Judgment;Information — ECLI:EU:T:2023:7
Date: 2023-01-18
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

summary of the findings of the Board of Appeal in paragraphs 64 and 65 above, both the word ‘yoga’ and the word ‘alliance’ are very similar, if not identical in certain cases, to the equivalent words in the languages of most non-English-speaking countries of the European Union. 73 As regards, first, the relevant public’s understanding of the word ‘yoga’, it must be stated, as observed by EUIPO, that consumers of the services at issue are generally open-minded and ‘internationally-oriented’. Therefore, it is possible to take the view that the consumers concerned have necessarily already been exposed to the content and practices of yoga beforehand and will therefore, most probably, know the international word ‘yoga’. It can therefore be concluded that it is very likely that average consumers will know the word ‘yoga’, especially since it is well known that the practice of yoga is a worldwide phenomenon of great popularity. 74 Second, as regards the ability of the relevant public to understand the word ‘alliance’, it should be noted that there are very similar equivalents to that word in most non-English-speaking countries of the European Union. However, irrespective of whether or not that word is part of basic English vocabulary, it must be held, in accordance with the case-law cited in paragraphs 70 and 71 above, that the linguistic distinction between the word elements of the signs at issue relied on by the applicant will not prevent the relevant public from understanding the semantic content of the word elements of the earlier mark. 75 Therefore, as the Board of Appeal rightly found, although it is true that there are no close equivalents of that word in Greek, Croatian, Hungarian or Polish, as the applicant has pointed out, the fact remains that that word is commonly used within the European Union in various fields of everyday life, such as air transport, banking, insurance and health. That finding, which, moreover, is not disputed by the applicant, must be upheld. Accordingly, it may be concluded that, irrespective of the absence of close equivalents in certain languages spoken in the relevant territory, the word ‘alliance’ is likely to be understood by the average consumer of the services at issue. 76 Consequently, the Board of Appeal was right to find, in paragraph 40 of the contested decision, that the word elements of the earlier mark had very weak, distinctive character, if any, for the relevant public, given that the services at issue can all be for the purpose of yoga. – The dominant and distinctive elements of the signs at issue 77 The Board of Appeal found that the figurative element of the earlier mark in the shape of a flower was co-dominant with the word element ‘yoga’ on account of their size and line thickness, which contributed to their greater prominence. As regards the word ‘alliance’, the Board of Appeal found that it was of secondary importance because of its smaller size and its position. As regards the mark applied for, the Board of Appeal found that there was no dominant element, since the figurative elements of the sign, although larger in size, did not eclipse its word elements because of their capitalisation and their contrasting colouring. 78 The applicant disputes the Board of Appeal’s assessment and submits, first, that the word elements ‘yoga alliance’, common to the signs at issue, have greater weight in the visual comparison of those signs, given the stronger impact of the word elements in composite figurative marks, in accordance with the case-law, and, second, that the figurative elements are essentially decorative and, at most, weakly distinctive. Consequently, it claims that the signs at issue are visually similar to an average degree. 79 EUIPO and the intervener dispute the applicant’s arguments. 80 First of all, for the purposes of assessing the visual similarity of the signs, account must be taken of the distinctive and dominant character of their components, in accordance with the case-law cited in paragraph 58 above. 81 Thus, in the first place, as regards the earlier mark, the Board of Appeal’s assessment that the figurative element in the shape of a flower is co-dominant with the word element ‘yoga’ must be upheld. The co-dominance of those elements visually is justified by characteristics such as their similar stylisation, size and their identical line thickness, which help to separate them from the word element ‘alliance’. For its part, the word ‘alliance’ plays a secondary role in that sign, since it is represented in smaller characters and with a much thinner line than the other elements. In addition, that word occupies a secondary position in the lower part of the earlier mark, below the word ‘yoga’. 82 The word elements ‘yoga alliance’ have very weak distinctive character, if any, as is apparent from the analysis carried out in paragraphs 72 to 75 above. As regards the distinctive character of the figurative element in the shape of a flower, it should be noted that, as the intervener submitted in his written pleadings, the four intertwining petals are likely to evoke the image of a lotus flower in the mind of the average consumer, which is a widely known symbol for yoga, thus having a certain allusive character with regard to the services at issue. 83 In the second place, as regards the dominant character of the components of the mark applied for, as the Board of Appeal found in paragraph 46 of the contested decision, although the figurative element in the shape of the globe surrounded by a wreath of leaves is larger than the word elements of which it is composed, the latter are just as eye-catching as the figurative element because of their capitalisation and the contrast between their colours. Therefore, the Board of Appeal was entitled to conclude that the mark applied for did not contain dominant elements. 84 Furthermore, the Board of Appeal’s assessment of the lack of inherent distinctive character of the elements of that mark must be upheld. Beyond the descriptive character of the word elements ‘yoga alliance’, the globe merely reinforces the concept of the word element ‘international’ contained in the lower part of the mark, and it does not fulfil the trade mark’s function of indicating the commercial origin of the mark either. Furthermore, the wreath is a typical decorative element representing triumph or success. Lastly, the word ‘india’ merely refers to the geographical location in which the company is established. 85 In that regard, it should be noted that, contrary to what the applicant claims, although it is true that, in general, the word elements of a composite figurative mark are supposed to have a greater impact on the average consumer because the consumer will more easily refer to the services at issue by citing the name of that mark than by describing the figurative elements, the fact remains that, in accordance with the case-law cited in paragraph 69 above, that case-law criterion does not have an absolute character, in particular where some of the elements of a trade mark are descriptive in nature, since they are less likely to influence the public’s perception and to be remembered by it. – Visual similarity 86 The Board of Appeal found that the coincidence in the signs at issue of the word elements ‘yoga alliance’ was qualified by the presence of the rest of the figurative elements which differed and therefore it concluded that there was a low degree of visual similarity. 87 In the present case, the signs at issue coincide, visually, in the word elements ‘yoga alliance’, which are descriptive of the services at issue, whereas they differ in the word elements ‘india international’, the abovementioned figurative elements and the colour in which they are represented. Thus, it must be held that, despite the identical presence of those word elements, the signs at issue display, in the eyes of the relevant public, clear aesthetic differences in the respective overall impression they create. 88 It follows that, in accordance with the findings made in paragraphs 80 to 85 above and taking into account both the limited impact of the single common element of the marks at issue when comparing the signs and the notable visual differences in their figurative elements, the Board of Appeal was entitled to find that the signs at issue were visually similar to a low degree. – Phonetic similarity 89 The Board of Appeal found that there was an average degree of phonetic similarity between the signs at issue because, first, their decorative elements would not be pronounced, second, the overlap between the word elements ‘yoga alliance’ was qualified due to its lack of distinctive character and, third, the impact of the different word elements ‘india’ and ‘international’ would be reduced because they were also weakly distinctive. 90 The applicant submits that, since the word elements ‘yoga alliance’ have average distinctive character, contrary to the assessment of the Board of Appeal, the phonetic overlap between those elements in the signs at issue makes them highly similar phonetically. 91 EUIPO disputes the applicant’s arguments. 92 In the present case, the signs at issue coincide in the pronunciation of the common word elements ‘yoga alliance’ and differ in relation to the pronunciation of the word elements ‘india international’, which are present in the mark applied for, as the figurative elements have no impact phonetically. 93 In that regard, while it is true that the phonetic similarity could be high because of the identical pronunciation of the word elements ‘yoga alliance’, account must nevertheless be taken of the limited impact that those elements are likely to have on consumers, given their weak distinctive character, as found in paragraph 85 above. That fact therefore contributes to reducing the phonetic similarity of the marks at issue. 94 Consequently, the Board of Appeal’s assessment that the signs at issue are phonetically similar to an average degree must also be upheld. – Conceptual similarity 95 The Board of Appeal found that there was a ‘partial’ similarity from a conceptual perspective between the marks at issue because, on the one hand, the two signs refer to an alliance for yoga, but, on the other hand, they differ in the sense that the alliance of the mark applied for is linked to India. 96 At the hearing on 14 September 2022, following a question put by the Court seeking clarification of the Board of Appeal’s assessment of the conceptual similarity of the signs at issue as being ‘partial’, EUIPO argued that that assessment should be understood as referring to a certain degree of similarity between them. In the interests of clarity, the assessment of the conceptual similarity carried out by the Board of Appeal must therefore be interpreted as meaning ‘average’. 97 The applicant submits that none of the marks has any discernible meaning for the Greek-, Croatian-, Hungarian- and Polish-speaking public and that, therefore, no assessment of conceptual similarity can be carried out. 98 EUIPO and the intervener dispute the applicant’s arguments. 99 In the present case, it should be noted, first of all, that, contrary to what the applicant claims, the meaning of the word elements in the marks at issue is likely to be understood by all consumers of the non-English-speaking public concerned, as has been stated in paragraphs 72 to 75 above. There is therefore some conceptual similarity in so far as the two signs refer to an alliance for yoga, although the impact of that common word element is limited on account of its descriptive character. 100 The signs at issue also contain other word and figurative elements which convey concepts likely to be understood by the relevant public and which may help to alter the perception of the signs by that public. 101 Thus, as regards the mark applied for, the concept conveyed by the differing word elements ‘india international’ is reinforced by the presence of the globe, whereas the wreath of leaves surrounding the globe refers to the idea of a frequently used honorary award and symbolising, according to the case-law, aspects such as glory, success or high quality (see, to that effect, judgment of 25 June 2020, Pavel v EUIPO – bugatti (B), T‑114/19, not published, EU:T:2020:286, paragraph 84). Consequently, it is plausible that the mark applied for could refer to the concept of an internationally oriented yoga alliance established in India and enjoying considerable prestige. 102 As regards the earlier mark, as the intervener has pointed out, the presence of the figurative element consisting of four intertwining leaves or petals in the shape of a flower is likely to evoke in the minds of consumers the concept of a lotus flower. That element is commonly represented in the discipline of yoga and symbolises purity, enlightenment and spiritual elevation. Therefore, the earlier mark could be perceived as a yoga alliance or partnership embodying those values and attributes represented by the lotus flower. 103 It follows that, in view of the similarities and differences between the signs, the Board of Appeal was entitled to find, without making an error of assessment, that the marks at issue were conceptually similar to an average degree. 104 Consequently, the second complaint of the second plea must be rejected as unfounded. – The distinctiveness of the earlier mark 105 The Board of Appeal found, in paragraph 53 of the contested decision, that the distinctive character of the earlier mark stemmed mainly from its figurative element in the shape of a leaf and, to a lesser extent, from the stylisation of its word element ‘yoga’. 106 The applicant submits, in essence, that, since the components of the earlier mark are distinctive with regard to the relevant public, the earlier mark has normal inherent distinctiveness. 107 EUIPO and the intervener dispute the applicant’s arguments. 108 As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the earlier trade mark on the market in question. The more distinctive the earlier trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20) Therefore, the distinctiveness of the earlier mark is one of the factors to be taken into account in the assessment of likelihood of confusion. 109 In that context, it is necessary to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a composite mark possesses, which determines its ability to dominate the overall impression created by the mark (order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 9 April 2014, MHCS v OHIM – Ambra (DORATO), T‑249/13, not published, EU:T:2014:193, paragraph 47). 110 In that regard, it is apparent from paragraph 82 above that the distinctive character of the components of the earlier mark is weak in relation to the services at issue since there is, in the eyes of the target public, a sufficiently direct and specific relationship between that mark and the goods and services in respect of which registration is sought (see judgment of 10 October 2019, Kalypso Media Group v EUIPO – Wizards of the Coast (DUNGEONS), T‑700/18, not published, EU:T:2019:739, paragraph 47 and the case-law cited). 111 In the present case, in accordance with the case-law cited in paragraph 109 above, first, the ability of the word elements of the earlier mark to dominate the overall impression created in the mind of the consumer is limited, on account of their weak distinctive character, and, second, in view of the minimal distinctiveness of the earlier mark considered as a whole, the scope of the protection of that mark is also limited. 112 Therefore, as the Board of Appeal found in paragraph 53 of the contested decision, the earlier mark has the minimum degree of distinctiveness required, which results mainly from the figurative element in the shape of a leaf and, to a lesser extent, from the stylisation of the word ‘yoga’. 113 Consequently, the distinctive character of the earlier mark must be considered to be weak in relation to the services at issue and the relevant public in the present case. Global assessment of the likelihood of confusion 114 The Board of Appeal concluded that there was no likelihood of confusion between the marks at issue. It found that, in view of the limited distinctive character of the elements common to the marks at issue, the relevant public would not be misled as to the commercial origin of the services at issue. Furthermore, it found that, in the relevant sector of activity in the field of yoga, there was a multiplicity of operators, any number of which might have formed alliances with one another. Accordingly, it found that the relevant public would look to the overall scheme of the marks to determine commercial origin. Furthermore, the Board of Appeal found that the differentiating elements of those marks would also allow the relevant public to rule out any likelihood of confusion, even for identical or highly similar services. The Board of Appeal also noted that the level of attention of the relevant public would vary from average to high and that, before acquiring the services at issue, it was highly likely that the relevant public would carry out its own research and seek information about the provider of the services. 115 The applicant disputes the Board of Appeal’s assessment and submits that the existence of a likelihood of confusion between the marks at issue cannot be ruled out on the part of the non-English-speaking Greek-, Croatian-, Hungarian- and Polish-speaking public. It claims that, in accordance with the principle of imperfect recollection, consumers only rarely have the chance to compare marks directly and are more likely to remember similarities while reducing their differences, even assuming that the relevant public displays a high level of attention. 116 In the present case, it has been established that the public to be taken into account for the purposes of examining the likelihood of confusion is the average non-English-speaking consumer in the European Union with a level of attention which varies from average to ‘above average’, depending on the category of services under consideration. That public is able to understand the meaning of the common word elements of the marks at issue. Furthermore, the services at issue in Class 41 covered by the mark applied for have been considered to be in part identical and in part similar to the services covered by the earlier mark in the same class. Furthermore, the signs at issue have been found to be visually similar to a low degree and phonetically and conceptually similar to an average degree. Lastly, it is apparent from the analysis carried out in paragraphs 110 to 113 above that the inherent distinctive character of the earlier mark is weak. 117 As a preliminary point, in accordance with the principle of the interdependence between the factors to be taken into consideration when examining the likelihood of confusion, it must be noted, as EUIPO rightly pointed out, that the ratio legis of trade mark law is to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other (see, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 41). 118 It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trade mark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case. 119 It should be remembered that the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market (see judgment of 26 June 2008, SHS Polar Sistemas Informáticos v OHIM – Polaris Software Lab (POLARIS), T‑79/07, not published, EU:T:2008:230, paragraph 49 and the case-law cited). 120 Thus, in accordance with the case-law cited in paragraph 119 above, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion. 121 In that regard, it should be borne in mind that, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53 and the case-law cited). 122 In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion. 123 It follows from all the foregoing considerations that the Board of Appeal correctly concluded that there was no likelihood of confusion on the part of the relevant public as regards the fact that the services at issue may come from the same undertaking or, as the case may be, from economically linked undertakings. 124 Accordingly, the third complaint of the second plea must also be rejected as unfounded. 125 Consequently, the second plea must be rejected as unfounded and, therefore, the action must be dismissed in its entirety. Costs 126 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. 127 Since the applicant has been unsuccessful, it must be ordered to pay the costs relating to the present proceedings before the Court, in accordance with the forms of order sought by EUIPO and the intervener. 128 Furthermore, the intervener also claimed that the applicant should be ordered to pay the costs incurred during the appeal and opposition proceedings. In that regard, first, it must be recalled that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred in respect of the proceedings before the Opposition Division cannot be regarded as recoverable costs. Therefore, the intervener’s form of order must be rejected in so far as it seeks to have the applicant bear the costs incurred before the Opposition Division. 129 Second, as regards the intervener’s claim concerning the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested 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, paragraphs 193 and 194 and the case-law cited). On those grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders YAplus DBA Yoga Alliance to pay the costs. Costeira Kancheva Zilgalvis Delivered in open court in Luxembourg on 18 January 2023. E. Coulon M. van der Woude Registrar President * Language of the case: English.