessment of the likelihood of confusion must be carried out having regard to the average consumer who has the lowest level of attention (see judgment of 17 February 2017, Construlink v EUIPO — Wit‑Software (GATEWIT), T‑351/14, not published, EU:T:2017:101, paragraph 47 and the case-law cited).

37 With regard to the applicant’s argument that the level of attention of the professional public is very high in the present case, it must be noted that, for specialised services which may have significant financial consequences for their users, such as the services here in question, the consumers’ level of attention will be rather high when choosing them (see, to that effect, judgment of 19 September 2012, TeamBank v OHIM — Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 21). However, in the present case, the applicant has not put forward any convincing arguments establishing that the level of attention of the professional public is very high and, furthermore, that claim is at least ineffective as regards the services aimed both at the general public and at professionals since, as has been recalled in paragraph 36 above, the average consumer with the lowest level of attention must be taken into consideration in the present case.

38 The Board Appeal acted correctly in finding that the relevant public consisted of the general public and professionals in the European Union, displaying a high level of attention.

39 According to settled case-law, in assessing the similarity of the services in question, all the relevant factors relating to those services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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 services 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).

40 The applicant maintains that the question as to whether the services in question, or some of them, are similar or identical is irrelevant in the present case, given that, in its view, the signs in question are different.

41 The applicant submits that, in its appeal before the Board of Appeal, it argued that the services in question were not aimed at the same end users and that they did not have the same method of use or the same intended purpose. Further, according to the applicant, it was for the intervener to show that those services were identical or similar and not for the applicant itself to furnish proof to the contrary. In this respect, it claims that the intervener is a ‘global reinsurance company’ providing its clients with a broad range of innovative solutions and services and a solid financial basis, whereas the applicant is a data analysis and forecasting company that assists undertakings operating in telecommunications or similar fields to understand their data. It adds that its activities are primarily related to credit risk assessment and to credit management but that it does not provide any reinsurance services. The list of services covered by the mark applied for is, it submits, more extensive than that of the services covered by the earlier mark.

42 In particular, the applicant submits that it is very important that the mark applied for should be registered to designate services which are clearly different from those covered by the earlier mark. In this regard it mentions the following services: ‘financial consultancy in the field of risk management; financial consultancy services relating to infrastructure investment; financial risk management services; financial risk assessment services; risk management consultancy [financial]; financial consultancy relating to credit services; insurance risk management; financial research in the field of risk management; insurance risk management; financial risk management services; asset management for third parties; financial investment management services; financial management relating to investment; financial management of funds; financial management; provision of financial services by means of a global computer network or the internet; trade finance services; risk management consultancy [financial]; financial guarantee assessment services; providing information, consultancy and advice in the field of financial valuation; financial information, data, advice and consultancy services; financial assistance; finance services; computerised financial services; conducting of financial transactions; financial transaction services and all other services related to financial sector, risk assessment and management’.

43 Furthermore, the applicant maintains that, if the earlier mark is registered for a narrower sub-set of services, the similarity of the services in question should be assessed in relation to that narrower sub‑set.

44 In the present case, the Board of Appeal, with reference to the assessments of the Opposition Division, found, in paragraph 17 of the contested decision, that the services covered by the mark applied for and those covered by the earlier mark are identical or similar to various degrees. In general terms, it held that the services in question comprise monetary, financial and insurance services capable of being intended for the same public, having the same methods and purposes of use, using the same distribution channels and being provided by the same undertakings.

45 As regards, in particular, the services covered by the mark applied for which the applicant refers to as being different (see paragraph 42 above), it must be held that these concern different financial services which, as found by the Opposition Division, whose conclusions were taken up in application of the principle of administrative continuity by the Board of Appeal, are at least similar to the services covered by the earlier mark. In that regard, it should be noted, in particular, that those latter services also include certain financial services, such as, for example, ‘financial consultancy and information’ or various types of ‘consultancy and expert advice relating to financial evaluation’.

46 The Board of Appeal’s assessments referred, to in paragraph 44 above, are not validly brought into question by the other arguments of the applicant.

47 The Board of Appeal cannot be criticised for finding that the applicant had not submitted any specific observations seeking to challenge the list of services in Class 36 covered by the mark applied for, which the Opposition Division found to be identical to those covered by the earlier mark. The applicant’s claims before the Board of Appeal that the services in question overall are not aimed at the same end users and do not have the same method of use or the same intended purpose cannot be categorised as specific arguments relating to particular services.

48 First of all, it should be borne in mind that, in order to assess whether there is a likelihood of confusion, it is necessary to take into account the services covered by the marks at issue, not the services actually marketed under those marks (see judgment of 21 September 2017, The Logistical Approach v EUIPO — Idea Groupe (Idealogistic), T‑620/16, not published, EU:T:2017:635, paragraph 35 and the case-law cited). However, it is not clear from the wording of the services covered by the mark applied for or from that of those covered by the earlier mark that they were intended for different publics.

49 Next, it must be stated, as is clear from settled case-law, that, where the services covered by the earlier mark include the services covered by the trade mark application, those services are considered to be identical (see judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 34). The same is true where the services covered by the earlier mark are included in a more general category covered by the mark applied for (see, to that effect, judgments of 23 October 2002, Institut für Lernsysteme v OHIM — Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 53, and of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case‑law cited).

50 Thus, on the assumption that the earlier mark is registered for fewer services than the mark applied for, the fact remains that, having regard to the case-law cited in paragraph 49 above, some of those services are identical, in so far as those covered by the earlier mark are included in the services covered by the mark applied for.

51 Finally, as regards the intervener’s alleged obligation to demonstrate that the services at issue are similar, it must be stated that, according to the case-law, as EUIPO submits, there is no obligation on the opposing party, in opposition proceedings, to adduce evidence as to the similarity of the services at issue (see, to that effect, judgment of 9 February 2011, Ineos Healthcare v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑222/09, EU:T:2011:36, paragraph 22).

52 It follows that the Board of Appeal’s reasoning on the comparison of the services in question is correct.

53 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).

54 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).

55 In the present case, it is necessary to compare, on the one hand, the earlier mark, consisting of the word element ‘scor’, and, on the other, the mark applied for, which is a figurative mark, consisting of a rectangular figurative element, in different shades of red and white, and of the word element ‘scorify’, written in dark blue capital letters which are slightly stylised.

56 The Board of Appeal found the element ‘scorify’ to be the dominant and more distinctive element of the mark applied for given its size and its distinctive character. In particular, it observed that the term ‘scorify’ means, in English, ‘to remove (impurities) from metals by forming scoria’ and that that meaning has no apparent connection with the services covered by the mark applied for. As regards the figurative element, it took the view that, notwithstanding its red colour and its position at the beginning of the sign, it was much smaller than the word element, was depicted in a simple geometric shape, and was not arranged in a specific, original or elaborate manner that might influence the overall impression produced by that mark.

57 The applicant maintains that the figurative element of the mark applied for is visually striking, attracting the consumer’s attention, as well as being distinctive and making it possible to distinguish that mark. According to the applicant, that element will have a significant impact on the overall impression created by that mark and will be more clearly retained than the other elements of that mark, with the result that it is the dominant element of the mark in question, in particular because it is placed at the beginning of the sign.

58 In this respect, it should be noted that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgments of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37, and of 15 June 2017, Fakro v EUIPO — Saint Gobain Cristalería (climaVera), T‑457/15, not published, EU:T:2017:391, paragraph 62 and the case-law cited).

59 Thus, even if it is not ruled out, as the applicant submits, that the figurative element is visually striking and that it will attract the consumer’s attention, it is, however, unlikely that the consumer will refer to the mark applied for by describing that element which, as the Board of Appeal correctly observed, represents a simple geometric form.

60 Furthermore, it must be noted that, in the present case, the word element ‘scorify’ of the mark applied for is substantially longer than the figurative element. Where the verbal element of a mark is substantially longer than the figurative element of that mark, it attracts more attention on the part of the average consumer because of its larger size (see, to that effect, judgment of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraphs 19 and 24).

61 It follows that the Board of Appeal did not err in finding that the word element is the dominant and more distinctive element of the mark applied for.

62 As regards, first, the visual comparison of the signs in question, the Board of Appeal found, in paragraph 25 of the contested decision, that those signs share the letters ‘s’ ‘c’ ‘o’ and ‘r’, which form the whole of the earlier mark and are placed at the beginning of the dominant element of the mark applied for. By contrast, it held that those signs differ in the presence of the suffix ‘ify’ and in the figurative element in the mark applied for, the latter having a simple decorative function. Finding that the relevant public pays greater attention to the beginning of the signs in question, the Board of Appeal took the view that they are visually similar to an average degree.

63 The applicant claims that, visually, the signs in question differ in length and will be easily perceived by the relevant public, who will consider that they belong to different undertakings. It adds that those signs are different due to the specific graphic elements and the blue colour of the stylised word element of the mark applied for.

64 It should be noted that, in the present case, in its assessment of the visual similarity, the Board of Appeal took into account all of the elements mentioned by the applicant. In particular, it took into account the different length of the word elements of the signs in question and the presence of the figurative element in the mark applied for, which led it to conclude that there was an average degree of visual similarity.

65 It must be stated that that assessment is correct since the differences referred to by the applicant are not capable of counteracting the similarities arising from the presence of the letter combination ‘scor’ in each of the signs in question and, in particular, at the beginning of the word element of the mark applied for.

66 As is apparent from settled case-law, the initial part of the word elements of a mark is liable to attract the consumer’s attention more than the following parts (see judgments of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 62 and the case-law cited, and of 29 October 2015, Giuntoli v OHIM — Société des produits Nestlé (CREMERIA TOSCANA), T‑256/14, not published, EU:T:2015:814, paragraph 49 and the case-law cited).

67 As regards, second, the phonetic comparison of the signs at issue, the Board of Appeal found, in substance, in paragraph 26 of the contested decision, that only the word elements of those signs are pronounced and that they are pronounced ‘scor’ and ‘sco-ri-fy’, respectively. It concluded that, despite a difference in the number of syllables, those signs are phonetically similar to an average degree.

68 The applicant takes the view that the signs in question differ in their endings, that one consists of three syllables, whereas the other consists of only one, and that that difference also changes the way in which those signs are pronounced.

69 It must be held that, when the Board of Appeal found that the signs in question are similar to an average degree, it did indeed take into account the different number of syllables of which they consist, to which the applicant refers.

70 Admittedly, the pronunciation of the letter ‘r’ may be different in the signs in question. However, such a difference cannot in any event offset the similarities existing between those signs. Consequently, the Board of Appeal did not err in holding that those signs are phonetically similar to an average degree.

71 As regards, third, the conceptual comparison of the signs in question, the Board of Appeal found, in paragraph 27 of the contested decision, that, for at least a significant part of the relevant public, the word elements of those signs do not convey any concept and that, therefore, the conceptual comparison remains neutral. According to the Board of Appeal, the same applies as regards the figurative element of the mark applied for, which does not convey any concept.

72 The applicant acknowledges that the word elements in question are devoid of any meaning in English, but claims not to understand the reasons why the Board of Appeal took account of the English-speaking public only, whereas the applicant and the intervener operate in non-English-speaking countries, namely Lithuania and France. The applicant also maintains that the differences between the signs in question are sufficient for them to be distinguished, particularly from the conceptual point of view.

73 In that regard, it should be noted that it is precisely because none of the word elements of the signs in question conveys any concept that the Board of Appeal found that the conceptual comparison remains neutral.

74 In order for the signs in question to be regarded as being conceptually different, as the applicant claims, at least one of them would have to be meaningful to the relevant public. However, that is not the case here. The Board of Appeal correctly took the view that, for a significant part of the public of the European Union, the word elements of those signs are meaningless (paragraphs 21 and 23 of the contested decision), notwithstanding the fact that the term ‘scorify’ means, in English, ‘to remove (impurities) from metals by forming scoria’ and that the element ‘scor’ may be associated with the English term ‘score’.

75 Moreover, it should be added that, should the relevant public associate the element ‘scor’ with the term ‘score’, this would create a conceptual similarity.

76 Furthermore, it should be noted that the Board of Appeal did not limit its assessment to the English-speaking part of the relevant public. As is clear from paragraphs 23 and 27 of the contested decision, it based that assessment on the public of the European Union as a whole.

77 In any event, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T–82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). Accordingly, where a likelihood of confusion between two EU marks has been established in a Member State, that is sufficient reason to refuse registration of the later mark (see, to that effect, order of 16 September 2010, Dominio de la Vega v OHIM, C‑459/09 P, not published, EU:C:2010:533, paragraph 31).

78 In this respect, to the extent to which the Board of Appeal’s findings as to the conceptual comparison are in any event relevant for average consumers in the European Union who do not know the meaning of the term ‘scorify’, that is to say, at least the part of the relevant public which does not have a knowledge of English or which has only a knowledge of the basic vocabulary of that language, those findings, which consist of an absence of conceptual similarity between the signs at issue, are perfectly valid in respect of those consumers and must be taken into account as a relevant factor that may or may not contribute to the existence of a likelihood of confusion.

79 It follows that the Board of Appeal’s findings that the conceptual comparison of the signs in question remains neutral in the present case are correct.

80 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 lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgment of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

81 In the present case, as the Board of Appeal held, the signs in question display an average degree of visual and phonetic similarity, while the conceptual comparison remains neutral (see paragraphs 65, 69 and 79 above) and the services in question are either identical or similar (see paragraph 52 above). Holding that the earlier mark has a normal degree of distinctiveness, the Board of Appeal concluded, in paragraph 34 of the contested decision, that there is a likelihood of confusion.

82 With regard to the alleged weak distinctive character of the earlier mark, it must be recalled that, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, 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).

83 Furthermore, in the present case, in order to support its argument that the earlier mark has a weak distinctive character, the applicant provided, in the course of the administrative proceedings before EUIPO, a list of registered marks which contain the element ‘scor’. It argues that that list is sufficient to show that the element is not distinctive or weakly distinctive and that it confirms that the element is widely used in the relevant sector.

84 However, in this respect, it must be recalled, as EUIPO essentially maintains, that the mere presence of marks containing a certain term in the Register of EU trade marks without any reference to their use on the market and to any challenge to those marks on account of the existence of a likelihood of confusion, does not permit the inference that the distinctive character of that term has been reduced in relation to the goods and services for which those marks are registered (see judgment of 6 July 2016, Mozzetti v EUIPO — di Lelio (ALFREDO’S GALLERY alla Scrofa Roma), T‑97/15, not published, EU:T:2016:393, paragraph 39 and the case-law cited). It follows that the Board of Appeal’s conclusion, in paragraph 29 of the contested decision, that the distinctive character of the earlier mark is normal, which must be understood as corresponding to an average degree of distinctiveness, is correct.

85 Similarly, the applicant argues that, because of their differences, the marks at issue could coexist freely without raising any doubts on the part of the average consumer as to whether the services in question originate from the same undertaking. However, those arguments, without supporting evidence, are manifestly insufficient to demonstrate that the marks coexist peacefully on the market. According to settled case-law, such a possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion on the part of the relevant public, as regards the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the marks which have been coexisting are identical to the marks at issue (see judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (skype), T‑423/12, not published, EU:T:2015:260, paragraph 66 and the case-law cited).

86 Furthermore, the applicant maintains that the services in question are highly specialised and not generally ordered orally by professionals but in writing, with the result that phonetic or conceptual similarities would have a weak effect or even none.

87 In this respect, it should be noted that, even assuming, as the applicant submits, that the services in question are generally ordered in writing, the fact remains that the signs in question also display an average degree of visual similarity, with the result that that circumstance would not, in any event, have an impact on the existence of the likelihood of confusion in the present case.

88 In the light of all of the foregoing considerations, it must be held that the Board of Appeal acted correctly in finding that there is a likelihood of confusion in the present case. It follows that the present plea in law must be rejected and that the action must therefore be dismissed in its entirety.

89 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Under Article 190(2) of those rules, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.

90 Since the applicant has been unsuccessful in the present case, it must be ordered to pay the costs of the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener. Additionally, as regards those costs necessarily incurred by the intervener before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO — Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194 and the case-law cited).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Scorify v EUIPO - Scor (SCORIFY) (EU trade mark - Judgment) [2020] EUECJ T-328/19 (08 July 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T32819.html Cite as: [2020] ETMR 51, EU:T:2020:311, [2020] EUECJ T-328/19, ECLI:EU:T:2020:311

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