inMusic Brands v EUIPO - Equipson (Marq) (EU trade mark - Judgment) [2020] EUECJ T-687/19 (02 December 2020)

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(EU trade mark – Invalidity proceedings – EU word mark Marq – Earlier national and international figurative marks MARK – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Declaration of partial invalidity)

inMusic Brands, Inc., established in Cumberland, Rhode Island (United States), represented by D. Rose, Solicitor,

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and J. Crespo Carrillo, acting as Agents,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 30 July 2019 (Case R 1759/2018‑5), relating to invalidity proceedings between Equipson and inMusic Brands,

composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 8 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 23 September 2015, the applicant, inMusic Brands, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the word sign Marq, which is contested in the present case.

3 The goods in respect of which registration was sought are in Classes 9 and 11 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, as regards the goods in Class 11, to, inter alia, the following description:

– Class 11: ‘Electric lights; electric lighting fixtures; flashing strobe light apparatus; lighted disco balls; lighting apparatus for theatres, clubs and discotheques; lighting fixtures; stands for electric lighting fixtures; theatrical stage lighting apparatus; outdoor lighting; lighting tubes; lighting and lighting reflectors’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2015/206 of 30 October 2015. The contested mark was registered on 8 February 2016.

5 On 20 December 2016, the other party to the proceedings before the Board of Appeal, Equipson, SA, filed an application with EUIPO for a declaration of invalidity of the contested mark in respect of all the goods in Class 9 and in respect of the goods in Class 11 referred to in paragraph 3 above.

6 The application for a declaration of invalidity was based on the following earlier rights:

– the Spanish figurative mark, filed on 24 November 2006 and registered on 16 June 2007 under number 2 742 073, designating goods in Class 9 and corresponding to the following description: ‘Speakers, amplifiers, sound and lighting mixers, electrical cables, connectors, headphones’, as reproduced below:

– the international figurative mark, reproduced below, designating the Benelux countries, Germany, France, Italy, Portugal and the United Kingdom, filed and registered on 5 July 2010 under number 1 050 546 for goods in Class 9 and corresponding to the following description: ‘Speakers, amplifiers, sound and lighting mixers, electrical cables, connectors, headphones’:

7 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 23 August 2018, the Cancellation Division upheld the application for a declaration of invalidity in respect of certain goods in Class 9 and in respect of all the goods in Class 11 referred to in paragraph 3 above.

9 On 6 September 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 Cancellation Division to the extent to which it had declared the contested mark invalid for the goods in question in Class 11.

10 By decision of 30 July 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO confirmed the Cancellation Division’s decision and dismissed the appeal. In particular, it found, first of all, that the scope of the appeal before it was limited to the contested goods in Class 11 only and that, consequently, the decision of the Cancellation Division, which had declared the contested mark invalid for some of the goods in Class 9, had become final (paragraphs 15 and 16 of that decision). Relying on the earlier international registration of the figurative mark, it found that the relevant territory in the present case consisted of the Benelux countries, Germany, France, Italy, Portugal and the United Kingdom and that, depending on the goods concerned, the level of attention of the relevant public varied from average to high. It then went on to find that there was a low degree of similarity between the goods in question and that the signs in question were visually similar to an average degree and were phonetically identical. It also held that no conceptual comparison could be carried out in the absence of a clear meaning of the sign comprising the contested mark. Lastly, it found that the moderate degree of similarity between the goods was offset by the overall similarity between the signs, which was not cancelled out by any conceptual difference. Taking account of those elements, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the relevant professional consumers.

– annul the contested decision in its entirety and ‘maintain the registration’ for the relevant goods in Class 11;

– order EUIPO and the other party before the Board of Appeal to bear their own costs and to pay those incurred by the applicant in the present proceedings and in the proceedings before the Cancellation Division and before that Board of Appeal.

13 At the outset, it should be observed that, in view of the date on which the application for registration in question was filed, namely 23 September 2015, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

14 Accordingly, in the present case, in so far as the substantive rules are concerned, the references made, by the Board of Appeal in the contested decision and by the applicant in the line of argument raised, to Article 53(1)(a) and Article 8(1)(b) of Regulation 2017/1001 are to be construed as referring to the identical wording of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009.

15 By the present action, the applicant seeks the annulment of the contested decision only in so far as that decision declared the contested mark invalid in respect of the goods in Class 11 referred to in paragraph 3 above.

16 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.

17 The applicant claims that the Board of Appeal erred in finding that there was a likelihood of confusion. It submits that the Board of Appeal erred as regards (i) the level of attention of the relevant public, (ii) the assessment of the similarity of the signs, (iii) the assessment of the similarity of the goods, and (iv) the global assessment of the likelihood of confusion.

19 Under Article 53(1)(a), read in conjunction with Article 8(1)(b), of Regulation No 207/2009, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid 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.

20 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).

21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

22 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 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 No 207/2009 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).

23 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was right to find that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

24 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).

25 In the present case, for reasons of procedural economy, the Board of Appeal followed the approach adopted by the Cancellation Division, consisting in examining whether there was a possible likelihood of confusion on the basis solely of a comparison of the contested mark with the earlier international registration.

26 As regards, first of all, the relevant territory, the Board of Appeal found, in essence, that the relevant territory is that of the Benelux countries, Germany, France, Italy, Portugal and the United Kingdom, since the earlier international registration designated those Member States (paragraph 20 of the contested decision).

27 Without specifically criticising those findings, the applicant nevertheless submits that the relevant territory is Spain, Belgium, the Netherlands, Luxembourg, Germany, France, Portugal and the United Kingdom.

28 On the assumption that the applicant’s arguments must be understood as seeking to challenge the Board of Appeal’s assessment concerning the relevant territory, it should be noted that, in so far as the application for a declaration of invalidity was examined on the basis of the earlier international registration designating the Benelux countries, Germany, France, Italy, Portugal and the United Kingdom, the Board of Appeal acted correctly in taking the view that the relevant territory in the present case is the territory covered by that international registration.

29 As regards, next, the relevant public, the Board of Appeal found that the relevant public differed depending on the goods concerned. In particular, it found, with regard to the goods covered by the earlier mark in Class 9, that ‘speakers, amplifiers, electrical cables, connectors, headphones’ were aimed at the general public and at specialists, whereas ‘sound and lighting mixers’ were aimed mainly at light technicians and other event-sector professionals. As regards the goods in Class 11 covered by the contested mark, the Board of Appeal found that ‘electric lights, electric lighting fixtures; lighting fixtures, stands for electric lighting fixtures, theatrical stage lighting apparatus, outdoor lighting, lighting tubes, lighting and lighting reflectors’ were aimed both at the general public and at specialists, whereas ‘flashing strobe light apparatus, lighted disco balls, lighting apparatus for theatres, clubs and discotheques, theatrical stage lighting apparatus’ were aimed primarily at professionals in the event sector (paragraph 23 of contested decision).

30 The applicant maintains, contrary to the Board of Appeal, that the goods covered by the earlier mark are aimed at ‘technical professionals (and notably DJs)’.

31 In that regard, it must be stated, in the first place, that the applicant’s claim that the goods covered by the earlier mark are aimed exclusively at a professional public is not supported by any arguments or evidence.

32 In the second place, as the Board of Appeal observes, not all of the goods covered by the earlier mark are aimed exclusively at professionals. While it is true that some of those goods are aimed primarily at professionals in the event sector, a large portion of those goods, such as speakers, amplifiers, electrical cables and headphones, are, however, intended for both the general public and professional consumers.

33 The Board of Appeal did not therefore err in holding that the goods covered by the earlier mark are aimed in part at the general public and at the specialist public and in part at professionals.

34 Lastly, as regards the level of attention, the Board of Appeal found that, although ‘lighting mixers’ were not purchased on a daily basis, they were not, however, necessarily particularly expensive. It concluded that the level of attention of the relevant public in respect of all the goods in question varied from average to high depending on the price and technical sophistication of the goods concerned (paragraph 24 of the contested decision).

35 The applicant disputes the Board of Appeal’s assessment of the level of attention of the relevant public. In particular, it submits that that level of attention is high, taking account of the fact that the goods in question are more expensive and specialised than those purchased on a regular basis. In support of that argument, the applicant relies on the decision of the First Board of Appeal of EUIPO in Case R 2603/2014‑1 (‘TOUCH ID’), in which it was held that, where goods are not purchased on a regular basis, the average consumer pays them a rather high level of attention. The applicant adds that the professionals at whom the goods covered by the earlier mark are directed display a high level of attention.

37 In that regard, it must be stated, as EUIPO has done, that the applicant does not put forward any specific evidence to show that all the goods in question have a high purchase price and are not purchased frequently.

38 Not only is that claim not supported by any evidence, but it should be noted that some of the goods covered by the marks at issue, such as ‘electrical cables’ in Class 9 and ‘electric lights’ in Class 11, are purchased frequently at prices which are not, as a general rule, high, do not have a high level of technical complexity and are aimed both at the general public and at the specialised public. As was demonstrated during the proceedings before EUIPO, even goods of a technical and specialised nature, such as ‘sound and lighting mixers’, may be inexpensive. Thus, the fact that the applicant relies on the frequency of purchase and the high price of the goods in question concerns, in any event, only some of those goods. The view therefore cannot be taken that a high level of attention is necessary for the purchase of such goods.

39 Lastly, it should be recalled that, as regards the assessment of the likelihood of confusion, where the relevant public consists of consumers who are part of the general public and of professionals, the section of the public with the lowest level of attention must be taken into consideration (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21 and the case-law cited). However, in the present case, as has been established in paragraph 32 above, some of the goods covered by the marks at issue are aimed primarily at a public of professionals. Consequently, the level of attention of that public with regard to those goods will necessarily be higher than that of the general public (see, to that effect, judgment of 27 September 2016, Satkirit Holdings v EUIPO – Advanced Mailing Solutions (luvo), T‑449/15, not published, EU:T:2016:544, paragraph 25).

40 The Board of Appeal was therefore right in finding that the level of attention of the relevant public for the goods in question varied from average to high. Consequently, the applicant’s arguments must be rejected as being unfounded.

41 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose 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 goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

42 In the present case, the Board of Appeal noted, in paragraphs 34 and 35 of the contested decision, that the goods in Class 11 covered by the contested mark were similar, to a low degree, to the ‘lighting mixers’ covered by the earlier mark, in so far as those goods were regarded, in essence, as being complementary and could be produced by the same manufacturers and sold by the same retail outlets, in particular, specialist shops for lighting technology, and were aimed at the same public.

43 The applicant disputes the Board of Appeal’s assessment regarding the degree of similarity between the goods in question and submits that they are not similar. It states, as a preliminary point, that, in the contested decision, the Board of Appeal merely examined whether there was any similarity between ‘sound and lighting mixers’ and the goods in question. It infers from this that the other goods in Class 9, covered by the earlier mark, are different from the goods covered by the contested mark.

44 In the first place, the applicant claims that, if the Board of Appeal had not misinterpreted the terms ‘sound and lighting mixers’ as covering two separate products, ‘sound mixers’, on the one hand, and ‘lighting mixers’ on the other, it would necessarily have found that the goods in question were dissimilar, in view of the fact that sound mixers are different from the goods covered by the contested mark. In the second place, it submits that, even if the terms ‘sound and lighting mixers’ should be understood separately, the term ‘lighting mixers’ does not have a known meaning and does not satisfy the requirements of clarity and precision referred to in the case-law and must, therefore, be disregarded or, at the very least, interpreted strictly. In the third place, it submits that, even assuming that those terms have a clear and precise meaning, the goods covered by the contested mark differ from ‘lighting mixers’. In particular, it submits that they are sold by different retail outlets, are not interchangeable and therefore not in competition, and are aimed at a different public. It adds that the goods covered by the contested mark have a different function from sound and lighting mixers, the former being intended to illuminate or to light up, the latter to change lighting.

46 In the present case, first, as regards ‘sound and lighting mixers’ in Class 9 covered by the earlier mark, it must be observed that it is for the person requesting registration of a sign as an EU trade mark to give, in its application, a list of the goods in respect of which the registration is requested and to provide, for each of those goods, a description indicating clearly their nature (judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 23). Moreover, it follows from Article 26(1)(c) of Regulation No 207/2009 (now Article 31(1)(c) of Regulation 2017/1001), that an application for an EU trade mark must contain a list of the goods in respect of which the registration is requested and that, under Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), the list of goods must be worded in such a way as to indicate clearly the nature of those goods. While those provisions require the goods in respect of which protection of the EU trade mark is sought to be identified by the applicant with sufficient clarity and precision, this is in order to enable EUIPO and economic operators, on that basis alone, to determine the extent of the protection sought (see judgment of 3 June 2015, Lithomex v OHIM – Glaubrecht Stingel (LITHOFIX), T‑273/14, not published, EU:T:2015:352, paragraph 27 and the case-law cited; see also, by analogy, judgments of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraphs 49 to 51, and of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 49).

47 In the present case, it is apparent from some of the evidence submitted during the proceedings before EUIPO that ‘lighting mixers’ are consoles which make it possible to control several lighting fixtures simultaneously, to adjust their effects and to create luminous ambiances, whereas ‘sound mixers’ are intended to control, harmonise and mix several sound sources with a view to producing sound effects.

48 The Board of Appeal was therefore correct in finding that the wording ‘sound and lighting mixers’ in Class 9 covered by the earlier mark clearly covered two separate products, namely sound mixing consoles, on the one hand, and lighting control consoles, on the other. It cannot be inferred from the presence of the conjunction ‘and’ that that wording refers to a single product capable of controlling sound and lighting at the same time.

49 Furthermore, it must be held that the terms ‘sound and lighting mixers’ are sufficiently precise in their wording. It should also be noted, as EUIPO has done, that, unlike the case-law relied on by the applicant, those terms which are used in the wording of the goods covered by the earlier mark do not relate to numerous and complex goods and, therefore, are not vague terms (such as ‘artists’ materials’).

50 Second, as regards the similarity between lighting mixers in Class 9 covered by the earlier mark and the goods in Class 11 covered by the contested mark, it is common ground that those mixers are used by professional consumers in conjunction with lighting fixtures in order to be able to control several fixtures simultaneously and to adjust their effects in the context of shows, theatre productions, concerts and other events.

51 The Board of Appeal was therefore entitled to find, in essence, and correctly, in paragraph 34 of the contested decision, that there is a complementary relationship between the goods covered by the contested mark in Class 11 and the sound and lighting mixers in Class 9 covered by the earlier mark. Goods are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).

52 Furthermore, contrary to what the applicant claims, the goods in question may be sold by the same retail outlets. These are, in particular, specialist shops for lighting technology.

53 In those circumstances, it must be held that the Board of Appeal did not err in finding that there was a low degree of similarity between the goods in Class 11 covered by the contested mark and the ‘lighting mixers’ in Class 9 covered by the earlier mark.

54 It is apparent from the case-law that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

55 In the presence of a composite mark, assessment of the similarity between two marks means more than taking just one component of a composite 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 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).

56 As regards the earlier mark, the Board of Appeal found, in essence, that the word element ‘mark’ was dominant in that mark and that it had a distinctive character in relation to the goods covered by that mark.

57 The applicant claims that the figurative element of the earlier mark is ‘an eye-catching and dominant element’ given its size and bright colour.

59 As a preliminary point, it should be noted that the earlier mark is a composite mark, consisting of the word element ‘mark’, written in a standard font and in black and bold capital letters, and a stylised figurative element consisting of three white legs affixed to a red rectangular background.

60 In the first place, as regards the question whether one or more elements are likely to dominate the image of the earlier mark, it should be noted, as is apparent from paragraph 39 of the contested decision, that, in so far as it is identified as representing the letter ‘m’, the figurative element of that mark will be regarded as a mere repetition of the initial capital letter of the word element ‘mark’ of that mark, with the result that the consumer will perceive this as being a decorative element which enhances the presence of that word element and is subject to it.

61 It should also be noted that the word element of the earlier mark, reproduced in capital letters, is clearly visible. Furthermore, the size of that element is greater than that of the figurative element of that mark. The mere colouring of that figurative element cannot suffice to render it visually dominant in relation to that word element.

62 In the light of the foregoing, the Board of Appeal did not err in finding that, visually, the word element ‘mark’ was dominant in the earlier mark.

63 In the second place, as regards the distinctive character of the elements comprising the earlier mark, it should be noted, as the Board of Appeal has done (paragraph 37 of the contested decision), 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 or services in question by quoting the name of the mark than by describing the figurative element of that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 39; see, also, judgment of 25 May 2016, Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (ocean ibiza), T‑6/15, not published, EU:T:2016:310, paragraph 45 and the case-law cited). Consequently, in the present case, the word element of that mark cannot be less distinctive than its figurative element.

64 Visually, the Board of Appeal noted that the signs in question had the same length and coincided in their first three letters, ‘m’, ‘a’ and ‘r’, but that they differed in their last letter, namely the letter ‘k’ of the earlier mark and the letter ‘q’ of the contested mark, as well as in the presence of a figurative element in the earlier mark. On the basis of those factors, it found that those signs displayed, at most, an average degree of visual similarity.

65 The applicant submits that there is no visual similarity between the signs in question on account of the presence of the visually eye-catching figurative element in the earlier mark and the fact that the beginnings and the ends of those signs are different. In particular, after referring to the case-law according to which the relevant public generally tends to focus its attention on the first element of a sign, in view of the fact that that public reads from left to right, the applicant submits that the presence of that figurative element at the beginning has a significant impact on the relevant public’s visual perception of that mark. Furthermore, it submits that, given the limited length of those signs, the difference between the final letters is sufficient to create a different overall impression. In support of its argument, it relies on the decision of the Second Board of Appeal of EUIPO of 21 March 2017 in Case R 303/2016 (ZARA/ZARX).

67 With regard to the visual comparison of the signs, it should be recalled from the outset that there is nothing preventing a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic forms capable of creating a visual impression (see judgment of 26 September 2014, Koscher + Würtz v OHIM – Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraph 51 and the case-law cited).

68 In the present case, it is appropriate to begin by noting that the contested mark consists exclusively of the letters ‘m’, ‘a’, ‘r’ and ‘q’, whereas the earlier mark consists of a figurative element, followed by the word element ‘mark’, written in a standard font and in black and bold capital letters. The stylised figurative element, placed at the beginning of the earlier mark, represents three white legs affixed to a red rectangular background.

69 Although it is true that the signs in question differ, first, in their final letters, namely ‘q’ in the contested mark and ‘k’ in the earlier mark and, second, in the figurative element placed before the word element of the earlier mark, they nevertheless display significant visual similarities. In particular, those signs have the same length and coincide in most of their word elements, that is to say, three of the four letters are identical and are placed in the same order. In other words, the difference between the word elements ‘mark’ and ‘Marq’ lies solely in one letter out of four, namely the last letter. Thus, the initial parts of those word elements, which is the part to which consumers normally attach more importance (see, to that effect, judgment of 18 September 2012, Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 40 and the case-law cited), are identical.

70 Furthermore, as EUIPO has observed, the font used for the word element of the earlier figurative mark is commonplace and does not have any particular stylisation capable of differentiating it from the word element of the contested mark.

71 It must therefore be held that the fact that the sole word element ‘marq’ in the contested mark is almost identical to the dominant visual element of the earlier mark, namely the word element ‘mark’, is sufficient, in the present case, to establish a visual similarity between the signs in question.

72 In those circumstances, the Board of Appeal did not err in finding that neither the presence of a figurative element in the earlier mark nor the graphic difference between the letters ‘k’ and ‘q’ at the ends of the word elements of the signs in question was such as to eliminate the visual similarity resulting from the sequence of the letters ‘m’, ‘a’ and ‘r’, which was correctly regarded, at most, as average by that Board of Appeal.

74 First, it is necessary to reject the applicant’s claim that the figurative element of the earlier mark has a visual impact capable of diverting the public’s attention from the word elements. It is clear from paragraphs 60 to 62 above that the Board of Appeal acted correctly in finding that that figurative element was in a position that was visually secondary to the word element ‘mark’ of that mark for the purposes of the visual comparison of the signs in question because consumers, in principle, will pay greater attention to the word elements than to the figurative elements of marks composed of word and figurative elements (see, to that effect, judgments of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37, and of 31 January 2012, Cervecería Modelo v OHIM – Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, not published, EU:T:2012:36, paragraph 38).

75 Second, as regards the earlier decision of the Second Board of Appeal of EUIPO of 21 March 2017 in Case R 303/2016 (ZARA/ZARX) relied on by the applicant in support of its argument, it must be observed that, although it is true that the limited length of the signs enables consumers better to grasp the variations in their spelling (see, to that effect, judgment of 13 February 2007, Ontex v OHIM – Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 70), the fact remains that the difference between the letter ‘k’ and the letter ‘q’ at the ends of the signs in question is not capable of precluding the similarity between those signs, inasmuch as, first, both letters are consonants and, second, the consumer’s attention is also directly drawn by the fact that those signs begin with the same letter ‘m’. They therefore have in common the majority of the letters of which they consist.

76 Accordingly, the applicant’s arguments relating to the visual comparison of the signs must be rejected as being unfounded.

77 The Board of Appeal found, in paragraph 43 of the contested decision, that it was highly unlikely that the capital letter ‘m’ of the figurative element of the earlier mark, if perceived at all, would be pronounced. It concluded that, irrespective of the different languages spoken in the relevant territories, the signs in question were phonetically identical.

78 The applicant maintains that there is at most a low degree of similarity between the signs in question in so far as the earlier mark is likely to be pronounced ‘em-mark’, whereas the contested mark is pronounced ‘marq’. It argues that, due to the presence of the additional letter ‘m’ at the beginning of the earlier sign, the beginnings of those signs and the number of syllables are different.

80 With regard to the pronunciation of the earlier mark, it must be noted that it is unlikely that the stylised figurative element of the earlier mark would be perceived by the relevant public as an element representing the letter ‘m’. It must therefore be held that that mark will be pronounced as a single syllable and not as two, contrary to the applicant’s assertions. Consequently, the signs in question are composed of the same number of syllables.

81 Even if, as the applicant submits, the relevant public were to identify the figurative element of the earlier mark as a representation of the letter ‘m’, that letter could be regarded as a mere stylised repetition of the first letter of the word element ‘mark’ of that mark, with the result that it would not be pronounced. In any event, even if it were not regarded as being a repetition of the first letter of that mark, it would be disregarded, since it would be unusual for those consumers to pronounce it by stuttering ‘m-mark’ rather than simply pronouncing it ‘mark’.

82 Consequently, the Board of Appeal did not err in finding that the signs in question were phonetically identical.

83 The Board of Appeal found, in paragraph 44 of the contested decision, that a conceptual comparison of the signs was not possible because the sign constituting the contested mark conveyed no clear meaning.

84 It should be noted that the applicant does not dispute the Board of Appeal’s assessment that the sign constituting the contested mark has no conceptual meaning. It adds that, unlike that sign, the earlier mark could be perceived as referring to a symbol or to a sign, to a blemish or to a male first name. Consequently, the applicant submits that there is no conceptual similarity between the signs in question.

85 EUIPO observes that the applicant does not appear to dispute the Board of Appeal’s assessment that it was impossible to carry out a conceptual comparison of the signs in question, since neither of those signs had any meaning for the relevant public.

86 In that regard, it should be noted that the term ‘marq’ in the contested mark has no meaning and does not convey any concept, which the applicant also maintains. Nevertheless, as the applicant has observed, the word element ‘mark’ of the earlier mark will be perceived as a symbol or sign, a blemish or a male first name.

87 Accordingly, the signs in question are conceptually different, since, in the present case, the earlier mark has a specific meaning, whereas the contested mark has no meaning (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).

88 Having regard to the foregoing, it must be concluded from this, not, as the Board of Appeal held in paragraph 44 of the contested decision, that a conceptual comparison is not possible, but rather that there is no conceptual similarity between the signs in question (see, to that effect, judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 53).

89 With regard to the judgment of 13 May 2015, Ferring v OHIM – Kora (Koragel) (T‑169/14, not published, EU:T:2015:280, paragraphs 68 and 69), relied on by EUIPO, it must be held that, in that case, neither of the signs in question had any particular meaning, in contrast to the circumstances in the present case.

90 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).

91 In the present case, the Board of Appeal found that, in view of the average degree of visual similarity and the phonetic identity between the signs in question, as well as of the average inherent distinctiveness of the earlier mark, there was a likelihood of confusion on the part of the relevant specialist consumers in respect of the goods in Class 11 covered by the contested mark. According to that Board of Appeal, the low degree of similarity between the goods was offset by the overall similarity between the signs in question and could not be cancelled out by conceptual differences.

92 In that regard, it should be noted that the fact that the Court has concluded, in paragraph 87 above, that there is no conceptual similarity between the signs in question does not affect the Board of Appeal’s finding in paragraph 49 of the contested decision that the similarity of those signs is not cancelled out by their conceptual differences. The possible meanings of the word element ‘mark’ in the earlier mark are not such as to offset the visual and phonetic similarities of those signs.

94 In the first place, as regards the applicant’s argument that the Board of Appeal should have found that there was no likelihood of confusion since there was no similarity between the signs and the goods, it must be recalled that the Board of Appeal acted correctly in finding that there was a low degree of similarity between the goods in question and that there was, at most, an average degree of visual similarity and phonetic identity between the signs in question (see paragraphs 51, 72, 82 and 90 above).

95 In the second place, the applicant essentially criticises the Board of Appeal on the ground that it assessed the similarity between the goods without taking into account all the relevant factors relating to those goods, as set out in the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442). Contrary to what the applicant claims, the Board of Appeal compared the goods in question, having made certain findings relating to the intended purpose, complementarity, distribution channels and retail outlets of those goods (see paragraph 42 above).

96 In the third place, the applicant criticises the Board of Appeal on the ground that it placed greater emphasis on the phonetic comparison of the signs. It submits, in essence, that the phonetic identity of the signs in question is of less significance in the present case, since, in the assessment of the likelihood of confusion, the goods in question are marketed in such a way that, at the time of purchase, the relevant public usually perceives the mark designating the goods visually, in a store or a catalogue. According to the applicant, it is unlikely that those goods will be purchased by the relevant consumer solely on an oral basis and that no visual perception will take place prior to purchase.

97 In that regard, it must be stated that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs in question do not always have the same weight and it is then appropriate to examine the objective conditions under which the marks may be present on the market (judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañón (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 60). According to the case-law, the extent of the similarity or difference between the signs in question may depend, in particular, on the inherent qualities of the signs or on the conditions under which the goods or services covered by the signs are marketed (judgment of 18 May 2018, Italytrade v EUIPO – Tpresso (teaespresso), T‑68/17, not published, EU:T:2018:283, paragraph 68). In particular, if the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).

98 In the present case, the applicant’s position with regard to the relative importance to be attached to the visual and phonetic similarities of the signs in question cannot be accepted. Although the goods in question are indeed ‘sold as seen’ in self-service stores or through catalogues, they are also likely to be recommended or purchased orally. Consumers could seek assistance from a salesperson or be led to choose goods from the categories in question because they have heard them being spoken about, in which case they might retain the phonetic impression of the mark in question as well as the visual aspect. Therefore, in the assessment of the likelihood of confusion, the phonetic identity between those signs is, in this case, at least as important as their visual similarity (see, to that effect, judgment of 23 September 2011, NEC Display Solutions Europe v OHIM – C More Entertainment (see more), T‑501/08, not published, EU:T:2011:527, paragraph 53 and the case-law cited).

99 In the light of all of the foregoing considerations, and given that the applicant does not dispute the assessments made by the Board of Appeal as regards the average inherent distinctiveness of the earlier mark, it must be concluded that the Board of Appeal acted correctly in finding, in the context of an overall assessment carried out in paragraphs 45 to 50 of the contested decision, that there is a likelihood of confusion between the marks at issue in respect of all the goods in question in Class 11.

100 Consequently, the single plea in law relied on by the applicant must be rejected as being unfounded and the action must therefore be dismissed in its entirety.

101 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.

102 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> inMusic Brands v EUIPO - Equipson (Marq) (EU trade mark - Judgment) [2020] EUECJ T-687/19 (02 December 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T68719.html Cite as: [2020] EUECJ T-687/19, EU:T:2020:582, [2021] ETMR 13, ECLI:EU:T:2020:582

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