Alcar Aktiebolag v EUIPO - Alcar Holding (alcar.se) (EU trade mark - Judgment) [2020] EUECJ T-77/19 (26 March 2020)

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

Alcar Aktiebolag, established in Bromma (Sweden), represented by M. Ateva, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

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

Alcar Holding GmbH, established in Vienna (Austria), represented by C. Onken, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 November 2018 (Case R 378/2018‑1) relating to opposition proceedings between Alcar Holding and Alcar Aktiebolag,

composed of A. Marcoulli, President, C. Iliopoulos and R. Norkus (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 9 February 2019,

having regard to the response of EUIPO lodged at the Court Registry on 16 May 2019,

having regard to the response of the intervener lodged at the Court Registry on 11 June 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 3 June 2016, the applicant, Alcar Aktiebolag, 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 and 39 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: ‘Dealer services in relation to vehicles and boats; sales of vehicles and boats; advertising services relating to the sale of motor vehicles and boats’;

– Class 39: ‘Vehicle and boat renting services; providing information about automobiles and boats for lease by [means] of the internet; motor land vehicle and boat hire services’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/116 of 23 June 2016.

5 On 22 September 2016, the intervener, Alcar Holding GmbH, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for, first, in respect of certain services in Class 35, namely ‘dealer services in relation to vehicles; sales of vehicles; advertising services relating to the sale of motor vehicles’ and, second, in respect of certain services in Class 39, namely ‘vehicle renting services; providing information about automobiles for lease by [means] of the internet; motor land vehicle hire services’.

6 The opposition was based on the earlier EU word mark ALCAR, registered on 23 July 2004 under No 2 800 811.

7 That earlier mark designates goods in Classes 6, 7 and 12 and corresponding, for each of those classes, to the following description:

– Class 12: ‘Vehicle parts and accessories, namely disc edges of aluminium or steel, wheel nuts and wheel screws, valves for pneumatic tyres, snow chains’.

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

9 By decision of 19 December 2017, the Opposition Division rejected the opposition in respect of all the services referred to in paragraph 5 above.

10 On 16 February 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.

11 By decision of 18 November 2018 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the intervener’s appeal in its entirety and annulled the Opposition Division’s decision of 19 December 2017, thereby concluding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. In particular, according to the Board of Appeal, in the first place, the likelihood of confusion must be assessed from the perspective both of the general public and of the specialist public, who have a high level of attention on account of, inter alia, the price, infrequent purchase and technical complexity of the goods and services in question. In the second place, as regards the comparison of the goods and services in question, the Board of Appeal considered in particular that, given the fact that those goods and services are to some extent complementary and the fact that they may be distributed via the same distribution channels, their degree of similarity is average. As regards, in the third place, the comparison of the signs at issue, those signs are highly visually and phonetically similar, in particular because they coincide as to their first five letters, namely the word element ‘alcar’. The presence of the element ‘.se’ and the slight stylisation of the mark applied for are not such as to reduce the overall impression of similarity between them. As the marks at issue do not convey any meaning to the relevant public, the Board of Appeal considered their conceptual comparison to be neutral. In the fourth place, the earlier mark has average distinctive character. In those circumstances, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public, which led it to annul the Opposition Division’s decision and uphold the opposition in its entirety.

– stay the proceedings before it until the revocation proceedings against the earlier mark have been concluded and the real scope of protection of that mark has been determined;

– order the intervener to bear the costs of the proceedings before the Opposition Division, the Board of Appeal and the General Court.

14 The intervener disputes the admissibility of the present action on the ground that the application contains neither the statement of the pleas in law relied on nor the matters of law on which the action is based, in breach of, inter alia, Article 177(1)(d) of the Rules of Procedure of the General Court.

15 In that regard, it should be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 thereof, and to Article 177(1)(d) of the Rules of Procedure, the application must contain, inter alia, the subject matter of the dispute and a brief statement of the pleas in law on which it is based. Those particulars must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any further information. In order to guarantee legal certainty and sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars relied on be indicated, at least in summary form, coherently and intelligibly in the application itself (see order of 25 June 2019, Eaglestone v EUIPO — Eaglestone (EAGLESTONE), T‑82/19, not published, EU:T:2019:484, paragraph 20 and the case-law cited).

16 More specifically, whilst it should be acknowledged, first, that the statement of the pleas in the application need not conform with the terminology and layout of the Rules of Procedure and, second, that the pleas may be expressed in terms of their substance rather than of their legal classification, the application must nonetheless set out those pleas with sufficient clarity. Moreover, a mere abstract statement of the pleas in law in the application does not satisfy the requirements of the Statute of the Court of Justice of the European Union or the Rules of Procedure, and the expressions ‘brief statement of the pleas in law’ and ‘summary of those pleas in law’ used therein mean that the application must specify on what pleas the action is based (judgment of 28 September 2016, Pinto Eliseu Baptista Lopes Canhoto v EUIPO — University College London (CITRUS SATURDAY), T‑400/15, not published, EU:T:2016:569, paragraph 43).

17 It should be pointed out that, in the present case, the applicant does not rely on any specific provision that may have been infringed by the contested decision.

18 The fact remains that, as is apparent from the applicant’s written pleadings, the applicant seeks to show that there is no likelihood of confusion between the mark applied for and the earlier mark with regard to the goods and services in question.

19 In so doing, it is, in essence, claiming infringement of Article 8(1)(b) of Regulation 2017/1001.

20 It follows that the intervener’s argument alleging that the action is inadmissible must be rejected as unfounded.

21 As a preliminary point, as regards the applicant’s first head of claim, which must be regarded as a request to stay the proceedings pursuant to Article 69 of the Rules of Procedure, it should be borne in mind that, in accordance with Article 70(1) of those rules, the President of the Seventh Chamber of the General Court decided on 17 April 2019 not to stay the present proceedings. In that regard, it should be observed that the decision whether or not to stay proceedings falls within the discretion of the General Court (see judgment of 13 June 2019, Innocenti v EUIPO — Gemelli (Innocenti), T‑392/18, not published, EU:T:2019:414, paragraph 18 and the case-law cited). Moreover, it should be emphasised that, in the present case, the other parties to these proceedings did not agree with the stay requested and that, in any event, the request contained in the application was not supported by any argument suggesting that the sound administration of justice would have required such a stay, the applicant merely stating that ‘the outcome of the revocation proceedings will undoubtedly influence the outcome of the proceedings at the General Court’. It should be noted that the application for partial revocation was filed by the applicant with EUIPO on 8 February 2019, that is, after the contested decision was adopted, so that the General Court is not required, during its review of the lawfulness of that decision, to take into account a possible EUIPO revocation decision (see, to that effect, judgment of 26 October 2016, Westermann Lernspielverlage v EUIPO, C‑482/15 P, EU:C:2016:805, paragraph 30).

22 As has been pointed out in paragraph 19 above, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

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

24 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 line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question and taking into account all factors relevant to 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).

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

26 In order to assess the similarity, first, of the goods and services in terms of whether they are in competition with each other or are complementary and, second, of the signs at issue, it is first necessary to define the consumer of those goods and services.

27 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect (see, to that effect, 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).

28 It should also be borne in mind that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see judgment of 24 May 2011, ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 38 and the case-law cited).

29 In the present case, the Board of Appeal considered that the relevant public comprised both the general public and the specialist public (paragraph 22 of the contested decision). It added that the relevant public would display a higher level of attention in the light of, first, the technical complexity of the goods in question and, second, the infrequent purchase of those goods. Given that those assessments of the Board of Appeal have not been disputed by the applicant, they should be taken into account in the assessment of the likelihood of confusion.

30 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

31 As regards, more specifically, the complementarity of the goods and services, it should be borne in mind that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, it must be possible for complementary goods or services to be used together, with the result that goods and services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

32 In the present case, the Board of Appeal took the view, in paragraph 37 of the contested decision, that the services in Classes 35 and 39 covered by the mark applied for are similar to the goods in Classes 6, 7 and 12 covered by the earlier mark.

33 The applicant contests that assessment by putting forward, in essence, two sets of arguments.

34 First of all, the applicant submits that, in principle, goods cannot be compared with services as such in the light of the fact that they are fundamentally different in nature. Next, relying on the judgment of 24 September 2008, Oakley v OHIM — Venticinque (O STORE) (T‑116/06, EU:T:2008:399), it argues that, in order for goods and services to be regarded as similar, they must satisfy, in essence, two conditions, namely they must be (i) complementary and (ii) offered in the same places, neither of which is the case here.

36 In the first place, it should be borne in mind that the principles applicable to the comparison of goods also apply to the comparison between goods and services. It is true that, by their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary or that services may have the same purpose or use as goods, and thus compete with each other. It follows that, in certain circumstances, goods and services may be found to be similar (see judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited). In particular, it is apparent from the case-law that retail services of certain goods can be closely linked to those goods where those goods are covered by those services (see, to that effect, judgment of 5 October 2011, Cooperativa Vitivinícola Arousana v OHIM — Sotelo Ares (ROSALIA DE CASTRO), T‑421/10, not published, EU:T:2011:565, paragraph 33).

37 It follows that the applicant cannot effectively rely on the fact that the services covered by the mark applied for cannot be regarded as similar to the goods covered by the earlier mark owing to their different nature (see, to that effect, judgment of 7 September 2016, VICTOR, T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited).

38 In the second place, it should be observed that requirements similar to those set out in paragraphs 15 and 16 above apply where a claim or an argument is relied on in support of a plea in law (judgment of 9 July 2010, Grain Millers v OHIM — Grain Millers (GRAIN MILLERS), T‑430/08, not published, EU:T:2010:304, paragraph 38).

39 However, it should be noted that the applicant’s general statement, according to which, in essence, the goods and services in question are not similar as they are neither complementary nor offered in the same points of sale, is a peremptory statement which is neither substantiated nor proven.

40 In its written pleadings, the applicant does not outline any specific arguments in that regard, identify the goods to be compared or state the errors of law or of fact which the Board of Appeal allegedly made during its detailed analysis, in the contested decision, of the comparison of the goods and services at issue.

41 In any event, as regards the Board of Appeal’s conclusions as to the similarity of the goods and services, challenged by the applicant, it is sufficient to note that, in paragraphs 24 to 37 of the contested decision, the Board of Appeal rightly took into account the nature, purpose, use, distribution channels and complementarity of the goods and services in question. In those circumstances, it cannot be argued that the Board of Appeal erred in concluding that there is a low to average degree of similarity between the goods and services in question.

42 That conclusion cannot be called into question by the applicant’s other arguments.

43 First, as regards the applicant’s argument that the intervener uses other marks to describe its goods, it should be borne in mind that the comparison of the goods required by Article 8(1)(b) of Regulation 2017/1001 must relate to the description, as it appears in the registration document, of the goods covered by the earlier mark and not to the goods for which that mark is actually used unless, following a request for proof of genuine use of the earlier mark, in accordance with Article 47(2) and (3) of Regulation 2017/1001, such proof is furnished only in respect of some of the goods or services for which the earlier mark is registered (see judgment of 24 January 2013, Yordanov v OHIM — Distribuidora comercial del frio (DISCO DESIGNER), T‑189/11, not published, EU:T:2013:34, paragraph 41 and the case-law cited).

44 In the present case, as EUIPO rightly observes, the applicant did not, at any time during the proceedings before EUIPO, request proof of genuine use of the earlier mark. In the absence of such a request, the Board of Appeal rightly took into account, in the comparison of the goods and services, the goods covered by the earlier mark as they had been described in the registration document.

45 Furthermore, and in any case, as regards the fact that the particular circumstances in which the goods in question are marketed were allegedly not taken into account, it should be borne in mind that, since these may vary in time and depending on the wishes of the proprietors of the opposing marks, it is inappropriate to take those circumstances into account in the prospective analysis of the likelihood of confusion between those marks (judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59).

46 Second, as regards the applicant’s argument that the services in respect of which registration of the mark applied for was sought also relate to boats, while the goods covered by the earlier mark are very specifically limited to goods related to land vehicles, it is sufficient to note, as EUIPO did, that the services related to boats in Classes 35 and 39 are not among the services referred to in the notice of opposition filed by the intervener. In those circumstances, the services covered by the mark applied for and related to land vehicles must be regarded as necessarily relating to cars.

47 Accordingly, the claim that the goods and services at issue are not similar must be rejected.

48 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).

49 In addition, according to the case-law, a composite trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the composite mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (see, to that effect, judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 33).

50 In the present case, the figurative mark applied for is made up of two parts, namely the word element ‘alcar’ and the element ‘.se’, written in slightly stylised blue lower-case letters depicted on a white background. The earlier word mark, for its part, consists solely of the word element ‘alcar’.

53 In the first place, as regards the visual comparison of the signs, the Board of Appeal considered, in paragraph 42 of the contested decision, that the marks in question have a high degree of visual similarity as, in essence, the signs at issue coincide visually as to the word element ‘alcar’, which is the entirety of the earlier mark.

54 In the next paragraph of the contested decision, the Board of Appeal adds that the colour and slight stylisation of the mark applied for are not such as to neutralise the similarities resulting from the initial element, which is identical for the two marks in question.

55 According to the applicant, although the marks in question coincide as to the sequence of their first five letters, there are fundamental differences in the visual impression created by those marks.

56 First, unlike the earlier mark, the mark applied for can be distinguished by the presence of the suffix ‘.se’, which, unlike the earlier mark, informs consumers, in essence, that the applicant is a Swedish dealer that mainly operates online. Second, the mark applied for can also be distinguished in terms of its graphic stylisation as it not only is depicted, in essence, in blue and white, but also uses stylised characters.

58 In that regard, first, it should be borne in mind that what matters, rather, in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (judgments of 25 March 2009, Kaul v OHIM — Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraphs 82 and 83, and of 25 September 2015, Copernicus-Trademarks v OHIM — Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 46).

59 That case-law can be applied to the assessment of the similarity between a word mark and a figurative mark consisting in a word element depicted in a slightly stylised font. Accordingly, the presence, in each of the marks at issue, of several letters in the same order may be of some importance in the assessment of the visual similarities between those marks (judgment of 30 January 2019, Bekat v EUIPO — Borbet (ARBET), T‑79/18, not published, EU:T:2019:39, paragraph 29).

60 Second, it should be borne in mind that, in the present case, the signs in question have the same overall structure, which consists, in essence, as has already been observed in paragraph 53 above, in those signs coinciding as to their first five letters, namely the word element ‘alcar’.

61 In that context, it should also be noted that that part, which is common to the two signs at issue, gives rise to a visual similarity, particularly because the public generally pays more attention to the initial part of word marks (see, to that effect, judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 47).

62 Third, the presence of the word element ‘.se’ in the mark applied for does not, contrary to the applicant’s assertions, make it possible to distinguish the two marks in question, as it is merely secondary. As the Board of Appeal rightly states in paragraph 41 of the contested decision, the ending ‘.se’ is merely secondary, as it refers simply to a website address (see, to that effect, judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraphs 56 and 61).

63 Furthermore, the element ‘.se’ may also serve to indicate that the goods and services covered by the trade mark application may be obtained or consulted online or are internet related (see, to that effect, judgment of 28 June 2016, salesforce.com v EUIPO (SOCIAL.COM), T‑134/15, not published, EU:T:2016:366, paragraph 23).

64 Fourth, the same is true for the graphic representation of the mark applied for, on which the applicant seeks to rely. It must be pointed out that the graphic representation of the elements ‘alcar’ and ‘.se’ written in blue characters on a white background does not contain, as EUIPO rightly states, any particular originality that would make the marks visually different. Those elements must therefore be regarded as a secondary component in the visual perception of the mark, contrary to the applicant’s assertions.

65 In that context, it should also be borne in mind that, since the earlier trade mark is a word mark, its holder is entitled to use it in different scripts, such as, for example, a form comparable to that used by the trade mark applied for (judgment of 14 November 2017, Claranet Europe v EUIPO — Claro (claranet), T‑129/16, not published, EU:T:2017:800, paragraph 62).

66 Therefore, the Board of Appeal was entitled to conclude that there is a high degree of visual similarity between the signs in question.

67 In the second place, as regards the phonetic similarity, the Board of Appeal noted, in paragraph 43 of the contested decision, that the signs at issue have a high degree of similarity.

68 The applicant claims, however, that there are differences between the marks as regards the phonetic similarity resulting, in particular, from the presence of the suffix ‘.se’ in the mark applied for, so that that mark is pronounced as three separate words, namely ‘alcar’, ‘dot’ and ‘se’.

69 That line of argument is not convincing. It is sufficient to note that the only difference, consisting in the presence of the suffix ‘.se’, which, in the light of the findings set out in paragraphs 62 and 63 above, is a secondary element, is not enough to rule out the phonetic similarities resulting from the reproduction of the word element ‘alcar’, which is the only element of the earlier mark, in the mark applied for (see, to that effect, judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 61).

70 In those circumstances, the Board of Appeal did not make an error of assessment in taking the view, in paragraph 45 of the contested decision, that the signs at issue have a high degree of phonetic similarity.

71 In the third place, as regards the conceptual similarity, it must be pointed out that, in its written pleadings, the applicant does not provide any specific argument capable of calling into question the Board of Appeal’s assessment relating to the conceptual comparison of the marks in question, but merely refers in that regard to its arguments relating to the visual similarity.

72 In those circumstances, it should be noted that, in paragraph 44 of the contested decision, the Board of Appeal considered the conceptual similarity to be neutral given that, in essence, consumers do not associate the signs in question with any particular meaning.

73 The Board of Appeal did not therefore make an error of assessment in taking the view, in paragraph 45 of the contested decision, that the signs in question have a high degree of similarity.

74 It is now necessary to consider whether, overall, there is a likelihood of confusion between the marks at issue.

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

76 The average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). In that regard, consumers tend to remember similarities rather than dissimilarities between signs.

77 In paragraphs 54 to 58 of the contested decision, the Board of Appeal concluded that there is a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.

78 The applicant claims that there is no likelihood of confusion in the present case as, in particular, the earlier mark has an extremely weak distinctive character and not, as was concluded by the Board of Appeal, a normal distinctive character.

80 In order to carry out the assessment referred to in the case-law cited in paragraph 75 above, it should be recalled that the marks in question have a high degree of similarity, whereas the goods and services covered by the signs at issue have a low or average degree of similarity.

81 As regards the level of attention that will be displayed by the relevant public, it should be borne in mind that the fact that the public in question will pay more attention, as has been noted in paragraph 29 above, to the identity of the producer or supplier of the product or service that it wishes to purchase does not mean, however, that that public will examine the mark before it down to the smallest detail, or that it will compare that mark in minute detail to another mark. Even for a public displaying a high level of attention, the fact remains that the members of the relevant public only rarely have the chance to make a direct comparison between the different marks, but must place their trust in the imperfect picture of them that they have kept in their mind (see judgment of 21 November 2013, Equinix (Germany) v OHIM — Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraph 54 and the case-law cited).

82 Therefore, in the light of the assessments made in paragraph 80 and notwithstanding the higher level of attention paid by the relevant public, it must be concluded that the Board of Appeal was entitled to take the view, in paragraph 58 of the contested decision, that there is a likelihood of confusion between the mark applied for and the earlier mark.

83 That conclusion cannot be called into question by the applicant’s other arguments.

84 First, as regards the argument that the distinctive character of the earlier mark is ‘extremely’ weak, it should be borne in mind that the distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. The examination of the distinctive character of the earlier trade mark is particularly relevant in circumstances where there is only a low degree of similarity between the signs and where it is necessary to determine whether that low degree of similarity may be offset by a high degree of similarity between the goods (judgment of 28 September 2016, The Art Company B & S v EUIPO — G-Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 39).

85 However, that is not the case here as the signs at issue have a high degree of similarity (paragraph 73 above).

86 In that context and, in any event, even assuming that, as the applicant claims, an earlier mark has particularly weak inherent distinctiveness, the potentially weak distinctive character does not, in itself, preclude a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45). Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account of, in particular, a similarity between the signs and between the goods and services covered (judgments of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70).

88 Second, as regards the applicant’s argument that the earlier mark is not well known, it should be noted that, in the contested decision, the Board of Appeal did not express any view on the possible well-known character of the earlier mark. Furthermore, as EUIPO rightly observes, at no time during the proceedings before it did the intervener claim that the earlier mark was well known. That argument must therefore be dismissed as ineffective.

89 Third, the reference made by the applicant to the parties’ common history, which is not relevant to the assessment of the likelihood of confusion, should also be dismissed.

90 It follows from all the foregoing considerations that the Board of Appeal was right to conclude that there is a likelihood of confusion between the mark applied for and the earlier mark.

91 In those circumstances and without it being necessary to rule on the intervener’s argument that some of the items of evidence in the file provided by the applicant for the first time before the General Court are inadmissible, the single plea in law raised by the applicant must be rejected and the action must therefore be dismissed in its entirety.

92 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Alcar Aktiebolag v EUIPO - Alcar Holding (alcar.se) (EU trade mark - Judgment) [2020] EUECJ T-77/19 (26 March 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T7719.html Cite as: [2020] EUECJ T-77/19, EU:T:2020:126, ECLI:EU:T:2020:126

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