Yongkang Kugooo Technology v EUIPO - Ford Motor Company (kugoo) (EU trade mark - Judgment) [2021] EUECJ T-324/20 (19 May 2021)

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(EU trade mark – Opposition proceedings – Application for EU figurative mark kugoo – Earlier EU and national word marks KUGA and earlier EU word mark KUGA ENERGI – 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))

Yongkang Kugooo Technology Co. Ltd, established in Yongkang (China), represented by P. Pérot, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 March 2020 (Case R 65/2019‑4), relating to opposition proceedings between Ford Motor Company and Yongkang Kugooo Technology,

composed of D. Spielmann, President, U. Öberg and O. Spineanu‑Matei (Rapporteur), Judges,

having regard to the response lodged at the Court Registry on 28 September 2020,

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 20 July 2017, the applicant, Yongkang Kugooo Technology Co. Ltd, 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 goods in respect of which registration was sought are in Class 12 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Electric vehicles; driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; yachts; air cushion vehicles; push scooters [vehicles]; camping cars; roof racks for automobiles; electric cars; bicycles; mobility scooters; electric bicycles; mopeds; self-balancing unicycles; trolleys; pushchairs; air vehicles; sailing vessels; airships’.

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2017/143 of 31 July 2017.

5 On 31 October 2017, Ford Motor Company filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the word mark KUGA, registered in the United Kingdom on 6 April 2007 under No 2435635, covering ‘motor land vehicles and parts and accessories therefor’ in Class 12 (‘earlier mark No 1’);

– the EU word mark KUGA, registered on 19 November 2007 under No 5623401, covering ‘motor land vehicles and parts and accessories therefor’ in Class 12 (‘earlier mark No 2’);

– the EU word mark KUGA ENERGI, registered on 24 August 2017 under No 16684251, covering ‘motor vehicles and parts and accessories thereof’ in Class 12 (‘earlier mark No 3’);

– the non-registered word mark KUGA, used in the course of trade in Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and ‘EUIPO’ for ‘vehicles and parts and accessories therefor’ and for the services ‘repair and maintenance of vehicles’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001). In support of those three grounds, Ford Motor Company relied, respectively, on earlier marks Nos 1 to 3, earlier marks Nos 1 and 2 and the earlier non-registered word mark KUGA.

8 On 19 November 2018, the Opposition Division rejected the opposition. In particular, it took the view that the goods covered by the marks at issue were either identical or different, that the level of attention of the relevant public in respect of the identical goods was higher and that the signs at issue displayed, at most, an average degree of visual and phonetic similarity, while a conceptual comparison between them was not possible. It took the view that earlier marks Nos 1 and 2 had an average degree of inherent distinctiveness and that they did not have enhanced distinctiveness or a reputation. It concluded that there was no likelihood of confusion with regard to those marks. As regards earlier mark No 3, it ruled out any likelihood of confusion on the ground, in essence, that the signs at issue were even less similar.

9 On 10 January 2019, Ford Motor Company 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 24 March 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO, first, rejected the opposition in so far as it was based on Article 8(4) and (5) of Regulation 2017/1001. Secondly, it upheld in part the opposition based on Article 8(1)(b) of that regulation and annulled the decision of the Opposition Division in so far as it had rejected the opposition in respect of ‘electric vehicles; driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; yachts; air cushion vehicles; push scooters [vehicles]; camping cars; roof racks for automobiles; electric cars; bicycles; mobility scooters; electric bicycles; mopeds; self-balancing unicycles; air vehicles; sailing vessels; airships’. It dismissed the appeal as to the remainder, namely in respect of ‘trolleys; pushchairs’.

– annul the contested decision in so far as it annulled the decision of the Opposition Division and upheld the opposition of Ford Motor Company;

– alter the contested decision and, consequently, reject the opposition of Ford Motor Company and grant the trade mark application in its entirety;

– order Ford Motor Company to pay the costs incurred before EUIPO and the General Court.

13 Given the date on which the application for registration at issue was filed, namely 20 July 2017, 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, as amended (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

14 Consequently, in the present case, so far as the substantive rules are concerned, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward and by EUIPO to Article 8(1)(b) of Regulation 2017/1001 must be understood as being references to Article 8(1)(b) of Regulation No 207/2009, as amended, the wording of which is identical.

15 In support of the action, the applicant relies on a single plea in law, alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009. In that regard, it claims that there is no likelihood of confusion on the part of the relevant public.

17 Article 8(1)(b) of Regulation No 207/2009 provides that, 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

18 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).

19 As a preliminary point, it must be noted that, after defining the relevant public and its level of attention, the Board of Appeal analysed the likelihood of confusion by taking into consideration, first of all, earlier marks Nos 1 and 2 and, next, earlier mark No 3 in order to conclude that there was a likelihood of confusion on the part of the relevant public with regard to those three earlier marks.

20 As regards the relevant public, the Board of Appeal took the view that, since the earlier marks were a United Kingdom mark and two EU trade marks, the relevant public was the public in the United Kingdom, on the one hand, and the public in the European Union, on the other.

21 Furthermore, the Board of Appeal took the view that the goods at issue in Class 12 were addressed to the public at large and to professionals. It stated that those consumers paid particular attention to the goods concerned (paragraph 13 of the contested decision). When assessing the likelihood of confusion with regard to earlier marks Nos 1 and 2, it based its analysis on the assumption that the relevant public would display a higher level of attention, on the one hand (paragraph 49 of the contested decision), and that that public would display an above-average level of attention, on the other (paragraph 50 of the contested decision). In the assessment of the likelihood of confusion with regard to earlier mark No 3, it took the view that the relevant public would display a high level of attention (paragraph 66 of the contested decision).

22 The parties do not dispute those assessments of the Board of Appeal. Furthermore, it must be noted that, first, having regard to the goods at issue, the relevant public consists both of the public at large and of professionals. Secondly, according to settled 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, and 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). In that regard, the parties take the view, in essence, that the Board of Appeal correctly concluded that the relevant public would display a high level of attention. It must be stated that, despite the different formulations used by the Board of Appeal, which are not, moreover, unambiguous, this is the level of attention of the relevant public accepted by that board and that such an assessment is not incorrect. Having regard to the goods at issue in the present case, which, in addition to the fact that they are not purchased on a daily basis and may be relatively expensive, have specific technical features and potential safety risks, both the public at large and professionals will display a high level of attention.

23 Accordingly, there is no need to call into question the Board of Appeal’s assessments relating to the relevant public, which must be regarded as consisting, in the present case, both of the public at large and of professionals, with the relevant consumers in the European Union and in the United Kingdom displaying a high level of attention.

Examination of the likelihood of confusion with regard to earlier marks Nos 1 and 2

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

25 The Board of Appeal took the view that ‘electric vehicles; driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; air cushion vehicles; push scooters [vehicles]; camping cars; electric cars; bicycles; mobility scooters; electric bicycles; mopeds; self-balancing unicycles’ and ‘roof racks for automobiles’ covered by the mark applied for were identical, respectively, to ‘motor land vehicles’ and ‘parts and accessories [for motor land vehicles]’ covered by earlier marks Nos 1 and 2.

26 Furthermore, according to the Board of Appeal, ‘yachts; air vehicles; sailing vessels; airships’ covered by the mark applied for are similar to a very low degree to ‘motor land vehicles’, but different from ‘parts and accessories [for motor land vehicles]’ covered by earlier marks Nos 1 and 2.

27 After mentioning the goods to be compared, the applicant submits that ‘driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; yachts; air cushion vehicles; push scooters [vehicles]; camping cars; roof racks for automobiles; bicycles; electric bicycles; mopeds; self-balancing unicycles; air vehicles; sailing vessels; airships’ covered by the mark applied for differ in their nature and in their intended purpose from ‘motor vehicles and their parts and components’ covered by earlier marks Nos 1 and 2. It submits that, in addition, certain of the goods covered by the mark applied for, namely ‘push scooters [vehicles]; bicycles; electric bicycles; mopeds; self-balancing unicycles’ are, unlike motor vehicles, used for individual mobility over short distances. It submits that those goods and the goods covered by earlier marks Nos 1 and 2 do not generally compete with each other on the market, are not manufactured by the same undertakings and do not have the same distribution channels, and that their purchase prices are completely different.

29 As a preliminary point, in so far as the applicant, which refers to ‘trolleys’ and ‘pushchairs’ in its application, seeks annulment of the contested decision in respect of those goods, it must be stated that the Board of Appeal of EUIPO took the view that they were different from the goods covered by the earlier marks concerned and rejected the opposition in so far as it concerned those goods. Consequently, the applicant’s claim in that regard must be rejected.

30 In the first place, concerning ‘electric vehicles, electric cars; mobility scooters’ covered by the mark applied for, it must be noted that the applicant has not put forward any argument seeking to call into question the Board of Appeal’s assessment that those goods are identical to the goods covered by the earlier marks.

31 In the second place, as regards ‘driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; push scooters [vehicles]; camping cars; electric bicycles; mopeds; self-balancing unicycles’ covered by the mark applied for, these are, as concluded by the Board of Appeal, included in the broad category of ‘motor land vehicles’ covered by earlier marks Nos 1 and 2. The same is true as regards ‘air cushion vehicles’ covered by the mark applied for, which, although used most often on water, can also be used on land surfaces, in particular those covered with snow or ice.

32 Furthermore, the applicant’s argument that ‘electric bicycles; mopeds; self-balancing unicycles’ covered by the mark applied for are used for individual mobility over short distances, unlike ‘motor land vehicles’ covered by earlier marks Nos 1 and 2, must be deemed irrelevant and rejected. As EUIPO states, and as set out in paragraph 31 above, the fact remains that the former belong to the broader category of ‘motor land vehicles’ covered by earlier marks Nos 1 and 2. The number of persons transported or the distance covered is irrelevant in that regard.

33 Accordingly, contrary to the applicant’s claim, ‘driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; air cushion vehicles; camping cars; electric bicycles; mopeds; self-balancing unicycles’ must be regarded as being identical to ‘motor land vehicles’ covered by earlier marks Nos 1 and 2 because, according to the case-law, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

34 Furthermore, the applicant errs in claiming that ‘roof racks for automobiles’ covered by the mark applied for are different from the goods covered by earlier marks Nos 1 and 2. They are included in the broad category of ‘parts and accessories [for motor land vehicles]’ covered by those earlier marks and are therefore identical to the latter, as concluded by the Board of Appeal in accordance with the case-law cited in paragraph 33 above.

35 By contrast, as regards ‘push scooters [vehicles]’ and ‘bicycles’ covered by the mark applied for, these cannot, contrary to what the Board of Appeal concluded, be regarded as being included in the broad category of ‘motor land vehicles’ covered by earlier marks Nos 1 and 2. Nonetheless, since they are land vehicles, they may have the same nature, intended purpose, method of use and distribution channels, be addressed to the same public and have the same manufacturers as certain motor land vehicles such as, at the very least, electric bicycles and electric push scooters. Accordingly, although ‘push scooters [vehicles]’ and ‘bicycles’ covered by the mark applied for cannot be regarded as being identical to ‘motor land vehicles’ covered by earlier marks Nos 1 and 2, as concluded by the Board of Appeal, they are nevertheless similar to, and not, as the applicant submits, different from, the latter.

36 In the third place, as regards ‘yachts; air vehicles; sailing vessels; airships’ covered by the mark applied for, the Board of Appeal did not regard these as being identical to the goods covered by earlier marks Nos 1 and 2, as the applicant claims, but as being similar to a very low degree to the latter.

37 However, as the applicant submits, although it is true that the former are vehicles, they are not land vehicles or even hybrid vehicles, such as air cushion vehicles. They are not complementary to ‘motor land vehicles’ covered by earlier marks Nos 1 and 2, are not manufactured by the same undertakings and do not have the same distribution channels as the latter. Lastly, the goods in question are intended for different publics and cannot therefore be regarded as being substitutable one for the other or, consequently, as being in competition with each other (see, to that effect, judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 56). The mere fact that, as found by the Board of Appeal, they may have the same intended purpose, in that they can be used to transport people or goods, is not sufficient to justify the conclusion that they are similar even to a very low degree, having regard to all of the other factors that differentiate them.

38 Consequently, the Board of Appeal erred in concluding that ‘yachts; air vehicles; sailing vessels; airships’ covered by the mark applied for were similar to a very low degree to ‘motor land vehicles’ covered by earlier marks Nos 1 and 2, since it ought to have concluded that they were different from the latter.

39 It follows from all of the foregoing that the Board of Appeal did not make any error of assessment in concluding that ‘electric vehicles; driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; air cushion vehicles; camping cars; roof racks for automobiles; electric cars; mobility scooters; electric bicycles; mopeds; self-balancing unicycles’ covered by the mark applied for were identical to the goods covered by earlier marks Nos 1 and 2. However, the contested decision is vitiated by an error of assessment, first, as regards ‘push scooters [vehicles]’ and ‘bicycles’ covered by the mark applied for, which ought to have been regarded as being similar to the goods covered by earlier marks Nos 1 and 2, and, secondly, as regards ‘yachts; air vehicles; sailing vessels; airships’, which ought to have been regarded as being different from the goods covered by those earlier marks.

40 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 those 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).

41 The Board of Appeal noted that earlier marks Nos 1 and 2 were word marks consisting of the word element ‘kuga’, in respect of which it was irrelevant whether it was written in upper- or lower-case letters, and that the mark applied for was a figurative mark consisting of the word element ‘kugoo’, written in black lower-case letters in a rather standard typeface.

42 The Board of Appeal took the view that earlier marks Nos 1 and 2 and the mark applied for were visually and phonetically similar to an average degree, while their conceptual comparison was neutral.

43 The applicant argues that there is no similarity between earlier marks Nos 1 and 2 and the mark applied for. It submits that, since those signs are very short, the differences that they present will therefore, in accordance with the case-law, be more striking for the relevant public, and this will be the case even if those differences concern the end of the signs. It claims that, in the case of short signs, the final elements are as important as the beginning or the end of the signs.

45 As regards the comparison from a visual point of view, a point to note is that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since those two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

46 The Board of Appeal took the view that earlier marks Nos 1 and 2 and the mark applied for coincided in the group of letters ‘kug’, which formed their beginning, and differed in the final letters ‘a’ and ‘oo’, which had less impact but could not be ignored because of the relatively short length of the signs. It concluded that earlier marks Nos 1 and 2 and the mark applied for were visually similar to an average degree.

47 The applicant submits that earlier marks Nos 1 and 2 and the mark applied for are visually different. First, it submits that the signs compared do not have the same number of letters, namely four in respect of the earlier marks and five in respect of the mark applied for, and that the difference in one letter represents a quarter of the number of letters in the earlier marks. Secondly, it submits that the endings of the signs compared are different and that words ending in the group of letters ‘oo’, as in the mark applied for, are particularly rare, such that the end of that mark will not be visually unnoticeable.

48 In the first place, as regards the applicant’s argument that, since earlier marks Nos 1 and 2 and the mark applied for are very short, the differences that they present will, in accordance with the case-law, be more striking for the relevant public, and that this will be the case even if those differences concern the end of the signs, it must be noted that none of the judgments cited by the applicant in support of its argument concerns comparisons of signs consisting of four letters, on the one hand, and of five letters, on the other. Furthermore, the signs at issue in the cases that gave rise to those judgments did not coincide in their beginnings, unlike earlier marks Nos 1 and 2 and the mark applied for.

49 Furthermore, it should be noted that, although it is true that, when faced with short signs, the relevant public is likely to perceive more clearly that which differentiates them, the fact remains that it is appropriate to ascertain, in each case, by an actual assessment, whether such differences lead to different overall impressions of the signs at issue and whether they are therefore sufficient to rule out any similarity between them (judgment of 20 June 2019, Nonnemacher v EUIPO – Ingram (WKU WORLD KICKBOXING AND KARATE UNION), T‑390/18, not published, EU:T:2019:439, paragraph 73).

50 In the second place, the view must be taken that, although, as the applicant claims, earlier marks Nos 1 and 2 and the mark applied for contain a different number of letters, that difference is not very perceptible visually. By contrast, those signs display clear visual similarity because they coincide in the letters ‘k’, ‘u’ and ‘g’, which are arranged in the same order, and, having regard to the respective lengths of the signs compared, that common part represents more than half of each of them.

51 Moreover, as EUIPO maintains, that similarity between the signs compared due to their common part is reinforced by the fact that that part forms their initial part. In accordance with the case-law, even in the case of short marks, the consumer normally attaches more importance to the first part of words (see judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 110 and the case-law cited). It is indeed true that that factor cannot apply in every case and may not apply depending on the circumstances of the case, as the Court noted in the judgment cited by the applicant (judgment of 12 July 2019, MAN Truck & Bus v EUIPO – Halla Holdings (MANDO), T‑698/17, not published, EU:T:2019:524, paragraph 62) and as is indicated by the adverb ‘normally’. Accordingly, in that regard, contrary to what the applicant claims, the Board of Appeal did not err in law in concluding that the final letters had less impact in the present case.

52 Furthermore, in the light of the considerations set out in paragraph 50 above and of the fact that, although the mark applied for is a figurative mark, it contains only a word element written in black letters in a rather standard typeface, the Board of Appeal did not make any error of assessment in taking the view that the difference between the final parts of the signs compared, namely ‘oo’ and ‘a’, is not significant enough in the present case to divert the attention of consumers away from the visual similarities of the signs compared.

53 Lastly, in so far as the applicant states that the end of the mark applied for will not be unnoticeable because it is completely different, it must be stated that that difference was identified and taken into account by the Board of Appeal, since it concluded that there was only an average degree of similarity.

54 In the third place, the applicant’s arguments which rely on decisions of EUIPO cannot succeed. None of the signs examined in the decisions cited corresponds to earlier marks Nos 1 and 2 or to the mark applied for. In any event, it should be borne in mind that the Boards of Appeal are not bound by the decisions of lower-ranking adjudicating bodies of EUIPO (see, by analogy, judgment of 29 September 2016, Bach Flower Remedies v EUIPO – Durapharma (RESCUE), T‑337/15, not published, EU:T:2016:578, paragraph 43, and order of 20 September 2017, Berliner Stadtwerke v EUIPO (berlinGas), T‑402/16, not published, EU:T:2017:655, paragraph 32). In addition, the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the EU Courts, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

55 Consequently, it must be concluded that the Board of Appeal correctly decided that earlier marks Nos 1 and 2 and the mark applied for must be regarded as being visually similar to an average degree.

56 The Board of Appeal took the view that, phonetically, the pronunciation of earlier marks Nos 1 and 2 and that of the mark applied for coincided in the sound of the group of letters ‘kug’ and that the different vowels at the ends of the signs did not change their rhythm or intonation. It concluded that those marks were phonetically similar to an average degree.

57 The applicant submits that earlier marks Nos 1 and 2 and the mark applied for are phonetically different because, due to their different construction and their distinct endings, they will not be pronounced in the same way. In the applicant’s view, those earlier marks have two syllables pronounced in an equivalent rhythmic manner, whereas the mark applied for has a longer sound due to the double letter ‘o’ at the end and, in addition, part of the relevant public might pronounce it in three syllables, namely ‘ku’, ‘go’ and ‘o’.

58 It must be noted that, although the applicant claims that part of the relevant public might pronounce it in three syllables, namely ‘ku’, ‘go’ and ‘o’, it must be stated that that claim is a mere assumption, without the applicant having, moreover, specified, at the very least, the part of the territory of the European Union to which that part of the relevant public would belong. Accordingly, the view must be taken that, as the Board of Appeal concluded, earlier marks Nos 1 and 2 and the mark applied for can be pronounced in two syllables, namely ‘ku-ga’ and ‘ku-goo’, respectively, and that they have a common part ‘ku’, which the relevant public will pronounce in the same way.

59 It should also be noted that the identical pronunciation of the first syllable ‘ku’ of the signs compared and of their initial part ‘kug’ concerns the beginning of those signs. Those letters will therefore be the first that the consumer will pronounce and hear. In that regard, they will be the ones that will draw more attention on the part of the consumer (see, to that effect, judgment of 6 June 2013, Celtipharm v OHIM – Alliance Healthcare France (PHARMASTREET), T‑411/12, not published, EU:T:2013:304, paragraph 25 and the case-law cited).

60 Furthermore, it is irrelevant that the sounds produced by the endings ‘a’ in earlier marks Nos 1 and 2 and ‘oo’ or even ‘o’ and ‘o’ in the mark applied for are different. Since such a difference concerns only the final parts of the second syllable of each of the elements of the signs compared, it has no bearing on the finding that those signs are similar.

61 Accordingly, the Board of Appeal did not make any error of assessment in concluding that earlier marks Nos 1 and 2 and the mark applied for displayed an average degree of phonetic similarity.

62 According to the case-law, where none of the signs at issue has meaning taken as a whole, it must be found that a conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).

63 The Board of Appeal concluded that, conceptually, earlier marks Nos 1 and 2 and the mark applied for had no meaning taken as a whole and that, therefore, their conceptual comparison remained neutral.

64 The applicant submits that, whereas earlier marks Nos 1 and 2 do not evoke any particular concept, the sign applied for might evoke a kangaroo, sometimes abbreviated to ‘kangoo’ or ‘kangou’.

65 In that regard, it must be stated that the applicant’s argument is based on a mere assumption and, in any event, even assuming that the word ‘kangaroo’ is sometimes abbreviated to ‘kangoo’ or ‘kangou’, neither of those two assumed words corresponds to the word element of the mark applied for. The applicant’s argument must therefore be rejected.

66 Accordingly, the Board of Appeal’s assessment is not flawed and the conceptual comparison between earlier marks Nos 1 and 2 and the mark applied for must be regarded as being neutral.

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

68 The applicant disputes that the similarities between earlier marks Nos 1 and 2 and the mark applied for are such that there is a likelihood of confusion on the part of the relevant public. It submits that the Board of Appeal did not carry out a global analysis on the basis of all the relevant factors, but merely added up the factors without taking into account their respective importance. Accordingly, the applicant claims that the Board of Appeal did not take into account the most important factors, namely the high level of attention on the part of the relevant public combined with the fact that that public will pay greater attention to the differences between the signs referred to above because they are short. It criticises the Board of Appeal on the ground that it did not state the reasons for annulling the decision on opposition, in which reference had been made on several occasions to the relevant public’s high level of attention in order to conclude that there was no likelihood of confusion. The applicant observes, moreover, that the relevant public will attach greater importance to the visual aspect, as the purchase of a motor vehicle is not made only orally.

70 The Board of Appeal took the view that, as regards the goods considered to be identical, namely ‘electric vehicles; driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; air cushion vehicles; push scooters [vehicles]; camping cars; roof racks for automobiles; electric cars; bicycles; mobility scooters; electric bicycles; mopeds; self-balancing unicycles’ covered by the mark applied for, even if the relevant public were to display a higher level of attention, it might still be led to believe that the goods in question covered by earlier marks Nos 1 and 2 and by the mark applied for come from the same undertaking or from economically linked undertakings. It therefore concluded that there was a likelihood of confusion.

71 As a preliminary point, it must be noted that the applicant does not dispute the assessments of the Board of Appeal in so far as the latter concluded that earlier marks Nos 1 and 2 had an average degree of inherent distinctiveness and did not have enhanced distinctiveness.

72 However, the applicant disputes the assessment of the likelihood of confusion, set out in paragraph 49 of the contested decision, on the ground that the Board of Appeal merely added up the factors without taking into account their respective importance and did not take into account the most important of them.

73 In that regard, first of all, it must be noted that, contrary to the applicant’s claim, it is clear from paragraph 49 of the contested decision that the Board of Appeal took into consideration the level of attention of the relevant public and the fact that it is high.

74 Next, as EUIPO maintains, the level of attention of the relevant public is just one factor among others to be taken into account when assessing the likelihood of confusion. Contrary to what the applicant appears to believe, it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, and therefore any possibility of applying that provision, can, a priori, be ruled out. On the contrary, a global assessment of that likelihood must be carried out on a case-by-case basis, as is required by the settled case-law cited in paragraph 18 above.

75 In addition, what is important is the level of attention which the relevant public will display when examining the commercial origin of the goods at issue. The fact that the public in question will pay more attention to the identity of the producer or provider of the goods which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even for a public displaying a high level of attention, the fact remains that 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 (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 31 January 2012, Spar v OHIM – Spa Group Europe (SPA GROUP), T‑378/09, not published, EU:T:2012:34, paragraph 20).

76 It must be borne in mind that the goods in respect of which it was concluded that there is a likelihood of confusion, taking into account earlier marks Nos 1 and 2, namely ‘electric vehicles; driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; air cushion vehicles; camping cars; roof racks for automobiles; electric cars; mobility scooters; electric bicycles; mopeds; self-balancing unicycles’, are identical. Furthermore, those earlier marks and the mark applied for are visually and phonetically similar to an average degree, while a conceptual comparison between them is not possible. Moreover, the Board of Appeal did not make any error of assessment in concluding that the level of attention of the relevant public was high. Lastly, the Board of Appeal correctly concluded that earlier marks Nos 1 and 2 had an average degree of distinctiveness.

77 In the light of all of the factors referred to in paragraph 76 above, the view must be taken that, even if the Board of Appeal’s global assessment of the likelihood of confusion would have benefited from further elaboration, by indicating clearly the various factors and their interdependence, the fact remains that the Board of Appeal correctly concluded that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009.

78 Having regard to the identity of the goods covered by the mark applied for, which are referred to in paragraph 76 above, the average degree of distinctiveness of earlier marks Nos 1 and 2 and the average degree of visual and phonetic similarity of the signs at issue, and since an imperfect picture of the marks is retained in the mind of the consumer, the Board of Appeal did not, contrary to what the applicant claims, err in taking the view that the differences between earlier marks Nos 1 and 2 and the mark applied for were not sufficient to rule out any likelihood that the relevant public, even if it displays a high level of attention, may be led to believe that the goods at issue come from the same undertaking or from economically linked undertakings. In that regard, it must be noted that, in so far as the applicant dwells on the visual aspect on account of the mode of purchase of motor vehicles, the Board of Appeal correctly concluded that the marks at issue were visually and phonetically similar to the same degree. Accordingly, even if the degree of visual similarity is of greater importance than the degree of phonetic similarity in the present case, that consideration cannot alter the analysis of the likelihood of confusion and the applicant’s argument is ineffective.

79 Even though ‘push scooters [vehicles]’ and ‘bicycles’ covered by the mark applied for must be regarded as being similar, and not identical, to the goods covered by earlier marks Nos 1 and 2, the same conclusion, namely that there is a likelihood of confusion, must be drawn as regards those goods on account of the interdependence of all the other factors referred to in paragraph 78 above.

80 Accordingly, notwithstanding the error of assessment concerning the comparison of ‘push scooters [vehicles]’ and ‘bicycles’ covered by the mark applied for with the goods covered by earlier marks Nos 1 and 2 (see paragraph 35 above), the Board of Appeal correctly concluded that there was a likelihood of confusion with regard to those earlier marks in respect of ‘electric vehicles; driverless cars [autonomous cars]; motorcycles; golf carts [vehicles]; air cushion vehicles; push scooters [vehicles]; camping cars; roof racks for automobiles; electric cars; bicycles; mobility scooters; electric bicycles; mopeds; self-balancing unicycles’ covered by the mark applied for.

81 As regards ‘yachts; air vehicles; sailing vessels; airships’ covered by the contested mark, which the Board of Appeal erroneously regarded as being similar to a very low degree to the goods covered by earlier marks Nos 1 and 2, even though they are different from the latter (see paragraph 38 above), it must be stated that that error does not affect the analysis of the likelihood of confusion with regard to those earlier marks because such a likelihood of confusion was, in any event, excluded by that analysis.

82 Accordingly, the applicant’s arguments which rely on an error of assessment made by the Board of Appeal in that it concluded that there was a likelihood of confusion with regard to earlier marks Nos 1 and 2, must be rejected.

Examination of the likelihood of confusion with regard to earlier mark No 3

83 After concluding that there was no likelihood of confusion with regard to earlier marks Nos 1 and 2 in respect of ‘yachts; air vehicles; sailing vessels; airships’ covered by the mark applied for, the Board of Appeal examined the opposition in so far as it was based on earlier mark No 3 and, in that regard, concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, even for a highly attentive public.

84 The applicant does not dispute the Board of Appeal’s assessments concerning the definition of the relevant public and its level of attention (see paragraphs 20 to 23 above) and has not put forward any argument in order to challenge the Board of Appeal’s assessments relating to the comparison between earlier mark No 3 and the mark applied for and to the distinctiveness of the earlier mark.

85 By contrast, as regards the comparison of the goods at issue, the Board of Appeal concluded that they were identical, which the applicant disputes, claiming that they differ in terms of their nature and their intended purpose. However, it is sufficient to note that, as observed, in essence, by the Board of Appeal, ‘yachts; air vehicles; sailing vessels; airships’ covered by the contested mark are included in the broader category of ‘motor vehicles’ covered by earlier mark No 3 and are therefore identical (see, to that effect, judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

86 Accordingly, since the Board of Appeal took into account all of the factors referred to in paragraphs 84 and 85 above, in respect of which no argument has been put forward by the applicant in order to dispute their assessment by that board or no error of assessment can be found to have been made by the latter, the view must be taken that the Board of Appeal correctly concluded that there was a likelihood of confusion with regard to earlier mark No 3 in respect of ‘yachts; air vehicles; sailing vessels; airships’ covered by the contested mark.

87 In view of all of the foregoing considerations, since the single plea in law relied on by the applicant in support of its claims must be rejected, the action must be dismissed, without it being necessary to rule on the plea of inadmissibility put forward by EUIPO, alleging that the final part of the applicant’s second head of claim, requesting that the Court grant the trade mark application in its entirety, is inadmissible.

88 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 incurred in the course of the proceedings before the Court, in accordance with the form of order sought by EUIPO.

89 Furthermore, pursuant to Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are regarded as recoverable costs. Consequently, as EUIPO maintains, the applicant’s claim in respect of the costs relating to the opposition proceedings, which are not recoverable costs, is inadmissible (judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraphs 77 and 78). As regards the costs relating to the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment is dismissing the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Yongkang Kugooo Technology v EUIPO - Ford Motor Company (kugoo) (EU trade mark - Judgment) [2021] EUECJ T-324/20 (19 May 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T32420.html Cite as: ECLI:EU:T:2021:280, [2021] EUECJ T-324/20, EU:T:2021:280

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