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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Unite Network v EUIPO - Union Detallistas Españoles (unite mercateo) (EU trade mark - Judgment) [2025] EUECJ T-1186/23 (26 March 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T118623.html Cite as: ECLI:EU:T:2025:335, [2025] EUECJ T-1186/23, EU:T:2025:335 |
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JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 March 2025 (*)
( EU trade mark - Opposition proceedings - Application for EU figurative mark unite mercateo - Earlier national figurative mark UNIDE MARKET SUPERMERCADOS - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑1186/23,
Unite Network SE, established in Leipzig (Germany), represented by J.‑C. Rebling, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Unión Detallistas Españoles S. Coop., established in Madrid (Spain), represented by I. Gonzalez-Mogena Gonzalez and M. de Justo Bailey, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing of 17 October 2024,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Unite Network SE, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 September 2023 (Case R 219/2023-5) ('the contested decision').
Background to the dispute
2 On 9 March 2018, Mercateo AG, the applicant's predecessor in title, applied for registration of the following figurative sign as an EU trade mark:
3 The mark applied for covered, in particular, services in Class 35 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, corresponding to the following description: 'Provision of an on-line marketplace for buyers and sellers of goods and services; Providing business information via a web site; Accounting; Auctioneering services; Compilation of statistics; Drawing up statements of account; Commercial information agencies; Invoicing; Web indexing for commercial or advertising purposes; Outsourcing services [business assistance]; Negotiation and conclusion of commercial transactions for third parties; Commercial intermediation services; Administrative order processing'.
4 On 4 July 2018, the intervener, Unión Detallistas Españoles S. Coop., filed an opposition against the registration of the mark applied for in respect of all the services referred to in paragraph 3 above.
5 The opposition was based, inter alia, on Spanish figurative mark No 3 076 975, reproduced below:
6 The earlier mark was registered for services in Class 35 corresponding to the following description: 'Advertising; Commercial business management; Commercial administration; Office work; Supply service for third parties; Wholesale and retail sale of all kinds of products, in shopping, by telephone, by catalog and by any other means not contemplated in other classes'.
7 The ground relied on in support of the opposition was, inter alia, that set out in Article 8(1)(b) of 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).
8 By decision of 28 November 2022, the Opposition Division upheld the opposition in respect of all the services covered by the mark applied for except for the following services: 'Provision of an on-line marketplace for buyers and sellers of goods and services; Auctioneering services'.
9 On 27 January 2023, the intervener filed an appeal with EUIPO against the Opposition Division's decision in so far as it rejected the opposition in respect of the services of 'provision of an on-line marketplace for buyers and sellers of goods and services' ('the online marketplace services') and allowed registration of the mark applied for in respect of those services.
10 By the contested decision, the Board of Appeal annulled the decision of the Opposition Division to the extent that it rejected the opposition for the online marketplace services.
11 In essence, the Board of Appeal held that the services covered by the marks at issue were similar to at least a low degree, that the earlier mark had average distinctiveness and that the signs at issue were visually and phonetically similar to an average degree and conceptually similar to a low degree. In the light of those assessments, it held that the Opposition Division had erred in failing to find that there was a risk of confusion in relation to the online marketplace services.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order the intervener to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
14 The intervener submits that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Subject matter of the dispute
15 The applicant states in the application that on 19 December 2023, which was after the contested decision, it filed a declaration with EUIPO restricting the specification of the online marketplace services covered by the mark applied for, in accordance with the description given in Annex A.6 to the application.
16 EUIPO submits that that restriction cannot be taken into account in examining the present action, since it would affect the subject matter of the dispute.
17 It should be observed that, in principle, a restriction, within the meaning of Article 49(1) of Regulation 2017/1001, made to the list of goods or services contained in an EU trade mark application after the adoption of the decision of the Board of Appeal challenged before the Court cannot affect the legality of that decision, which is the only decision being challenged before the Court (see judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 25 and the case-law cited).
18 Furthermore, if, by its restriction of the list of goods or services referred to in the EU trade mark application, the applicant for the trade mark is not seeking to withdraw from that list one or more goods or services, but to alter a characteristic, such as the intended purposes of all the goods or services on that list, it is possible that that alteration might have an effect on the examination of the EU trade mark carried out by the instances of EUIPO during the administrative procedure. In those circumstances, to allow that alteration at the stage of the action before the Court would amount to changing the subject matter of the proceedings pending, which is prohibited by Article 188 of the Rules of Procedure of the General Court. Such a restriction cannot therefore be taken into account by the Court in its examination of the substance of the action (see judgment of 20 November 2007, Tegometall International v OHIM – Wuppermann (TEK), T‑458/05, EU:T:2007:349, paragraph 25 and the case-law cited).
19 In the present case, the applicant's restriction alters the specification of the online marketplace services by replacing it with a new description of the services, namely 'provision of a procurement database in the form of an on-line marketplace for buyers and sellers'. Furthermore, that new description of the services is accompanied by the addition of a detailed list of the goods to which those services relate.
20 It follows that the restriction amounts to an alteration of the subject matter of the proceedings and therefore cannot be taken into account, in accordance with Article 188 of the Rules of Procedure.
Admissibility of evidence produced for the first time before the General Court
21 In support of its application, the applicant has produced 10 annexes (A.8 to A.17) seeking to demonstrate that the online marketplace services covered by the mark applied for are different from the wholesale and retail sale services covered by the earlier mark, and that they target professionals who will pay a high level of attention.
22 EUIPO submits that that evidence is inadmissible because it has been produced for the first time before the General Court.
23 It should be recalled that the purpose of an action brought before the General Court pursuant to Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the General Court may not annul or alter the decision against which the action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
24 Furthermore, it is not the Court's function to re-examine the factual circumstances in the light of evidence submitted for the first time before it. To allow such evidence would be contrary to Article 188 of the Rules of Procedure, according to which the parties' submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
25 In that regard, it must be stated that Annexes A.8, A.9 and A.11 to A.17 to the application were not produced before the Board of Appeal and have been produced for the first time before the General Court. Thus, in accordance with the case-law cited in paragraphs 23 and 24 above, those annexes are inadmissible.
26 In contrast, although Annex A.10 to the application has been produced for the first time before the General Court, it should be observed that, as the applicant stated in the application and confirmed at the hearing, that annex has been produced in order, in essence, to demonstrate that the example put forward by the Board of Appeal in paragraph 41 of the contested decision, where it referred to the company Amazon, is irrelevant. Consequently, that annex relates to a factual matter referred to in the contested decision and which therefore falls within the factual framework of the proceedings before the Board of Appeal (see judgment of 5 February 2020, Hickies v EUIPO (Shape of a shoe lace), T‑573/18, EU:T:2020:32, paragraph 18 (not published) and the case-law cited). It follows that Annex A.10 to the application is admissible.
The sole plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
27 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it complains that the Board of Appeal did not correctly assess the relevant public, the similarity of the services at issue nor the similarity of the signs at issue, and thus erred in the overall assessment of the likelihood of confusion.
28 EUIPO and the intervener dispute the applicant's arguments.
29 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
30 The risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
31 Lastly, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
32 In the present case, it should be observed, as a preliminary remark, that the action relates only to the refusal to register the mark applied for in respect of the online marketplace services, which were the subject of the contested decision. Furthermore, in accordance with the conclusion reached in paragraph 20 above, the restriction of those services cannot be taken into account before the Court. Consequently, it is unnecessary to address the arguments advanced by the applicant on the basis of the new restriction of those services.
33 The various claims raised by the applicant must be examined in the light of those principles.
The relevant public
34 The Board of Appeal held, in paragraph 48 of the contested decision, that the services covered by the marks at issue targeted both the general public and professionals. It stated that the degree of attentiveness of that public varied from average to above average. Lastly, it held, in paragraph 47 of the contested decision, that the relevant territory was Spain.
35 The applicant submits that the Board of Appeal made errors of assessment in determining the relevant public and its degree of attentiveness, in that it wrongly included the general public in the relevant public and found that the degree of attentiveness might vary from average to above average, instead of finding that it was high.
36 EUIPO, supported by the intervener, disputes the applicant's arguments.
37 As to the relevant territory, the Board of Appeal held that it was Spain, having regard to the fact that the earlier mark was registered in that Member State, which the applicant does not dispute.
38 As to the relevant public, it should be observed that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods or 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). In that regard, the Board of Appeal held that, having regard to the nature of the services at issue, the relevant public was made up of the general public and professionals with specific professional knowledge or expertise. As the Board of Appeal held in paragraph 34 of the contested decision, an online marketplace is a platform for wholesale and retail transactions and is thus intended not only for professionals but also for the general public. In addition, the Board of Appeal rightly stated that both the general public and professionals might purchase goods, either through wholesale and retail services, including online sales services, covered by the earlier mark, or through the online marketplace covered by the mark applied for. Accordingly, contrary to what the applicant claims, the Board of Appeal did not make an error of assessment in identifying the relevant public.
39 As regards the degree of attentiveness of the relevant public, contrary to what the applicant claims, given that, as stated in paragraph 38 above, the Board of Appeal rightly held that the relevant public was made up of both the general public and professionals, and not only of professionals, it was right to hold, in essence, that the degree of attentiveness of the relevant public might vary from average to high, depending on the price, sophistication or terms and conditions of the services purchased.
40 It follows that the Board of Appeal did not make an error of assessment in finding that the relevant public was composed of the general public and Spanish-speaking professionals, and had a degree of attentiveness which, in essence, might vary from average to high.
The comparison of the services
41 The applicant submits, first, that the Board of Appeal departed from the principle that the proprietor of an EU trade mark should not benefit from its failure to fulfil its obligation to indicate the list of goods or services with clarity and precision, in carrying out the comparison of the services at issue, which it did in spite of the lack of clarity and the imprecision of the description of the services covered by the earlier mark. Secondly, it submits that the online marketplace services covered by the mark applied for and the services covered by the earlier mark differ in terms of their nature, sales channels, relevant public and intended purposes, and that they are not complementary or in competition with each other.
42 EUIPO and the intervener dispute the applicant's arguments.
43 In the first place, as regards the requirement for clarity and precision in the specification of the services covered by the earlier mark, it should be observed that where a mark is relied on in support of the ground of opposition contained in Article 8(1)(b) of Regulation 2017/1001, that ground of opposition cannot be dismissed at the outset simply on the basis that there is no precise description of the goods or services covered by the earlier mark. Thus, any lack of clarity and precision regarding the services covered by the earlier mark would not be capable of precluding, in opposition proceedings the services at issue from being compared for the purposes of assessing the likelihood of confusion (see, to that effect, judgment of 7 June 2023, DDR Kultur v EUIPO – Groupe Canal+ (THE PLANET), T‑47/22, not published, EU:T:2023:311, paragraph 58 and the case-law cited).
44 In that regard, first, it should be observed that the Board of Appeal correctly held, in paragraph 26 of the contested decision, that both the specification of the services covered by the earlier mark and the specification of the online marketplace services covered by the mark applied for were unclear and imprecise. On that point, it should also be stated that the Board of Appeal invited the applicant and the intervener to reformulate the lists of services covered by the marks at issue so as to make them more specific. The applicant did not respond to that invitation prior to the adoption of the contested decision, and the intervener declined it.
45 Secondly, contrary to what the applicant claims, the Board of Appeal interpreted the services covered by the earlier mark, as the Opposition Division had done, in the most natural way possible. The Board of Appeal defined those services, correctly, as wholesale services involving the sale of products in large quantities, and retail services involving the sale of a wide range of products to end consumers in small quantities.
46 Accordingly, having regard to the lack of any specification of the goods concerned by the services covered by the earlier mark and the online marketplace services covered by the mark applied for, the Board of Appeal rightly held that that lack of precision could not be interpreted so as to favour either the intervener or the applicant, and that it was able to proceed with the comparison of the services at issue.
47 In the second place, with regard to the comparison itself of the services at issue, it must be pointed out that, according to settled case-law, in order to assess 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, their distribution channels and their sales outlets, and whether they are in competition with each other or are complementary, these being autonomous factors each one of which is capable, taken by itself, of justifying a finding of similarity (see, to that effect, judgments of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraphs 21 to 23, and of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraph 53).
48 In the present case, it should be stated that it is common ground that the online marketplace services covered by the mark applied for include, in particular, online platforms which connect buyers with sellers, enabling them to trade in goods and services electronically. Furthermore, as the Board of Appeal pointed out, an online marketplace serves as a versatile platform where both wholesale and retail transactions can occur. As to the services covered by the earlier mark, the Board of Appeal correctly stated that they related to the sale of products in large quantities to other businesses for resale, as regards the wholesale services, and the sale of products in small quantities to consumers, as regards the retail services.
49 The Board of Appeal held that although the nature, purpose and use of the services at issue, as defined in paragraph 48 above, were 'not necessarily identical', such services were similar, at least to a low degree. In essence, the Board of Appeal based that assessment on several factors, in particular its findings that those services were highly interdependent, that certain undertakings offering online marketplace services also acted as retailers, that the target publics of the services at issue overlapped at least in part, that the purpose of those services might, broadly speaking, be the same, and, lastly, that a competitive relationship between the services could not be ruled out.
50 First, it must be observed that, as EUIPO pointed out at the hearing, in stating that the nature and purpose of the services at issue were not necessarily identical, the Board of Appeal was not holding that the nature and purpose of those services were totally different, but only that they were not exactly the same. In that regard, it should be stated that, as the applicant has observed, the services at issue are different in nature having regard in particular to the fact, first, that the wholesale or retail services consist in the sale of the provider's own stock whereas the online marketplace services consist in the provision of a marketplace enabling buyers and sellers to come together and conclude a sale and, secondly, that those services generate revenue in different ways. Nevertheless, it bears repetition that, as stated in paragraph 47 above, each of the factors identified in the case-law as being relevant to the assessment of similarity between goods or services is only one factor among others. Thus, the applicant's argument that the services at issue are not the same in nature is not sufficient to dismiss the possibility of any similarity between those services.
51 Secondly, contrary to what the applicant claims, it should be stated that the Board of Appeal was right to find that the services at issue could, broadly speaking, have the same purpose since they are intended to facilitate and effect sales of goods between buyers and sellers. First, the purpose of the services covered by the earlier mark is the wholesale or retail sale of goods directly between buyer and seller, through physical shops or the seller's website. Second, the purpose of the online marketplace services covered by the mark applied for is to bring together third-party sellers and buyers, who negotiate the price and terms of sale between themselves, and thus to enable wholesale or retail transactions to take place.
52 Thirdly, it should be observed that the Board of Appeal stated that certain undertakings possessing and operating online marketplaces, such as Amazon, act both as intermediaries and as retailers, offering their own goods on those marketplaces. Contrary to what the applicant claims, Annex A.10 does not enable that example to be refuted nor a difference in purpose between online marketplace services and wholesale or retail sale to be established. On the contrary, it is apparent from that article, which relates to the difference between the 'amazon.com' website and the online marketplace Amazon Marketplace, that when buyers purchase goods from Amazon, they often do not know whether they are entering into a transaction with Amazon, acting as a retailer, or with a third-party seller, via Amazon Marketplace, acting as an online marketplace. Furthermore, contrary to what the applicant claims, Amazon is not an exception. On the contrary, as EUIPO observed in its response, there are other examples of undertakings providing online marketplaces which also operate as retailers, such as Carrefour or Leroy Merlin. It follows from those observations that the services at issue may be provided by one and the same undertaking and have the same commercial origin. As the applicant itself states, whether the services may be provided by the same undertaking is a factor which can be taken into account, among others, in comparing them.
53 Fourthly, it should be stated that the Board of Appeal correctly found, in paragraph 42 of the contested decision, that the target publics of the services at issue overlap at least in part, since those publics are able to purchase the goods they are looking for either by using wholesale and retail services, in person or online, or by using an online marketplace. First, the fact that part of the target public of the online marketplace services is made up of advertisers, or even retailers and wholesalers wishing to sell their goods, does not alter the fact that those services are also intended for buyers. Second, contrary to what the applicant claims, it would not be appropriate to exclude end customers from the target public of the online marketplace services covered by the mark applied for, given that the wording itself refers to 'buyers' of goods and services.
54 Fifthly, contrary to what the applicant claims, it should be stated that the Board of Appeal was right to hold that the services at issue were liable to compete with each other. In that regard, as the Board of Appeal correctly stated, professionals will be able to choose to sell their products through 'traditional' wholesale or retail channels, including online sales via websites, or through online marketplaces. Furthermore, it should be stated that the Board of Appeal was right to hold that end consumers, including professionals, will be able to choose between purchasing a given product either through 'traditional' wholesale or retail channels or through an online marketplace.
55 In the light of all of the foregoing, it should be stated that the Board of Appeal's findings with regard to the commercial origin, purpose and target public of the services at issue, and its finding that those services were liable to compete with each other, as upheld in paragraphs 47 to 54 above, are sufficient to confirm the Board of Appeal's conclusion that the services at issue are similar to at least a low degree.
56 Furthermore, it should be stated that the applicant submits that the Board of Appeal was wrong to regard the interdependence of the services at issue as a sufficient basis for a finding that those services were complementary and, a fortiori, for a finding that they were similar. However, even supposing those submissions to be well founded, they cannot alter the Board of Appeal's conclusion that the services at issue are similar to at least a low degree. It should be stated that, in accordance with the case-law cited in paragraph 47 above, complementarity is only one factor among others in establishing the similarity of services. Furthermore, the services at issue have been found, in paragraph 55 above, to be similar to at least a low degree, on the basis of factors relating to their commercial origin, purpose and target public, and to the fact that they are liable to compete with each other.
57 In addition, although the applicant submits that the services at issue have different distribution channels, it has not formulated that claim in sufficient detail for a determination to be made as to whether it is well founded.
58 Consequently, it must be held that the Board of Appeal was right to find that the online marketplace services covered by the mark applied for were similar, at least to a low degree, to the services covered by the earlier mark.
The comparison of the signs
59 It should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression made by the signs, their distinctive and dominant elements, in particular, being borne in mind. The perception of marks in the mind of the average consumer of the goods or services at issue plays a decisive role in the global assessment of that likelihood. 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).
60 Furthermore, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). 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 of the mark 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).
61 Before addressing the question of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the assessment of the distinctive and dominant elements of those signs.
– The distinctive and dominant elements
62 The applicant submits, first, that the words 'mercateo' and 'market' have no meaning for the Spanish public and are therefore distinctive, and, secondly, that the logo contained in the earlier mark and the other figurative elements of the signs at issue are also distinctive.
63 EUIPO and the intervener dispute the applicant's arguments.
64 First, the Board of Appeal held, in essence, that the word elements 'unide' and 'unite' were the dominant elements of the signs at issue and that they have an average distinctive character. It also held that the logo contained in the earlier mark has distinctive character. Since those findings are not contested by the applicant, there is no need to call them into question.
65 Secondly, as regards the other elements of the signs at issue, the Board of Appeal held that the word elements 'supermercados', 'market' and 'mercateo' were weakly distinctive and that the other figurative elements of the signs at issue were purely decorative. It is not disputed that the word element 'supermercados' is weakly distinctive and there is no need to call that finding into question.
66 Thirdly, as regards the word element 'mercateo' in the mark applied for, the applicant submits that the word 'mercateo' is an invented word which has no meaning in Spanish, and consequently that that element is distinctive. It should be stated that the Board of Appeal rightly affirmed that the relevant public would understand the word element 'mercateo' as referring to the term 'mercadeo'. Such an understanding would not require any cognitive effort for the Spanish-speaking public and would come naturally to their minds given that the only difference between the two terms is that one letter has been changed, the terms having seven letters in common and those letters occurring in the same order. The word 'mercadeo' is defined, according to a well-known Spanish dictionary, as the set of operations through which a commodity must pass from the producer to the consumer. Accordingly, it must be held that the Board of Appeal was correct in upholding the findings of the Opposition Division, according to which the word element 'mercateo' was weakly distinctive.
67 Fourthly, as regards the word element 'market' in the earlier mark, the applicant submits that the word 'market' has no meaning in Spanish and that it is therefore distinctive. It should be stated that the Board of Appeal, endorsing the findings of the Opposition Division, held that the word element 'market', which is a commonly used English term, could be associated by the relevant public with the equivalent Spanish term 'mercado', and thus concluded that it also was weakly distinctive.
68 In that regard, it should be borne in mind that, according to case-law, knowledge of a foreign language of the average consumer cannot, in general, be assumed (see judgment of 14 July 2021, Cole Haan v EUIPO – Samsøe & Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 39 and the case-law cited). The fact remains that where an English term has an equivalent in the language of a non-anglophone public, which would be able to establish a link between those terms and their translation into the language in question, that public must be held to understand their meaning (see, to that effect, judgment of 15 September 2021, Celler Lagravera v EUIPO – Cyclic Beer Farm (Cíclic), T‑673/20, not published, EU:T:2021:591, paragraph 46). Thus, the Board of Appeal was right to affirm that the English word 'market' could be perceived by the relevant public as suggesting the Spanish word 'mercado', which has a concrete meaning for that public and which resembles the English word. The word 'market' is widely used in the distribution sector within the European Union. Accordingly, the Board of Appeal was right to conclude, endorsing the finding of the Opposition Division, that the word element 'market' was weakly distinctive having regard to its meaning and to the link with the services covered by the earlier mark.
69 Fifthly, as regards the figurative elements of the signs at issue other than the logo in the earlier mark, it must be held that, contrary to what the applicant claims, the Board of Appeal was right to uphold the Opposition Division's findings that the dark background and the stylisation of the letters in the earlier mark, first, and the stylisation of the letters and the cut-off circle surrounding the letter 'm' in the mark applied for, second, were decorative and would not attract the attention of the relevant public away from the verbal elements they embellish. It should be stated that, as the Board of Appeal affirmed, those figurative elements were simple representations resulting from stylised lettering, background colour or a circle around a letter.
70 It follows from the foregoing that the Board of Appeal did not err in the assessment of the distinctive and dominant elements of the signs at issue.
– The visual comparison
71 The Board of Appeal adopted the Opposition Division's grounds in its decision for holding that the signs at issue were visually similar to an average degree.
72 The applicant submits, in essence, that the signs at issue look very different and that an error was made in the assessment of the impact of the dominant and distinctive elements of the signs at issue.
73 EUIPO and the intervener dispute the applicant's arguments.
74 As a preliminary matter, the applicant's arguments that the Board of Appeal failed to carry out an overall visual assessment of the signs must be rejected. It is apparent from the Opposition Division's analysis, as summarised in the contested decision and endorsed by the Board of Appeal, that such an overall assessment of the signs at issue was carried out.
75 In the first place, it should be stated that, as the Board of Appeal pointed out, there is a high degree of similarity between the dominant elements of the signs at issue in terms of spelling and typeface. The Board of Appeal rightly affirmed that the word elements 'unide' and 'unite' coincided in the sequence of letters 'u', 'n', 'i' and 'e', occurring in the same position, and differed only in the penultimate letter, which is 'd' in the earlier mark and 't' in the sign applied for. Furthermore, while it is true that those word elements are not in the same colour, the chosen typeface is very similar. Lastly, contrary to what the applicant claims, it is not possible to conclude that there is a significant difference between the word elements on the basis, in particular, that the typeface used in the sign applied for is unusual because there is no dot on the letter 'i' and the letter 't' is truncated. Those details of the typeface are simple and commonplace.
76 In the second place, the Board of Appeal also rightly upheld the findings of the Opposition Division in holding, first, that the signs at issue differed visually in their other word elements, namely 'supermercados' and 'market' in the earlier mark and 'mercateo' in the sign applied for, and, secondly, that those additional word elements were secondary in the overall impression of the signs.
77 In that regard, concerning the applicant's arguments as to the impact of the additional word elements on the overall impression of the signs at issue, it bears repetition that, as stated in paragraphs 65 to 68 above, the word elements 'supermercados' and 'market', which make up the earlier mark, are weakly distinctive. In addition, those word elements are written under the distinctive and dominant word element 'unide' and, more specifically, in relation to the word 'supermercados', in a much smaller typeface than the distinctive and dominant word element. Furthermore, for the same reasons, it should be stated that the word element 'mercateo' is also secondary by comparison with the dominant element of the sign applied for. In those circumstances, it cannot be ruled out that part of the relevant public will not take those other word elements into account, given that, in that regard, the average consumer only rarely has the chance to make a direct comparison between different marks and 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).
78 In the third place, it should be stated that the Board of Appeal did not err in upholding the Opposition Division's findings that the figurative elements of the signs at issue, although different, have a limited impact. It correctly affirmed that the figurative elements of those signs, including the logo appearing on the left in the earlier mark, are in a position that is visually secondary to the dominant word elements 'unide' and 'unite'. On that point, it should be stated that 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 judgment of 2 December 2020, inMusic Brands v EUIPO – Equipson (Marq), T‑687/19, not published, EU:T:2020:582, paragraph 74 and the case-law cited). In addition, the Board of Appeal rightly upheld the finding that the colours of the signs at issue were of the same tone.
79 Having regard to the foregoing, the Board of Appeal rightly held that the signs at issue were visually similar to an average degree.
– The phonetic comparison
80 The Board of Appeal adopted the Opposition Division's grounds in its decision for holding that the signs at issue were phonetically similar to an average degree.
81 The applicant submits, in essence, first, that the word elements 'supermercados' and 'market' in the earlier mark and the word element 'mercateo' in the sign applied for do indeed have some repeated consonants, but that their overall pronunciation is different, and, secondly, that the Board of Appeal erred in finding that the elements which are not distinctive do not have any impact on the phonetic impression of those signs.
82 EUIPO and the intervener dispute the applicant's arguments.
83 First, the applicant's argument that no overall phonetic assessment of the signs at issue was carried out by the Opposition Division, or, subsequently, by the Board of Appeal, must be rejected. It must be stated that the Board of Appeal upheld the Opposition Division's findings identifying the differences and similarities between those signs.
84 Secondly, the Board of Appeal rightly upheld the Opposition Division's findings that the pronunciation of the word elements 'unide' in the earlier mark and 'unite' in the sign applied for was identical as regards the first two syllables, 'u' and 'ni', and that there was a close resemblance as regards the last syllable, 'de' and 'te'. Since those findings are not contested by the applicant, there is no need to call them into question.
85 Thirdly, contrary to what the applicant claims, it must be held that, as the Board of Appeal and the Opposition Division also held, the words 'market' and 'mercateo' would probably not be pronounced by the relevant public, because of their secondary position. The average consumer tends to omit certain word elements of a mark comprising several elements to make it easier to pronounce in the interests, inter alia, of economising on words, if those elements are easily separable (see judgment of 26 January 2022, Diego v EUIPO – Forbo Financial Services (WOOD STEP LAMINATE FLOORING), T‑498/20, not published, EU:T:2022:26, paragraph 90 and the case-law cited).
86 In any event, the Board of Appeal also, and correctly, upheld the Opposition Division's findings that the word element 'market' in the earlier mark and the word element 'mercateo' in the sign applied for, if pronounced, would coincide in the pronunciation of some of their letters.
87 Fourthly, it should be stated that the Board of Appeal correctly held that, having regard to its secondary position and the fact that it is separable, the word element 'supermercados' of the earlier mark would probably not be pronounced by the relevant public when referring to that mark, in accordance with the case-law cited in paragraph 85 above.
88 Fifthly, it should be observed that, according to the case-law, where a trade mark is composed of verbal and figurative elements, 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 (see, to that effect, judgment of 22 May 2008, NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited). It follows that the Board of Appeal correctly held that it was not necessary to have regard to the figurative elements of the earlier mark in making the phonetic comparison of the signs at issue.
89 It follows from the foregoing that the Board of Appeal correctly held that the degree of phonetic similarity for the relevant public was average.
– The conceptual comparison
90 The Board of Appeal adopted the Opposition Division's grounds in its decision for holding that the signs at issue were conceptually similar to a low degree.
91 The applicant disputes, in essence, the Board of Appeal's assessment of the meaning, for the relevant public, of the word elements 'unite', 'mercateo', 'unide' and 'market', and of the logo in the earlier mark. It submits that the signs at issue are conceptually dissimilar on the basis that only the earlier mark evokes a concept.
92 EUIPO and the intervener dispute the applicant's arguments.
93 In the first place, contrary to what the applicant claims, the word element 'market' in the earlier mark and the word element 'mercateo', in the sign applied for are, as stated in paragraphs 66 and 67 above, likely to be perceived by the relevant public as referring to the concept of a market and that of the commercial sale of goods.
94 In addition, the applicant's argument that the signs should be regarded as conceptually dissimilar if their word elements have the same meaning, but in different languages, should be rejected. It should be borne in mind that a linguistic difference between signs cannot, in itself, automatically suffice to rule out the existence of a conceptual similarity from the point of view of the relevant consumers. The fact remains, however, that such a difference, in so far as it requires translation on the part of the consumer, is capable, depending on, inter alia, the relevant public's knowledge of languages, the degree of closeness between the languages concerned and the actual terms used in the signs at issue, of preventing the relevant public, to a greater or lesser extent, from making an immediate conceptual comparison (see judgment of 12 December 2014, Groupe Canal + v OHIM – Euronews (News+), T‑591/13, not published, EU:T:2014:1074, paragraph 41 and the case-law cited). Nonetheless, in the present case, having regard to the findings made in paragraphs 66, 67 and 93 above, it must be held that the need to first translate or interpret the word elements 'market' and 'mercateo' would not prevent the relevant public from making an immediate conceptual link between those terms.
95 In the second place, it must be held – and in fact is not disputed by the applicant – that the word element 'supermercados' in the earlier mark refers to the same concept that is conveyed by the word element 'mercateo' in the sign applied for.
96 In the third place, it is also undisputed that the word elements 'unide' and 'unite', as well as the figurative element of the earlier mark, are meaningless.
97 Having regard to the foregoing, and contrary to what the applicant claims, it must be held that the Board of Appeal, in adopting the findings of the Opposition Division, correctly held that the earlier mark and the sign applied for conveyed a similar concept through the use of the word elements 'supermercados' and 'market' in the earlier mark and 'mercateo' in the sign applied for. However, and contrary to what the Board of Appeal concluded in paragraphs 51 and 53 of the contested decision, the signs at issue must be regarded as having, at the very least, an average degree of conceptual similarity.
98 Nonetheless, the conceptual similarity must be seen in the light of the fact that the word elements 'supermercados', 'market' and 'mercateo', which refer to the same concept of a market, are weakly distinctive, as is apparent from paragraphs 65 to 68 above. It follows that conceptual similarity plays a limited role in the global assessment of the likelihood of confusion and is of less importance in that assessment (see, to that effect, judgment of 20 March 2024, Braunschweiger Versorgungs v EUIPO – B.F. Energy (BF energy), T‑245/23, not published, EU:T:2024:190, paragraph 67 and the case-law cited).
– The distinctive character of the earlier mark
99 The Board of Appeal found, in paragraph 57 of the contested decision, that the earlier mark had an average degree of distinctive character.
100 There is nothing in the file that might call into question those findings of the Board of Appeal, which, moreover, are not disputed by the applicant.
The global assessment of the likelihood of confusion
101 The Board of Appeal held that, having regard to the fact that the services at issue were similar to at least a low degree, the fact that the signs at issue were visually and phonetically similar to an average degree and conceptually similar to a low degree, and the fact that the earlier mark had average intrinsic distinctive character, there was a likelihood of confusion on the part of the Spanish-speaking general public and professionals, who would pay a level of attention varying from average to above average, in respect of the services at issue.
102 The applicant submits, in essence, that the Board of Appeal was wrong to find that there was a likelihood of confusion.
103 EUIPO and the intervener dispute the applicant's arguments.
104 It should be borne in mind that 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between these 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).
105 In the present case, it should be restated that the Board of Appeal held, correctly, that the earlier mark had an average degree of distinctive character, that the services at issue were similar, at least to a low degree, that the marks at issue were visually and phonetically similar to an average degree and, lastly, that the relevant public was composed of the Spanish-speaking general public and professionals, and had a degree of attentiveness which might vary from average to high (see paragraphs 40, 58, 79, 89 and 100 above).
106 Furthermore, as was stated in paragraph 97 above, and contrary to the Board of Appeal's finding, the signs at issue have an average degree of conceptual similarity. Nevertheless, it follows from the case-law that when the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is low (see judgment of 20 March 2024, BF energy, T‑245/23, not published, EU:T:2024:190, paragraph 76 and the case-law cited).
107 Lastly, the applicant's argument that, in order for a likelihood of confusion to be found to exist, it would have been necessary, in order to compensate for the low degree of similarity between the services at issue, for there to be a high degree of similarity between the marks at issue, must be rejected. It should be stated that it is true that, by virtue of the principle of interdependence referred to in paragraph 31 above, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa. However, the principle of interdependence must not be applied mechanically. A mechanical application of that principle would not enable a correct overall assessment of the likelihood of confusion to be made (judgment of 19 June 2024, Naturgy Energy Group v EUIPO – Global Power Service (gps global power service), T‑312/23, not published, EU:T:2024:399, paragraph 68 and the case-law cited).
108 It follows that, despite the incorrect finding noted in paragraph 97 above, as regards the existence of a low degree of conceptual similarity between the signs at issue instead of an average degree of similarity, the Board of Appeal was right to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
109 It follows from all of the foregoing that the sole plea in law must be rejected as unfounded and, accordingly, the action must be dismissed in its entirety.
Costs
110 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.
111 Since a hearing was held and 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.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Unite Network SE to pay the costs.
Marcoulli | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 26 March 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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