Workspace Group v EUIPO - Technopolis Holding (UMA WORKSPACE) (EU trade mark - Judgment) [2020] EUECJ T-506/19 (28 May 2020)

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(EU trade mark — Opposition proceedings — Application for the EU word mark UMA WORKSPACE — Earlier EU figurative mark and earlier UK figurative and word marks WORKSPACE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Workplace Group plc, established in London (United Kingdom), represented by N. Hine, Solicitor,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

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

Technopolis Holding Oyj, established in Oulu (Finland), represented by E. Skrzydło-Tefelska and K. Gajek, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 May 2019 (Case R 1910/2018-4) relating to opposition proceedings between Workspace Group and Technopolis Holding,

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 10 October 2019,

having regard to the response of the intervener lodged at the Court Registry on 4 October 2019,

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 7 March 2017, the intervener, Technopolis Holding Oyj, 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 35, 36 and 43 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 35: ‘Clerical services; Planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; Photocopying services; Relocation services for businesses; Rental of photocopying machines; Rental of advertising space; Rental of vending machines; Office machines and equipment rental; Systemisation of information into computer databases’;

– Class 36: ‘Insurance underwriting; Finance services; Monetary affairs; Real estate affairs; Deposits of valuables; Rental of office space; Rental of apartments; Apartment house management; Valuation relating to the design of buildings; Valuation of buildings; Assessment and management of real estate; Real estate lending services; Real estate agency services; Rent collection; Rental of offices [real estate]’;

– Class 43: ‘Café services; Canteen services; Rental of meeting rooms; Event facilities and temporary office and meeting facilities; Hire of temporary office space’.

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2017/049 of 13 March 2017.

5 On 13 June 2017, the applicant, Workspace Group plc, 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.

– the EU figurative mark registered under No 16240731 in respect of, inter alia, ‘advertising, marketing, promotion; business administration; organisation of fairs and trade shows for business, advertising and promotion purposes; rental of office machines and equipment; secretarial services; photocopying services; clerical services’ in Class 35, ‘financial services; insurance services; money lending services; real estate services; real estate agency; property valuation services; management of real estate; rent collection services’ in Class 36, and ‘providing temporary accommodation; hire of temporary office commercial premises and accommodation; providing food and drink; bar, café, canteen and restaurant services; catering services; renting of catering and dining equipment, items and furniture; rental of office and commercial furniture; information, advice and assistance relating to all the aforesaid’ in Class 43, reproduced below:

– the UK figurative mark registered under No 2600648 in respect of services in Classes 35, 36, 39 and 43, reproduced below:

– the UK word mark WORKSPACE registered under No 3178820 in respect of services in Classes 36 and 43;

– the UK word mark WORKSPACE registered under No 3236694 in respect of services in Classes 9, 35, 36, 38, 39, 42 and 43.

7 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).

8 On 31 July 2018, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion with the earlier EU trade mark.

9 On 27 September 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 13 May 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division and rejected the opposition in respect of all the services covered by the mark applied for.

11 The Board of Appeal first compared the mark applied for with the earlier EU trade mark and therefore considered that the relevant territory for the purposes of assessing the likelihood of confusion was the European Union and all its Member States. In the first place, it found, as did the Opposition Division, that most of the services at issue in Classes 35, 36 and 43 were identical, some of them were highly similar and others similar.

12 In the second place, as regards the comparison of the signs, the Board of Appeal first considered the meaning of the elements included in the marks at issue. It noted first of all that the word ‘uma’ in the mark applied for had no meaning in any of the European Union languages. Next, it stated that the figurative element of the earlier mark, although it would not be overlooked, would merely be perceived as a decorative element. Furthermore, it found that the word ‘workspace’ present in both marks had been widely used in the course of trade to designate office spaces intended to be temporarily rented by entrepreneurs, that there was no appropriate translation for it in European Union languages other than English and that it would be universally understood. It stated this to be a well-known fact. It also found that the basic English words ‘work’ and ‘space’ were so frequently used that the compound word ‘workspace’ would be understood by the relevant professional public throughout the European Union as a descriptive reference to services related to providing and servicing a space in which to work. Secondly, bearing those meanings in mind, the Board of Appeal found that the word ‘workspace’ was descriptive in relation to the services at issue. Lastly, it found that the word element ‘uma’ of the mark applied for would be perceived as the most distinctive and dominant part of that mark owing to its lack of meaning, the fact that it formed the initial part of the mark applied for, and the descriptiveness of the word element ‘workspace’. Thirdly, the Board of Appeal compared the marks at issue visually, phonetically and conceptually. First of all, it stated that the marks differed in the distinctive and dominant element ‘uma’ of the mark applied for and in the figurative element of the earlier mark, and that the common word element ‘workspace’ could produce only a low degree of visual similarity between the marks at issue in view of its descriptiveness. Next, it noted that the marks as issue differed in the pronunciation of the first dominant and distinctive part of the mark applied for and that the fact that the marks coincided in the descriptive word ‘workspace’ rendered them phonetically similar to a low degree. Lastly, it found that conceptually, both marks conveyed the concept of ‘workspace’ and that, taking into account the descriptiveness of that word in relation to the services concerned, the level of conceptual similarity between the signs was, at most, low.

13 In the third place, the Board of Appeal carried out the overall assessment of the likelihood of confusion. It concluded that, taking into account the low degree of visual, phonetic and conceptual similarity between the signs at issue, the fact that they shared only a descriptive element, the low degree of distinctiveness of the earlier mark and the high level of attention of the relevant consumer, there was no likelihood of confusion, even though the services covered by the marks at issue were identical.

14 The Board of Appeal subsequently stated that, as regards the earlier UK trade marks, the same conclusion that there was no likelihood of confusion applied. The Board of Appeal noted that the relevant registration certificates submitted by the opponent confirmed that each of the earlier UK word marks was ‘inherently non-distinctive, but evidence [had been] submitted to show that, by the date of application, [each mark had] in fact acquired a distinctive character as a result of the use of it’. In that context, the Board of Appeal added that the argument that the earlier UK word marks had acquired distinctiveness through use was, however, not supported by any concrete evidence, the mere reference to the registration certificates of those marks being insufficient in that respect, as it did not allow the Board to adopt its own position.

– order the applicant to pay the costs of the appeal and opposition proceedings.

18 In support of its action, the applicant relies on four pleas in law alleging, first, infringement of Article 8 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), second, infringement of Article 27 of that regulation and Article 95 of Regulation 2017/1001, third, infringement of Article 94(1) of Regulation 2017/1001 and, fourth, infringement of Article 8(1)(b) of Regulation 2017/1001.

The fourth plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

20 The applicant claims, in the first place, that the Board of Appeal erred in finding that the word ‘workspace’ would be perceived as a descriptive term throughout the European Union by the relevant consumers of business accommodation services. According to the applicant, it could not reasonably be assumed that the relevant public for the services in question would have sufficient linguistic knowledge to distinguish between the trade marks. It refers in that regard to its submissions before the Board of Appeal. In the second place, it claims that the Board of Appeal also failed to take into account its submissions on the lack of descriptiveness of several services covered by the mark applied for, which were not related to the provision of accommodation. In the third place, the applicant relied on the fact that, since the word elements ‘uma’ and ‘workspace’ have no conceptual resonance, they took on an independent distinctive role in the mark applied for.

22 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).

23 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods/services in question in that territory. However, 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).

24 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was correct in finding that there was no likelihood of confusion between the marks at issue in the present case.

25 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).

26 In the present case, the Board of Appeal examined the likelihood of confusion by taking into account, first of all, the earlier EU trade mark, the protection of which thus extended to the entirety of the European Union. What must therefore be considered is the perception of the marks at issue by the consumer of the goods and services in question within the whole of that territory. The Board of Appeal found in paragraph 31 of the contested decision that the services in question targeted the professional public whose level of attention was above average. That finding, which moreover is not disputed by the applicant, must be upheld.

27 According to the Board of Appeal, most of the services in Classes 35, 36 and 43 covered by the marks at issue were identical, some were highly similar and others similar. Those findings, which, moreover, are not called into question by the applicant, must be upheld.

28 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). In addition, the average consumer only rarely has the chance to compare the various marks directly, but must rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

29 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 (see judgment of 5 October 2016, Foodcare v EUIPO — Michalczewski (T.G.R. ENERGY DRINK), T‑456/15, EU:T:2016:597, paragraph 37 and the case-law cited).

30 In the present case, the signs to be compared are the word sign UMA WORKSPACE in connection with the mark applied for and the figurative sign WORKSPACE in connection with the earlier EU trade mark.

31 It is apparent from paragraphs 21 to 24 of the contested decision that the Board of Appeal found that the word ‘workspace’ was descriptive in relation to the services covered by the marks at issue and that the word element ‘uma’ of the mark applied for would be regarded as the more distinctive and dominant part of that mark. Moreover, in paragraphs 25 to 27 of the contested decision, the Board of Appeal found the signs at issue to be visually similar to a very low degree, phonetically similar to a low degree and conceptually similar to, at most, a low degree.

32 The applicant submits, in the first place, that the Board of Appeal failed to take into account its submissions according to which several services covered by the marks at issue were not related to the provision of accommodation, and in any event disputes the alleged descriptiveness of the word ‘workspace’ in respect of those services. In the second place, the applicant claims that the Board of Appeal failed to take into account the arguments put forward by the applicant before it, according to which the relevant EU consumers would not have the linguistic knowledge enabling them to distinguish the marks at issue and refers in that regard to its submissions before the Opposition Division. In the third place, the applicant submits that there is no conceptual resonance between the elements ‘uma’ and ‘workspace’, that those two elements have an independent distinctive role in the mark applied for and that there is therefore a likelihood of confusion with the earlier UK word marks.

34 In the light of the applicant’s arguments, it is necessary, in the first place, to determine the distinctive and dominant elements of the signs at issue.

35 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).

36 According to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 63 and the case-law cited).

37 In the first place, as regards the figurative element of the earlier EU trade mark, consisting of two black and grey circles above the word element ‘workspace’, the finding in paragraph 19 of the contested decision that that figurative element, although it will not be overlooked, will merely be perceived as a decorative element must be approved.

38 In the second place, as regards the first word element ‘uma’ of the mark applied for, the Board of Appeal correctly found that it would not be understood in any of the European Union languages and therefore concluded, in essence, that it bore no reference to the services in question. The Board of Appeal was also correct in concluding that the word element ‘uma’ formed the most distinctive and dominant part of the mark applied for, taking into account the weak distinctive character of the second word element ‘workspace’ and the fact that the word element ‘uma’ was the most likely to attract the consumer’s attention owing to its primary position in the mark applied for.

39 In the third place, it is necessary to examine the Board of Appeal’s assessment as to the distinctiveness of the word ‘workspace’.

40 First, the Board of Appeal’s conclusion that that word is widely used in the course of trade to designate office spaces rented by entrepreneurs, essentially start-up companies and individuals, in order to carry out their activities therein while having available all the comforts and facilities required, must be endorsed. In that context, the Board of Appeal referred to the concept of well-known fact in order to find that the word ‘workspace’ does not have any appropriate translation in European Union languages other than English, that it is generally used as an anglicism and that it will be universally understood. The applicant disputes, in essence, whether that is indeed a well-known fact, calling into question the fact that the relevant public in the entirety of the European Union has sufficient knowledge of English to understand the meaning of the word ‘workspace’ in the sense described above.

41 According to case-law, a fact is well known when it is likely to be known by anyone or may be learnt from generally accessible sources (see judgment of 9 February 2011, Ineos Healthcare v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑222/09, EU:T:2011:36, paragraph 29 and the case-law cited). It is also settled case-law that the Boards of Appeal, when determining the relevant public’s perception of the marks at issue, can rely on well-known facts, subject to the adversely affected party’s proving an error of assessment in respect of whether those facts are well known (see, to that effect, judgments of 17 October 2006, Hammarplast v OHIM — Steninge Slott (STENINGE SLOTT), T‑499/04, not published, EU:T:2006:324, paragraph 53, and of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 56 (not published)).

42 It must first be acknowledged, as noted by the Board of Appeal in paragraph 22 of the contested decision, that the words ‘work’ and ‘space’ form part of basic English vocabulary. Since a large proportion of consumers in the European Union has knowledge of basic English vocabulary (see, to that effect, judgments of 21 January 2010, G-Star Raw Denim v OHIM — ESGW (G Stor), T‑309/08, not published, EU:T:2010:22, paragraph 32; of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 52; and of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, not published, EU:T:2016:69, paragraph 118), and since those two words are frequently used in the European Union, the finding that the relevant public in the entirety of the European Union will understand their meaning must be endorsed. The propriety of that finding may be supported by the consideration that the professional public might have a better understanding of English than the general public (see, to that effect, judgment of 9 March 2012, Colas v OHIM — García-Teresa Gárate and Bouffard Vicente (BASE-SEAL), T‑172/10, not published, EU:T:2012:119, paragraph 45).

43 The Board of Appeal was also correct in observing that the word ‘workspace’ was widely used in the course of trade as a compound word referring to office spaces rented by entrepreneurs. In that regard, it was for the applicant to challenge that observation by the Board of Appeal in accordance with the case-law cited in paragraph 41 above. It must be stated that the applicant confined itself to denying that the relevant public in the European Union would have the linguistic knowledge enabling it to distinguish the marks at issue and failed to substantiate its reasoning or submit any concrete evidence to cast doubt on that fact and thus demonstrate an error of assessment in respect of whether it is well known.

44 It must therefore be held that, bearing in mind the well-known meaning of the words ‘work’ and ‘space’ to the professional public and the extensive use of the compound word ‘workspace’ recalled in paragraph 43 above, the Board of Appeal made no error of assessment in finding that that professional public would also understand the word ‘workspace’ as a compound word which referred to office spaces rented by entrepreneurs and that that word would thus be understood by that public as a descriptive reference to services related to providing and servicing a space in which to work.

45 Secondly, as regards the issue of the descriptiveness of the word ‘workspace’ in respect of all the services covered by the marks at issue, the applicant argues that the Board of Appeal failed to take into account its submissions according to which several services covered by the marks at issue were not related to the provision of accommodation.

46 It must be stated that the reasoning set out in paragraph 23 of the contested decision which led the Board of Appeal to conclude that the word ‘workspace’ was descriptive in respect of all the services covered by the marks at issue is not vitiated by any error of assessment.

47 First, as regards the services in Class 35, the Court agrees with the Board of Appeal’s finding that they related to the provision of workspace in that they aimed to make the workspace comfortable, complete and attractive. Furthermore, EUIPO is correct in observing, in essence, that ‘advertising, marketing promotion services’ are also related to the provision of workspace for businesses in so far as the professional public, which primarily consists of start-up companies, needs assistance and advice in order to expand.

48 Next, as regards the services in Class 36 covered by the mark applied for and the earlier EU figurative mark, the Board of Appeal’s reasoning that real estate and rental services were related to the concept of workspace, in that real estate could easily encompass such workspace, must be endorsed. Likewise, the Court agrees with the finding that the services listed as ‘apartment house management; valuation relating to the design of buildings; valuation of buildings; assessment and management of real estate’ could all be associated with a workspace. The same applies to the services listed as ‘insurance underwriting; finance services; monetary affairs; deposits of valuables’ which, as noted by the Board of Appeal, were closely related to the rental and real estate services as they form a key aspect in completing any possible deal in those fields. In that regard, in the sense emphasised by EUIPO, it must be considered that companies, in particular new companies, need the provision of financial services to exist and to expand, for example to enlarge their workspace, and that therefore the relevant professional public will always link the word ‘workspace’ to those financial services, even though their main purpose does not directly coincide with the provision of workspaces and their facilities.

49 Lastly, the Board of Appeal was fully entitled to find that the services in Class 43 provided or facilitated access to a workspace, those services meeting the needs of individuals or companies in need of a place to manage their business.

50 It follows from all the foregoing that the Board of Appeal made no error of assessment in finding that the common word element ‘workspace’ was a weakly distinctive element in respect of the services covered by the marks at issue, that the word element ‘uma’ of the mark applied for had to be regarded as the more distinctive and dominant part of that mark and, accordingly, that the inherent distinctiveness of the earlier EU trade mark had to be regarded as weak.

51 Visually, the signs at issue differ in the distinctive and dominant element ‘uma’ of the mark applied for and in the figurative element of the earlier EU trade mark. By contrast, those signs coincide in the word ‘workspace’. However, on account of the descriptiveness of the word ‘workspace’, the Board of Appeal made no error of assessment in finding, in paragraph 25 of the contested decision, that the visual similarity between the signs at issue was only very weak.

52 Phonetically, as is apparent from paragraph 26 of the contested decision, the marks differ in the pronunciation of the word element ‘uma’, which represents the first dominant and distinctive part of the mark applied for and is not present in the earlier EU trade mark. On that ground, and the ground that the word element ‘workspace’ is weakly distinctive, for the reasons set out in paragraphs 39 to 44 and 46 to 49 above, it must be accepted that the presence of the word element ‘workspace’ renders them similar only to a low degree, which, moreover, has not been challenged by the applicant.

53 Conceptually, the Board of Appeal found, in paragraph 27 of the contested decision, that the signs at issue conveyed the concept of ‘workspace’, but, on account of the descriptiveness of that word in relation to the services concerned, the level of conceptual similarity between the signs at issue had, at most, to be regarded as low. Such reasoning must be endorsed. In that regard, the applicant unsuccessfully attempts to rely on the fact that, since the word elements ‘uma’ and ‘workspace’ have no conceptual resonance, they would take on an independent distinctive role in the mark applied for. There is no reason to consider that those words would have such an independent distinctive role and that they should therefore be examined in an artificially independent way.

54 Should the applicant’s argument be understood as being based on the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), and meaning that the word ‘workspace’ plays an independent distinctive role in the mark applied for, which would render the signs at issue similar, it must be rejected.

55 It must be borne in mind that, in the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), the Court of Justice held that, where the goods or services are identical, there may be a likelihood of confusion on the part of the public if the sign at issue is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.

56 It must be stated that at no time has the applicant demonstrated that the conditions for applying the case-law stemming from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), were satisfied in the present case. Moreover, it must be held that the principle established by the Court of Justice in that judgment cannot be applied in the present case, since the word ‘workspace’ does not have normal distinctiveness but is, at most, weakly distinctive.

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

58 It is also apparent from the case-law that where the elements of similarity between two signs relate to the fact that they share a weakly distinctive component, the impact of such elements of similarity in the global assessment of the likelihood of confusion is itself weak (judgment of 22 February 2018, International Gaming Projects v EUIPO — Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73; see also, to that effect, judgments of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 85, and of 4 March 2015, FSA v OHIM — Motokit Veículos e Acessórios (FSA K-FORCE), T‑558/13, not published, EU:T:2015:135, paragraphs 49 to 52).

59 The Board of Appeal’s global assessment of the likelihood of confusion in paragraphs 31 to 33 of the contested decision must be endorsed. The Board of Appeal was fully entitled to find that, bearing in mind the at most weak visual, phonetic and conceptual similarity between the signs at issue, the fact that they shared an element that was descriptive, the weak distinctiveness of the earlier EU trade mark and the high level of attention of the professional public, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even though the services in question were identical. That finding must also be applied to the earlier UK trade marks, in respect of which it must be confirmed that there is no likelihood of confusion with the mark applied for, subject, however, to the response given below to the first plea.

The first plea, alleging infringement of Article 8 of Delegated Regulation 2018/625

61 By the first plea, the applicant claims that the Board of Appeal erred in refusing to take the earlier UK word marks into account. It takes issue with the Board of Appeal for not assuming that those earlier national trade marks were valid, that they produced their full effects and that they granted exclusive rights in respect of the goods and services claimed. The applicant refers in that regard to paragraph 35 of the contested decision, according to which the mere reference to the registration of those two word marks does not suffice, as it ‘does not allow the Board to make its own judgement’ as to the factual distinctiveness of the WORKSPACE trade mark in the United Kingdom. According to the applicant, however, EUIPO has no power to call the validity of the earlier national trade marks into question or to conclude that the applicant has not been able to prove their validity, as the presumption of validity applies to them.

63 At the outset, it should be noted that Article 82(2)(b) of Delegated Regulation 2018/625 provides that ‘Articles 7 and 8 [of that regulation] shall not apply to opposition proceedings, the adversarial part of which has started before 1 October 2017’. In the present case, the adversarial part of the opposition proceedings started before that date, namely on 26 August 2017, and therefore the applicant cannot validly rely on Article 8(7) of that regulation (see, by analogy, judgment of 27 March 2019, Biernacka-Hoba v EUIPO — Formata Bogusław Hoba (Formata), T‑265/18, not published, EU:T:2019:197, paragraph 37).

64 However, it must be borne in mind that, according to the case-law, the Court must interpret an applicant’s pleas in terms of their substance rather than of their classification (judgments of 10 February 2009, Deutsche Post and DHL International v Commission, T‑388/03, EU:T:2009:30, paragraph 54, and of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO — Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 23).

65 Thus, the plea put forward by the applicant must be regarded as in fact alleging infringement of Rule 20 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), which essentially provided, inter alia, that EUIPO was to call upon the opposing party to submit, within the period specified, evidence of the registration or filing of the earlier mark, or evidence on the acquisition and scope of protection of the earlier right, where it considered that the notice of opposition did not contain particulars of that earlier mark or earlier right.

66 In essence, the Board of Appeal is criticised, first, for finding that the earlier UK word marks were not valid and, second, for failing to take account of the fact that those two marks had acquired distinctiveness as a result of the use that had been made of them.

67 As a preliminary point, it should be noted that, according to the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 40), it follows from the coexistence of EU trade marks and national trade marks, and from the fact that the registration of the latter does not fall within the sphere of competence of EUIPO, and that judicial review in respect of them does not fall within the jurisdiction of the Court, that in proceedings opposing the registration of an EU trade mark, the validity of national trade marks may not be called into question.

68 This is why it is important to determine whether, as argued by the applicant, the Board of Appeal incorrectly called into question the validity of the earlier UK word marks.

69 First, it should be recalled that reference is made to the earlier UK word marks in paragraph 32 of the contested decision in the context of examining the likelihood of confusion between the mark applied for and the earlier EU trade mark. After stating that the applicant had not explicitly claimed that the earlier EU trade mark was particularly distinctive by virtue of intensive use or reputation, the Board of Appeal noted that the applicant’s argument that the earlier UK word marks had acquired distinctive character through use ‘just [confirmed] the weak inherent distinctiveness of the earlier mark and [could], in the absence of any concrete evidence in support, not prove the same [inherent distinctiveness] for the earlier [EU trade mark]’.

70 Secondly, the earlier UK word marks were examined in paragraphs 34 and 35 of the contested decision. First of all, the Board of Appeal found that ‘as they [covered] the same services and the same sign, or just exclusively the word “workspace”, as [was the case of the earlier EU trade mark] examined …, the conclusion that there is no likelihood of confusion equally [applied]’. Next, it noted in that regard that, ‘for the [earlier UK word marks], the relevant registration certificates submitted by the opponent indeed [confirmed] for each of the marks, that “the trade mark was inherently non-distinctive, but [that] evidence [had been] submitted to show that, by the date of application, the mark [had] in fact acquired a distinctive character as a result of the use of it”’. Lastly, it found that ‘the [applicant’s] argument that the earlier UK [word] marks [had] obtained acquired distinctiveness [was], however, not supported by any concrete evidence’ and noted that ‘the mere reference to the registration certificates of these marks [did] not suffice[,] as it [did] not allow the Board to make its own judgement’.

71 It must be stated that, taken as a whole, the Board of Appeal’s reasoning may logically be interpreted only as meaning that it made a distinction between distinctiveness ‘acquired’ through use — which was recognised in respect of the earlier UK word marks by the United Kingdom Intellectual Property Office — and distinctiveness ‘enhanced’ through use, which would result in greater distinctiveness being attributed to the earlier national trade marks. It should be noted that the Board of Appeal found, in essence and unequivocally, in paragraph 34 of the contested decision, that the findings concerning the assessment of the likelihood of confusion of the mark applied for with the earlier EU trade mark and the resulting conclusion that there was no likelihood of confusion between them also applied to the earlier national UK trade marks. That finding confirms that it did not at any time call into question the existence of those national trade marks and that they had the minimum degree of distinctiveness recognised in respect of registered trade marks.

72 Admittedly, in paragraph 35 of the contested decision, the Board of Appeal noted that ‘the [applicant’s] argument that the earlier UK marks [had] obtained acquired distinctiveness [was], however, not supported by any concrete evidence’ and that ‘the mere reference to the registration certificates of these marks [did] not suffice[,] as it [did] not allow the Board to make its own judgement’. However, that cumbersome wording must in fact be understood as a response to the argument put forward by the applicant in its submissions before the Board of Appeal concerning the degree of distinctiveness to be attributed to the earlier UK word marks on account of their reputation. The applicant indeed relied on the distinctiveness of the earlier UK word marks, referring to the considerable reputation of the mark ‘workspace’ and its extensive use in the United Kingdom since 1990.

73 It follows that the Board of Appeal did not err in finding that, failing any concrete evidence, it was not in a position to attribute a greater degree of distinctiveness to the earlier UK word marks, on account of alleged extensive use or alleged reputation, than the minimum distinctiveness which it had recognised in respect of those marks.

74 Enhanced distinctiveness as a result of extensive use or reputation cannot be presumed and must therefore be demonstrated by the party seeking to rely on it. In that regard, the mere reference in the certificates of the United Kingdom Intellectual Property Office — according to which the earlier word marks were inherently non-distinctive, but they had acquired, by the date of application for registration of those earlier marks, distinctive character as a result of the use made of them — cannot suffice to demonstrate that the distinctiveness of the earlier word marks had been enhanced as a result of extensive use or reputation. The only obligation on the Board of Appeal, in accordance with the case-law stemming from the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314), was to recognise the earlier UK word marks as trade marks and to attribute to them the minimum distinctiveness required for existing trade marks. In the present case, the Board of Appeal complied entirely with that obligation.

The second plea, alleging infringement of Article 95(1) of Regulation 2017/1001 and Article 27 of Delegated Regulation 2018/625

76 By the second plea, the applicant alleges infringement of Article 27(2) of Delegated Regulation 2018/625 and Article 95(1) of Regulation 2017/1001, on the ground that, in calling into question the validity of the earlier UK word marks, the Board of Appeal based the contested decision on an examination of facts, evidence and arguments which had not been submitted by the parties and which were not relied upon in the forms of order sought by them. It further argues that the Board of Appeal based the contested decision on grounds which had not been put forward by the intervener in its statement of grounds of appeal or before the Opposition Division.

78 At the outset, it should be noted that Article 82(2)(j) of Delegated Regulation 2018/625 provides that Title V — which includes Article 27(2), relied on by the applicant in support of the second plea — ‘shall not apply to appeals entered before 1 October 2017’. Since the appeal against the decision of the Opposition Division was entered after that date, namely on 27 September 2018, the applicant was entitled to base the second plea on that provision. It should also be borne in mind that, according to Article 27(2) of Delegated Regulation 2018/625, the examination of the appeal is to be restricted, in inter partes proceedings, to the grounds invoked in the statement of grounds.

79 The applicant claims, in essence, that the Board of Appeal infringed that provision, read in the light of Article 95(1) of Regulation 2017/1001, by examining, of its own motion, the issue of the validity and enforceability of the earlier UK trade marks, even though that issue had not been raised by the parties.

80 However, as follows from the analysis of the first plea, the Board of Appeal did not at any time call into question the validity of the earlier UK word marks.

The third plea, alleging infringement of Article 94(1) of Regulation 2017/1001

82 The applicant claims to allege infringement of Article 94(1) of Regulation 2017/1001 in that, even if the Board of Appeal was entitled to call into question the validity of the registrations on which it had relied in the notice of opposition, the Board of Appeal failed to give the applicant the opportunity to present its submissions and arguments and to produce evidence in support of them.

84 Examining the first plea has shown that the Board of Appeal did not at any time call into question the validity of the earlier UK word marks. It follows that the Board of Appeal cannot be criticised for supposedly failing to give the applicant the opportunity to present its arguments and to produce evidence for the purposes of defending the disputed validity of those earlier marks.

86 In light of all the foregoing, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the second head of claim relied on by the applicant, seeking to have the Court uphold the decision of the Opposition Division.

87 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since 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.

88 Moreover, the intervener requested that the applicant be ordered to pay the costs incurred by the intervener in the proceedings before the Opposition Division and the Board of Appeal.

89 In that regard, it should be recalled that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, the same is not true of costs incurred for the purposes of the proceedings before the Opposition Division (judgment of 26 October 2017, Sulayr Global Service v EUIPO — Sulayr Calidad (sulayr GLOBAL SERVICE), T‑685/15, not published, EU:T:2017:761, paragraph 53). Consequently, the intervener’s head of claim to the effect that the applicant should be ordered to pay the costs incurred before the Opposition Division must be rejected.

90 In any event, it must be pointed out that, in the contested decision, the applicant was ordered by the Board of Appeal to pay the intervener’s costs in respect of the expenses the intervener had incurred in the opposition and appeal proceedings. Accordingly, since the present judgment dismisses the action against the contested decision, the costs in question continue to be governed by the operative part of that decision (see, by analogy, judgments of 10 October 2017, Cofra v EUIPO — Armand Thiery (1841), T‑233/15, not published, EU:T:2017:714, paragraph 127; of 19 October 2017, Aldi v EUIPO — Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131; and of 28 February 2019, Lotte v EUIPO — Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Workspace Group v EUIPO - Technopolis Holding (UMA WORKSPACE) (EU trade mark - Judgment) [2020] EUECJ T-506/19 (28 May 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T50619.html Cite as: [2020] EUECJ T-506/19, ECLI:EU:T:2020:220, EU:T:2020:220

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