Information;Judgment — ECLI:EU:T:2025:49
Date: 2025-01-22
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - decision unnecessary;Action for annulment - successful
Origin: Germany

summary of the factors to be taken into account in the assessment of the likelihood of confusion at the beginning of the section concerning that likelihood is intended precisely to make very clear the degrees of similarity being weighed in applying the principle of interdependence. It must therefore be assumed that the Board of Appeal took into account the degrees of similarity referred to in in paragraph 66 of the contested decision in its global assessment of the likelihood of confusion. 91 In the second place, having regard to the case-law cited in paragraph 78 above, the applicant is right to criticise the fact that the Board of Appeal did not determine the degree of similarity of the goods covered by the marks at issue more precisely. Given that the Board of Appeal found that there was no likelihood of confusion, while accepting an average degree of visual similarity and a high degree of phonetic similarity, it was not sufficient for it to state that the goods were similar ‘to at least a low degree’, but rather it was required to determine precisely the degree of similarity of those goods. Even if the contested decision should be understood to the effect that the Board of Appeal accepted a low degree of visual similarity and an average degree of phonetic similarity, which is not entirely clear on account of the flagrant contradiction between paragraphs 40 and 42 of that decision, on the one hand, and paragraph 66 thereof, on the other, the outcome of its assessment of the existence of a likelihood of confusion could, by virtue of the principle of interdependence, very well be different if the goods are found to be similar to an average or high degree, rather than to a low degree. 92 Accordingly, the Board of Appeal made an error of assessment in concluding in its global assessment that there was no likelihood of confusion without determining the degree of similarity of the goods in question more precisely. 93 For the part of the relevant public which will single out the initial common element ‘nova’ in the two marks and associate it with the meaning of ‘new’ and ‘novelty’, the visual similarity is low, the phonetic similarity is average and the conceptual similarity is low. In view of the average inherent distinctiveness of the earlier mark and the high degree of similarity of the goods, even a high level of attention on the part of the relevant public cannot rule out a likelihood of confusion. 94 For the part of the relevant public for which ‘nova’ has no meaning, the visual similarity is average and the phonetic similarity is high, but the conceptual comparison remains neutral. In view of the average inherent distinctiveness of the earlier mark and the high degree of similarity of the goods, it cannot be ruled out that the relevant public, notwithstanding its high level of attention, may believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings. 95 It follows that there is a likelihood of confusion both for the part of the relevant public for which the term ‘nova’ has a meaning and for the part for which it has no meaning. 96 Therefore, the first plea in law and, accordingly, the first head of claim must be upheld, without it being necessary to rule on the second plea in law, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001. B. Second head of claim 97 By its second head of claim, the applicant claims that the Court should uphold the opposition filed against all the goods designated in the EU trade mark application at issue and refuse the application for registration of the mark applied for in its entirety. 98 EUIPO contends that that head of claim is unfounded. 99 In so far as the second head of claim seeks to have the opposition upheld and the application for registration of the mark applied for refused, the applicant is asking the Court, in essence, to adopt the decision which, according to the applicant, should have been taken by EUIPO, that is to say, a decision finding that the conditions for upholding the opposition brought by the applicant are satisfied. Consequently, the applicant is asking the Court to exercise its power to alter decisions, as provided for in Article 72(3) of Regulation 2017/1001 (judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 84). 100 In that regard, it should be borne in mind that, although the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position, it must be exercised in situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). 101 In the present case, the conditions for the exercise of the Court’s power to alter decisions are satisfied. The Board of Appeal adopted a position, in the contested decision, on the likelihood of confusion on the part of the relevant public on the basis of an average inherent distinctiveness of the earlier mark, with the result that the Court has the power to alter that decision on that basis. 102 As is apparent from paragraph 95 above, the Board of Appeal was required to hold, like the Opposition Division, that, even on the basis of an average inherent distinctiveness of the earlier mark, there is a likelihood of confusion. 103 In those circumstances, the appeal filed with the Board of Appeal by the intervener against the decision of the Opposition Division of 5 September 2022, by which that department upheld the opposition for all the goods in question and refused the trade mark application filed by the intervener, must, by way of alteration of the contested decision, be dismissed. C. Costs 104 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. 105 Since EUIPO and the intervener have been unsuccessful, first, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter, and, second, the intervener must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Alters the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 October 2023 (Case R 2005/2022-1) such that the appeal filed with EUIPO by Novaresine Srl against the decision of the Opposition Division of 5 September 2022 concerning Opposition No B 3 119 195 is dismissed; 2. Orders EUIPO to bear its own costs and to pay those incurred by Rain Carbon Germany GmbH; 3. Orders Novaresine Srl to bear its own costs. Škvařilová-Pelzl Nõmm Steinfatt Delivered in open court in Luxembourg on 22 January 2025. V. Di Bucci M. van der Woude Registrar President * Language of the case: English.