Opinion of the Advocate General — ECLI:EU:C:2019:974
Date: 2019-11-14
Language of the case: Spanish
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible;Appeal - successful
Origin: Spain

Summary and view 62. In summary, two methods coexist in the case-law of the General Court and of the Court with regard to the similarity of signs. There is, on the one hand, a ‘strict’ method, in accordance with which, at the stage of comparing the signs, the General Court must merely compare their visual, aural and conceptual aspects. Where it finds a degree of similarity in respect of (at least) one of those aspects, it must conclude that the signs are similar, within the meaning of Article 8(1)(b) of Regulation No 207/2009. If the goods or services in question are also similar, the General Court must carry out a global assessment of the likelihood of confusion. The circumstances in which those goods or services are marketed and the possible ‘counteraction’ of the similarities found between the signs on account of their conceptual difference must be examined as part of that global assessment, among all of the relevant factors. 63. There is, on the other hand, a ‘flexible’ method, in accordance with which the General Court must not only compare the visual, aural and conceptual aspects of the signs, but, in addition, it must balance the degrees of similarity and the differences found in respect of every aspect, as part of a ‘global assessment of similarity’ stage, by potentially taking account of those marketing conditions and a possible ‘counteraction’. If, in the General Court’s view, the differences outweigh the similarities, it must consider that the signs are not similar (overall), within the meaning of Article 8(1)(b) of Regulation No 207/2009, and dispense with carrying out the global assessment of the likelihood of confusion. 64. At the outset, I consider that, in the present case, the Court should adopt a position in favour of one of the methods. It falls to the Court to harmonise the case-law on trade mark law and to establish a clear and coherent position on the subject. 65. In that regard, contrary to what Equivalenza implies, (57) the present case is not a matter of determining a question of pure presentation. The issue in this case is the extent of the examination to be carried out by the General Court when it examines an appeal relating to opposition proceedings based on Article 8(1)(b) of Regulation No 207/2009. That involves determining the limits within which the General Court can apply the case-law, referred to in point 37 of this Opinion, which releases it from the obligation to carry out a global assessment of the likelihood of confusion. Choosing the ‘flexible’ method would facilitate the application of that case-law whereas, conversely, the ‘strict’ method would reduce the possibility of having recourse to it. 66. While accepting that the choice between the two methods is not easy, I am of the view, all things considered, that the General Court and the Court should confine themselves to the ‘strict’ method described in point 62 of this Opinion. 67. The latter method seems to me, in the first place, to be more in line with the scheme of Article 8(1)(b) of Regulation No 207/2009. 68. On that point, I note that two related, but nonetheless distinct, questions arise from the wording of that provision in respect of the similarity of the signs at issue: first, does such similarity exist? And, secondly, is that similarity sufficient to give rise to a likelihood of confusion on the part of the public? Logically, the condition stipulated in that provision that the signs are similar should be considered to be satisfied where the first question has been answered in the affirmative, irrespective of the answer to the second. 69. Like EUIPO, (58) I consider that the response to the first question merely involves comparing the signs at issue and establishing the existence of elements of visual, aural or conceptual similarity (59) between them. This initial analysis of the signs has a limited purpose. It is intended solely to determine their formal relationship. It is during the second analysis, (60) the global assessment, aimed at answering the second — fundamental — question of the likelihood of confusion, that it must be determined whether those elements of similarity are sufficient, taking into account all the relevant factors, to give rise to a likelihood of confusion. (61) 70. Admittedly, the comparison of the signs cannot be a purely abstract exercise. It must always be carried out through the eyes of the (hypothetical) perception of the average consumer of the category of goods or services in question. (62) That comparison must therefore be based on the ‘overall impression’ left by those signs in the consumer’s memory and according to the principle of the imperfect image. (63) In that context, where it compares the visual, aural and conceptual aspects of the signs at issue and assesses the similarity in respect of each aspect, the General Court is inevitably prompted to balance the elements of similarity and dissimilarity (the former may outweigh the latter in that overall impression or vice versa), and the possible degree of similarity (weak, average or high) assigned to each aspect of the signs is, essentially, merely a simplification of the nuances arising from that comparison. (64) 71. However, in my view, it is one thing to balance the similarities and dissimilarities when comparing the visual, aural or conceptual aspects of the signs at issue, in order to assess the degree of similarity of the aspect in question. It is another to balance the degrees of similarity and the differences found in respect of those different aspects. 72. As EUIPO argues, in essence, (65) to balance those aspects thus twice in succession (first, with regard to the elements of similarity and dissimilarity found in respect of one aspect of the signs, in order to give a decision on the existence of a degree of similarity as regards that aspect; and, secondly, with regard to the similarities and differences found in respect of the various aspects of the signs, in order to give a decision on the ‘overall similarity’ of those signs) leads to the risk of an excessive simplification of their similarity, masking elements which may, if all of the circumstances of the case had been taken into account, have been capable of demonstrating a likelihood of confusion. In that regard, I note that it cannot be ruled out that the mere aural similarity between two signs, or even their mere conceptual similarity, may, in some circumstances, lead to a likelihood of confusion. (66) 73. Thus, in my view, the ‘flexible’ method for comparing signs and the ‘global assessment of similarity’ stage confuse the two analyses described in point 69 of this Opinion and go beyond the objective of the comparison of the signs. Following that method potentially entails prejudging, at the stage of that comparison, the question of the possible existence of a likelihood of confusion. 74. I must stress here that the question whether that similarity between the signs at issue is sufficient to give rise to a likelihood of confusion cannot be assessed independently of the other relevant factors for the global assessment of that likelihood and of the principle of interdependence, which is aimed at ensuring that that assessment is, as far as possible, in line with the actual perception of the relevant public of those signs. (67) Factors such as, inter alia, the degree of attention of the public and the distinctive character of the earlier trade mark are of utmost importance in that regard. A consumer who pays a high level of attention will perceive differences that a consumer who is less attentive might not notice. Similarly, when confronted with an earlier trade mark which is highly distinctive, because it is composed of original elements, the public will attribute little importance to the differences between the signs at issue whereas, when confronted with a trade mark which has a weak distinctive character, because it is made up of descriptive, evocative or common elements, the public will attribute more weight to their differences. (68) 75. Moreover, I consider, as does EUIPO, (69) that neither consideration of the circumstances in which the goods or services in question are marketed nor consideration of a possible ‘counteraction’ should allow the General Court to ‘erase’ from the outset, at the stage of comparing the signs, a degree of similarity that has been found in respect of one of their aspects (particularly where, as in the present case, this involves an average degree of aural similarity). 76. First, the consideration of the circumstances in which the goods or services in question are marketed falls, by nature, under the prospective analysis of the potential use of the signs at issue on the market, which is inherent to the global assessment of the likelihood of confusion. (70) It is no longer a matter of comparing the signs in order to identify their similarities and differences, but of determining the extent to which the similarities found play a part in demonstrating that likelihood of confusion. Where, for example, the goods are sold in such a way that the consumer always encounters the signs at issue visually, it follows solely, in my view, that it is less probable that their aural similarity will lead to that likelihood of confusion. Nevertheless, that possibility cannot be ruled out and depends on all of the factors in that global assessment. Consequently, the General Court cannot merely disregard that similarity at the stage of comparing the signs. 77. A different interpretation cannot be seen, in my view, in the judgment in Lloyd Schuhfabrik Meyer. (71) I understand that judgment, as does EUIPO, (72) to mean that, in order to establish the existence of a likelihood of confusion, it is necessary, inter alia, to compare the signs at issue as regards their different aspects and, if, in that context, a degree of similarity is found in respect of one aspect, to ‘assess the importance’ of that finding in order to demonstrate that likelihood, taking account, in particular, of the circumstances in which the goods or services in question are marketed. In other words, the Court’s intention was solely to clarify the extent to which the finding of a degree of similarity between the signs in respect of a given aspect (in that case it was aural similarity) demonstrates the existence of a likelihood of confusion, without prejudice to the other relevant factors. (73) 78. Secondly, the ‘counteraction theory’ also falls, by nature, under the global assessment of the likelihood of confusion. That theory simply indicates that the conceptual differences between two conflicting signs are capable of reducing the likelihood of the consumer confusing the origin of goods or services in question, despite the fact that those signs are visually and/or aurally similar. In such circumstances, the effect of those similarities on the consumer’s perception of the signs is ‘counteract[ed] to a large extent’. (74) However, it is possible that, in spite of this, those similarities will lead to a likelihood of confusion in some cases. (75) The finding of a possible ‘counteraction’ cannot therefore, in my view, permit the General Court to eliminate those similarities at the stage of comparing the signs and relieve it from examining the other factors that are relevant for the assessment of the likelihood of confusion. (76) 79. The ‘strict’ method also seems to me, in the second place, to be more in line with the objective of Article 8(1)(b) of Regulation No 207/2009. In that regard, I would point out the aim of that provision is essentially to protect the competitive interests of economic operators, by preventing the registration of signs that may undermine the function as an indication of origin performed by their trade marks. (77) 80. In the light of that objective, the proprietor of a trade mark who opposes the registration of a sign should, in my opinion, have a fair opportunity to demonstrate a likelihood of confusion and the need for protection. In particular, he should have the opportunity to demonstrate that, for example, mere conceptual or aural similarity between the signs is sufficient, taking into account all the circumstances, to give rise to a likelihood of confusion. (78) In that connection, the condition of similarity of the signs should remain a minimum prerequisite in order to access that protection, and that condition should not, except in cases of a manifest failure to comply, be used to cut short any debate on that likelihood of confusion. (79) The case-law referred to in point 37 of this Opinion should therefore be applied sparingly. 81. The ‘strict’ method also does not seem to me to go beyond the objective of protection pursued in Article 8(1)(b) of Regulation No 207/2009. 82. In particular, the obligation to carry out a global assessment of the likelihood of confusion where a degree of similarity in one of the aspects of the signs at issue has been found does not mean that it must automatically (and therefore excessively) be accepted that a likelihood of confusion exists, even where the goods or services in question are identical. (80) 83. The global assessment of the likelihood of confusion must make it possible to determine, in each case, whether the earlier trade mark on which the opposition is based merits protection, in accordance with the objective pursued in Article 8(1)(b) of Regulation No 207/2009. The fact that the signs at issue are similar, as are the goods or services in question, cannot, alone, affect the outcome of that assessment. In particular, the distinctive character of that earlier trade mark must be regarded as being of decisive importance in that regard. Whilst, according to the case-law of the Court, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion, (81) the opposite is also true. With regard to a trade mark with a weak distinctive character, and which thus has a lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking, the degree of similarity between the signs should be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor. (82) 84. It is true that some judgments reveal a drift on this issue. Thus, the General Court sometimes holds that the mere finding that the goods are identical and there is some similarity, however faint, between the signs is sufficient in any event to give rise to a likelihood of confusion, irrespective of the fact that the earlier trade mark has weak distinctive character. (83) Those judgments deviate, in my view, from the objective pursued in Article 8(1)(b) of Regulation No 207/2009 and create a problem of the ‘overprotection’ of trade marks, which has been much commented upon. (84) 85. However, although this is a real problem, I do not think that the solution lies in the ‘flexible’ method of comparing signs. In fact, it lies in reassessing the weight that should be given to the distinctive character of the earlier trade mark in the global assessment of the likelihood of confusion. 86. In the third place, considerations of legal certainty, in my view, militate against adopting the ‘flexible’ method. To me, that principle requires inter alia that, as far as possible, reasoning is transparent and decisions are foreseeable. In the judgments of the General Court, there is often a lack of clarity in the ‘global assessment of similarity’ stage (85) and a double balancing exercise between the similarities and differences between the signs involved which affects whether the outcome of the comparison of the signs is foreseeable. (86) By contrast, the ‘strict’ method offers, in my eyes, clear reasoning in that regard. 87. Lastly, promoting the ‘flexible’ method would inevitably create tension with the case-law on Article 8(5) of Regulation No 207/2009. (87) In that regard, I would point out that, in connection with that provision, the Court has favoured a ‘strict’ approach: where the General Court finds some similarity, however faint, between the signs at issue as regards one of their visual, aural or conceptual aspects, it must undertake an overall assessment of the relevant factors in order to determine the likelihood that the public concerned might establish a link between those signs. (88) The tension is all the higher since, in principle, the condition that the signs are similar, which is common to Article 8(1)(b) and Article 8(5) of that regulation, must be assessed in the same way in the context of either provision. (89) 3. Response to the third and fourth parts of EUIPO’s single ground of appeal 88. In the light of the foregoing, I take the view that the third and fourth parts of the single ground of appeal put forward by EUIPO are well-founded. By carrying out, in paragraphs 46 to 54 of the judgment under appeal, a ‘global assessment of similarity’ step, taking into account, in that connection, in paragraphs 48, 51 and 53 of that judgment, the circumstances in which the goods in question are marketed and, in paragraph 54 of that judgment, the existence of a conceptual difference between the signs, and, finally, by concluding, in paragraph 55 of that judgment, that ‘despite their average degree of aural similarity, based on an overall impression, the signs at issue are not similar, within the meaning of Article 8(1)(b) of Regulation No 207/2009’, the General Court has, in my view, misinterpreted that provision. 89. In my mind, those errors of law call into question the legality of the operative part of the judgment under appeal. The General Court could not validly order, in point 1 of the operative part of that judgment, the annulment of the contested decision, which found there was a likelihood of confusion, without having first carried out a global assessment of that likelihood, in accordance with the method described in point 62 of this Opinion. I therefore propose that the Court, irrespective of the response to the first and second parts of the single ground of appeal, should set aside that judgment. VII. Conclusion 90. In the light of all the foregoing considerations, I propose that the Court should set aside the judgment of the General Court of the European Union of 7 March 2018, Equivalenza Manufactory v EUIPO — ITM Entreprises (BLACK LABEL BY EQUIVALENZA) (T‑6/17, not published, EU:T:2018:119). 1 Original language: French. 2 Council Regulation of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). 3 Regulation of the European Parliament and of the Council of 14 June 2017 (OJ 2017 L 154, p. 1). See Articles 211 and 212 of that regulation. 4 Judgment of 22 June 1999 (C‑342/97, EU:C:1999:323, paragraph 27; ‘the judgment in Lloyd Schuhfabrik Meyer’). 5 See judgment of 12 June 2007, OHIM v Shaker (C‑334/05 P, EU:C:2007:333, paragraph 36). 6 As Equivalenza observes, the paragraph that EUIPO refers to in this instance would appear, in fact, to be paragraph 32 of the judgment under appeal. 7 See judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraphs 20, 21 and 25), and of 23 March 2006, Mülhens v OHIM (C‑206/04 P, EU:C:2006:194, paragraphs 21 and 36). 8 See judgments of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177, paragraph 66), and of 2 December 2009, Volvo Trademark v OHIM — Grebenshikova (SOLVO) (T‑434/07, EU:T:2009:480, paragraph 50). 9 See judgment in Lloyd Schuhfabrik Meyer (paragraph 27). 10 See recitals 7 and 8 of Regulation No 207/2009. 11 I note that Article 8(1)(b) of Regulation No 207/2009 corresponds to Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25). The case-law concerning the former provision can therefore be transposed to the latter, and vice versa. Moreover, those two provisions reproduce the identical provisions contained in Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark (OJ 1994 L 11, p. 1) and Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which they replaced. Thus, the case-law concerning those former articles can be transposed to the new articles (see to that effect, judgments of 20 March 2003, LTJ Diffusion (C‑291/00, EU:C:2003:169, paragraphs 41 and 43), and of 10 December 2015, El Corte Inglés v OHIM (C‑603/14 P, EU:C:2015:807, paragraph 37)). Therefore, in this Opinion, I shall refer without distinction to judgments concerning the likelihood of confusion delivered in respect of any of those provisions. 12 See, inter alia, judgments of 29 September 1998, Canon (C‑39/97, EU:C:1998:442, paragraphs 26, 27 and 29); of 12 June 2007, OHIM v Shaker (C‑334/05 P, EU:C:2007:333, paragraph 33); and of 24 June 2010, Becker v Harman International Industries (C‑51/09 P, EU:C:2010:368, paragraph 31). 13 See, inter alia, recital 8 of Regulation No 207/2009 and judgments of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528, paragraph 22); of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraph 18); and of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 41). 14 See, inter alia, judgments of 29 September 1998, Canon (C‑39/97, EU:C:1998:442, paragraph 17); in Lloyd Schuhfabrik Meyer (paragraph 19); and of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 43). 15 See, inter alia, judgments of 29 September 1998, Canon (C‑39/97, EU:C:1998:442, paragraph 22); of 11 December 2008, Gateway v OHIM (C‑57/08 P, not published, EU:C:2008:718, paragraphs 45 and 52); and of 20 September 2017, The Tea Board v EUIPO (C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47). 16 See, inter alia, judgments of 12 October 2004, Vedial v OHIM (C‑106/03 P, EU:C:2004:611, paragraph 54); of 11 December 2008, Gateway v OHIM (C‑57/08 P, not published, EU:C:2008:718, paragraphs 56 and 57); and of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177, paragraphs 65, 66 and 68). 17 See paragraphs 55 and 56 of the judgment under appeal. 18 Judgment of 11 November 1997 (C‑251/95, EU:C:1997:528). 19 See, inter alia, judgments of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528, paragraph 23), and of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraph 19). See paragraph 19 of the judgment under appeal. 20 See, inter alia, judgments in Lloyd Schuhfabrik Meyer (paragraph 27); of 12 June 2007, OHIM v Shaker (C‑334/05 P, EU:C:2007:333, paragraph 36); and of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177, paragraph 85). See paragraph 20 of the judgment under appeal. 21 See paragraphs 26 to 45 of the judgment under appeal. 22 Paragraphs 46 and 47 of the judgment under appeal. 23 See paragraphs 48 and 51 to 55 of the judgment under appeal. 24 See points 23, 26 and 27 of this Opinion. 25 In that regard, although the assessment of the similarities and differences that exist between the signs is a factual analysis which, save where the evidence and facts are distorted, is not subject to review by the Court in the appeal (see, inter alia, judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM (C‑254/09 P, EU:C:2010:488, paragraph 50)), the question as to whether the General Court has infringed the legal principles that apply to the assessment of their similarity or has made a methodological error constitutes a point of law (see, inter alia, judgment of 4 July 2019, FTI Touristik v EUIPO (C‑99/18 P, EU:C:2019:565, paragraph 25)). 26 EUIPO has also undertaken to follow that line of case-law in its decision-making practice. See EUIPO, Guidelines for examination of European Union trade marks, Part C, Section 2, Chapter 4, Point 1.4 ‘Possible outcome of the comparison’. 27 See, in particular, judgment of 2 December 2009, SOLVO (T‑434/07, EU:T:2009:480, paragraph 50). 28 See, similarly, the assertion, in the case-law of the General Court, that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, aural and conceptual aspects (see, inter alia, judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) (T‑6/01, EU:T:2002:261, paragraph 30); of 20 April 2005, Faber Chimica v OHIM — Industrias Quimicas Naber (Faber) (T‑211/03, EU:T:2005:135, paragraph 26); and of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN) (T‑331/09, EU:T:2010:520, paragraph 43)). 29 See, inter alia, judgments of 3 July 2003, Alejandro v OHIM — Anheuser-Busch (BUDMEN) (T‑129/01, EU:T:2003:184, paragraph 54 et seq.); of 3 March 2004, Mülhens v OHIM — Zirh International (ZIRH) (T‑355/02, EU:T:2004:62, paragraph 47 et seq.); of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) (T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 40 et seq.); of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM) (T‑147/03, EU:T:2006:10, paragraph 92 et seq.); of 16 September 2013, Golden Balls v OHIM — Intra-Presse (GOLDEN BALLS) (T‑448/11, not published, EU:T:2013:456, paragraphs 51 and 52); of 16 October 2013, Zoo Sport v OHIM — K-2 (ZOOSPORT) (T‑453/12, not published, EU:T:2013:532, paragraph 87 et seq.); of 13 May 2015, Harper Hygienics v OHIM — Clinique Laboratories (CLEANIC Kindii) (T‑364/12, not published, EU:T:2015:277, paragraph 63 et seq.); of 13 May 2015, Ferring v OHIM — Kora (Koragel) (T‑169/14, not published, EU:T:2015:280, paragraph 69 et seq.); of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI) (T‑559/13, EU:T:2015:353, paragraph 99 et seq.); and of 13 March 2018, Hotelbeds Spain v EUIPO — Guidigo Europe (Guidego what to do next) (T‑346/17, not published, EU:T:2018:134, paragraph 59 et seq.). In some cases, the General Court formally concludes that the signs are similar after having found (at least) one aspect to be similar (see, inter alia, judgment of 16 September 2009, Dominio de la Vega v OHIM — Ambrosio Velasco (DOMINIO DE LA VEGA) (T‑458/07, not published, EU:T:2009:337, paragraph 44)). In other cases, the General Court proceeds directly to the global assessment of the likelihood of confusion (see, inter alia, judgments of 24 March 2011, XXXLutz Marken v OHIM — Natura Selection (Linea Natura Natur hat immer Stil) (T‑54/09, not published, EU:T:2011:118, paragraph 67 et seq.), and of 29 January 2013, Fon Wireless v OHIM — nfon (nfon) (T‑283/11, not published, EU:T:2013:41, paragraph 62 et seq.)). 30 See, inter alia, judgments of 15 January 2008, Hoya v OHIM — Indo (AMPLITUDE) (T‑9/05, not published, EU:T:2008:8, paragraph 59); of 23 September 2009, Arcandor v OHIM — dm drogerie markt (S-HE) (T‑391/06, not published, EU:T:2009:348, paragraph 54); of 15 December 2010, TOLPOSAN (T‑331/09, EU:T:2010:520, paragraphs 54 to 56); of 10 May 2011, Emram v OHIM — Guccio Gucci (G) (T‑187/10, not published, EU:T:2011:202, paragraph 68); of 15 March 2012, Cadila Healthcare v OHIM — Novartis (ZYDUS) (T‑288/08, not published, EU:T:2012:124, paragraph 57); of 15 October 2014, El Corte Inglés v OHIM — English Cut (The English Cut) (T‑515/12, not published, EU:T:2014:882, paragraph 33); and of 26 April 2018, Messi Cuccittini v EUIPO — J-M.-E.V. e hijos (MESSI) (T‑554/14, not published, EU:T:2018:230, paragraph 64). It would appear from those judgments that signs are ‘similar overall’ where they have a certain degree of visual and aural similarity despite being conceptually different. By contrast, signs which differ visually and aurally are regarded as ‘different overall’ despite having some conceptual similarity. Strangely, that additional step has sometimes led the General Court to hold that signs in respect of which it had found a difference in every aspect are ‘similar overall’ (see, in particular, judgment of 31 January 2012, Spar v OHIM — Spa Group Europe (SPA GROUP) (T‑378/09, not published, EU:T:2012:34, paragraphs 38, 47, 53 and 54)). 31 See, inter alia, judgments of 2 December 2008, Ebro Puleva v OHIM — Berenguel (BRILLO’S) (T‑275/07, not published, EU:T:2008:545, paragraphs 24 and 28); of 15 February 2011, Yorma’s v OHIM — Norma Lebensmittelfilialbetrieb (YORMA’S) (T‑213/09, not published, EU:T:2011:37, paragraph 86); of 21 February 2013, Esge v OHIM — De’Longhi Benelux (KMIX) (T‑444/10, not published, EU:T:2013:89, paragraphs 35 to 42); and of 11 December 2014, Coca-Cola v OHIM — Mitico (Master) (T‑480/12, EU:T:2014:1062, paragraphs 66 to 71). 32 See, with regard to aural similarity, judgments in Lloyd Schuhfabrik Meyer, (paragraph 28), and of 23 March 2006, Mülhens v OHIM (C‑206/04 P, EU:C:2006:194, paragraph 21). With regard to conceptual similarity, see judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528, paragraph 24). 33 See judgments of 23 March 2006, Mülhens v OHIM (C‑206/04 P, EU:C:2006:194, paragraphs 21 and 23); of 13 September 2007, Il Ponte Finanziaria v OHIM (C‑234/06 P, EU:C:2007:514, paragraph 35); and, to that effect, of 25 June 2015, Loutfi Management Propriété Intellectuelle (C‑147/14, EU:C:2015:420, paragraphs 24 and 25). 34 Judgment of 24 March 2011 (C‑552/09 P, EU:C:2011:177, paragraph 66). 35 Judgment of 24 March 2011 (C‑552/09 P, EU:C:2011:177, paragraph 86). The ambiguity lies inter alia in the fact that, in that judgment, in support of its interpretation, the Court relied on paragraph 21 of the judgment of 23 March 2006, Mülhens v OHIM (C‑206/04 P, EU:C:2006:194), which mentioned the need to balance the visual, aural and conceptual similarities and differences found between the signs as part of a global assessment of the likelihood of confusion (and not as part of a global assessment of similarity). 36 Judgment of 5 October 2017 (C‑437/16 P, not published, EU:C:2017:737). 37 Judgment of 5 October 2017, Wolf Oil v EUIPO (C‑437/16 P, not published, EU:C:2017:737, paragraph 45). Similarly, in the order of 15 January 2010, Messer Group v Air Products and Chemicals (C‑579/08 P, not published, EU:C:2010:18, paragraph 50), the Court endorsed the approach taken by the General Court which consisted in comparing the signs at issue in order to determine whether they are similar ‘from the visual, phonetic and conceptual point of view and, also, globally’ (emphasis added). 38 See, inter alia, judgments of 6 October 2004, NLSPORT, NLJEANS, NLACTIVE and NLCollection (T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49); of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE) (T‑194/03, EU:T:2006:65, paragraph 116); of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española) (T‑363/04, EU:T:2007:264, paragraphs 109 to 111); of 15 December 2010, TOLPOSAN (T‑331/09, EU:T:2010:520, paragraphs 61 and 62); of 15 March 2012, ZYDUS (T‑288/08, not published, EU:T:2012:124, paragraphs 63 to 66); of 27 February 2014, Pêra-Grave v OHIM — Fundação Eugénio de Almeida (QTA S. JOSÉ DE PERAMANCA) (T‑602/11, not published, EU:T:2014:97, paragraphs 57 to 59); of 28 April 2014, Longevity Health Products v OHIM — Weleda Trademark (MENOCHRON) (T‑473/11, not published, EU:T:2014:229, paragraphs 48 and 49); of 13 May 2015, Koragel (T‑169/14, not published, EU:T:2015:280, paragraphs 79 to 83); of 3 June 2015, GIOVANNI GALLI (T‑559/13, EU:T:2015:353, paragraphs 128 to 130); of 24 November 2016, CG v EUIPO — Perry Ellis International Group (P PRO PLAYER) (T‑349/15, not published, EU:T:2016:677, paragraphs 74 and 75); and of 10 October 2017, Cofra v EUIPO — Armand Thiery (1841) (T‑233/15, not published, EU:T:2017:714, paragraph 119). 39 Specifically, according to those judgments, a similarity in the ‘more important’ aspect of the signs at issue increases the risk of the consumer confusing the origin of the goods or services in question whereas, conversely, a difference in that aspect reduces that risk. EUIPO has undertaken to follow that approach in its decision-making practice (see EUIPO, Guidelines for examination of European Union trade marks, Part C, Section 2, Chapter 7, Point 4 ‘Impact of the method of purchase of goods and services’). 40 See, inter alia, judgment of 17 October 2013, Isdin v Bial-Portela (C‑597/12 P, EU:C:2013:672, paragraphs 20 and 22), and order of 14 November 2013, TeamBank Nürnberg v OHIM (C‑524/12 P, not published, EU:C:2013:874, paragraph 61). 41 Judgment of 13 September 2007 (C‑234/06 P, EU:C:2007:514). 42 See judgment of 13 September 2007, Il Ponte Finanziaria v OHIM (C‑234/06 P, EU:C:2007:514, paragraphs 36 and 37). See, also, which may be understood in the same way, orders of 20 January 2015, Longevity Health Products v OHIM (C‑311/14 P, not published, EU:C:2015:23, paragraphs 41 to 45), and of 7 April 2016, Harper Hygienics v EUIPO (C‑475/15 P, not published, EU:C:2016:264, paragraphs 70 to 73). 43 See, inter alia, judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraph 20); of 9 July 2015, Pêra-Grave v OHIM (C‑249/14 P, not published, EU:C:2015:459, paragraphs 40 to 44); of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS) (T‑292/01, EU:T:2003:264, paragraph 54); and of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO) (T‑185/02, EU:T:2004:189, paragraphs 54 to 58). The expression ‘counteraction theory’, which is acknowledged in legal literature and present in the case-law, therefore refers, stricto sensu, only to the counteraction of visual and/or aural similarities by pronounced conceptual differences. 44 See, inter alia, judgments of 3 March 2004, ZIRH (T‑355/02, EU:T:2004:62, paragraphs 49 and 50); of 12 January 2006, QUANTUM (T‑147/03, EU:T:2006:10, paragraphs 98 to 100); of 13 March 2018, Guidego what to do next (T‑346/17, not published, EU:T:2018:134, paragraphs 64 and 65); and of 26 April 2018, MESSI (T‑554/14, not published, EU:T:2018:230, paragraphs 73 to 76). EUIPO has undertaken to follow that approach in its decision-making practice (see EUIPO, Guidelines for examination of European Union trade marks, Part C, Section 2, Chapter 7, Point 5 ‘Impact of the conceptual similarity of the signs on likelihood of confusion’). 45 See, inter alia, judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello et Iberia Líneas Aéreas de España (MUNDICOR) (T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 93); of 31 January 2012, SPA GROUP (T‑378/09, not published, EU:T:2012:34, paragraphs 48 to 53); and of 13 May 2015, Koragel (T‑169/14, not published, EU:T:2015:280, paragraphs 67 to 69). 46 See, inter alia, judgments of 22 June 2004, PICARO (T‑185/02, EU:T:2004:189, paragraphs 56 and 58); of 22 March 2007, Brinkmann v OHIM — Terra Networks (Terranus) (T‑322/05, not published, EU:T:2007:94, point 40); of 3 June 2015, GIOVANNI GALLI (T‑559/13, EU:T:2015:353, paragraphs 94 to 98); of 1 June 2016, Wolf Oil v EUIPO — SCT Lubricants (CHEMPIOIL) (T‑34/15, not published, EU:T:2016:330, paragraphs 46 to 48); and of 10 October 2017, 1841 (T‑233/15, not published, EU:T:2017:714, paragraphs 110 to 112). 47 See, inter alia, judgments of 14 October 2003, BASS (T‑292/01, EU:T:2003:264, paragraphs 54 to 57), and of 22 June 2004, PICARO (T‑185/02, EU:T:2004:189, paragraph 56). 48 See, inter alia, judgments of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX) (T‑336/03, EU:T:2005:379, paragraphs 81, 83 and 84), and of 1 June 2016, CHEMPIOIL (T‑34/15, not published, EU:T:2016:330, paragraphs 53 and 54). 49 In particular, in the judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraphs 21 to 25), the Court validated the General Court’s reasoning, which consisted in, first, noting a ‘counteraction’ of the visual and aural similarities that existed between the signs at issue, on account of their pronounced conceptual differences and, secondly, taking into account the degree of attention of the relevant public and the distinctive character of the earlier trade mark. On that point, the Court departed from the Opinion of Advocate General Ruiz-Jarabo Colomer in Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2005:531, point 38). The Advocate General took the view that, in view of the counteraction, the signs at issue were not similar, and therefore there was no need to examine the other relevant factors for the global assessment of the likelihood of confusion. 50 Judgment of 23 March 2006 (C‑206/04 P, EU:C:2006:194, paragraphs 35 and 36), delivered in appeal proceedings against the judgment of 3 March 2004, ZIRH (T‑355/02, EU:T:2004:62). See, also, judgments of 15 March 2007, T.I.M.E. ART v OHIM (C‑171/06 P, not published, EU:C:2007:171, paragraph 48), and of 9 July 2015, Pêra-Grave v OHIM (C‑249/14 P, not published, EU:C:2015:459, paragraph 39). 51 Judgment of 23 January 2014 (C‑558/12 P, EU:C:2014:22). 52 See judgment of 21 September 2012, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (WESTERN GOLD) (T‑278/10, EU:T:2012:459, paragraph 58). 53 See judgment of 23 January 2014, OHIM v riha WeserGold Getränke (C‑558/12 P, EU:C:2014:22, paragraphs 47 and 48). See, also, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHIM (C‑16/06 P, EU:C:2008:739, paragraph 97). 54 Judgment of 5 October 2017 (C‑437/16 P, not published, EU:C:2017:737). 55 Judgment of 5 October 2017, Wolf Oil v EUIPO (C‑437/16 P, not published, EU:C:2017:737, paragraph 44). 56 See judgment of 5 October 2017, Wolf Oil v EUIPO (C‑437/16 P, not published, EU:C:2017:737, paragraphs 54 and 55). 57 See point 24 of this Opinion. 58 See point 23 of this Opinion. 59 See judgments of 23 October 2003, Adidas-Salomon and Adidas Benelux (C‑408/01, EU:C:2003:582, paragraph 28), and of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177, paragraph 52). 60 The different nature of those two analyses warrants, to ensure clarity in the reasoning, formalising them in two separate stages. Nevertheless, I acknowledge that such separation will always be somewhat artificial since the elements of similarity and dissimilarity between the signs could be discussed twice (first when their existence is found and secondly in order to determine whether they lead to a likelihood of confusion). A considerable number of judgments of the General Court therefore contain a single stage of assessment of the likelihood of confusion (see, inter alia, judgments of 14 October 2003, BASS (T‑292/01, EU:T:2003:264, paragraph 45 et seq.); of 3 March 2004, ZIRH (T‑355/02, EU:T:2004:62, paragraph 43 et seq.); and of 22 June 2004, PICARO (T‑185/02, EU:T:2004:189, paragraph 53 et seq.)). 61 See, by analogy, the case-law on the similarity of the goods or services at issue. In that regard, the Court has held that, for Article 8(1)(b) of Regulation No 207/2009 to apply, evidence of some similarity between the goods or services in question must be adduced. To that end, account must be taken of the factors ‘relating to those goods or services themselves’ including ‘their nature, their end users and their method of use and whether they are in competition with each other or are complementary’. Once the existence of some similarity between the goods or services at issue has been established, all of the factors must be examined in order to determine whether that similarity is sufficient to give rise to the likelihood of confusion, as part of the global assessment of that likelihood. See, inter alia, judgments of 29 September 1998, Canon (C‑39/97, EU:C:1998:442, paragraphs 22 to 24), and of 7 May 2009, Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM (C‑398/07 P, not published, EU:C:2009:288, paragraphs 34 and 35). 62 Here again, an analogy can be drawn with the similarity of the goods or services in question. The relevant factors for the purposes of establishing that similarity must be assessed according to consumer perception. The goods or services are similar where consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking or economically linked undertakings. See, inter alia, judgment of 15 February 2011, YORMA’S (T‑213/09, not published, EU:T:2011:37, paragraph 36). 63 See judgments of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528, paragraph 23); in Lloyd Schuhfabrik Meyer (paragraph 26); and of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraph 19). 64 See, to that effect, judgment of 26 July 2017, Continental Reifen Deutschland v Compagnie générale des établissements Michelin (C‑84/16 P, not published, EU:C:2017:596, paragraph 70), and order of 22 October 2014, Repsol YPF v OHIM (C‑466/13 P, not published, EU:C:2014:2331, paragraphs 48 to 51). Such a balance essentially involves a factual assessment which is not a matter for the Court to review in appeal proceedings. The General Court therefore has some discretion as to the assessment of the degree of visual, aural and conceptual similarity between the signs at issue. 65 See point 27 of this Opinion. 66 See the case-law mentioned in footnote 32 of this Opinion. 67 See judgment of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 47). 68 See Davis, R., St Quintin, T. & Tritton, G., Tritton on Intellectual Property in Europe, Sweet and Maxwell, London, 5th edition, 2018, p. 378. 69 See points 23 and27 of this Opinion. 70 See Davis, R., St Quintin, T. & Tritton, G., cited above, pp. 365-366. The prospective nature of the global assessment of the likelihood of confusion means that account must be taken, in the context of that assessment, of the circumstances in which the goods or services in question are usually marketed, that is, those which it is usual to expect for that category of goods or services, and not the particular circumstances in which the goods covered by the earlier trade mark are marketed, which may vary over time and depend on the wishes of the proprietor of that trade mark. See judgments of 15 March 2007, T.I.M.E. ART v OHIM (C‑171/06 P, not published, EU:C:2007:171, paragraph 59), and of 12 January 2006, QUANTUM (T‑147/03, EU:T:2006:10, paragraphs 103 to 107). 71 See point 39 of this Opinion. 72 See point 23 of this Opinion. 73 That interpretation is supported by the Opinion of Advocate General Jacobs in Lloyd Schuhfabrik Meyer (C‑342/97, EU:C:1998:522, point 18: ‘The likelihood of confusion must be assessed globally in the light of all relevant factors. … it may therefore be relevant, depending on the circumstances, to consider not only the degree of aural similarity of the mark and the sign but also the degree (or absence) of visual and conceptual similarity. In the absence of visual or conceptual similarity it would be necessary to consider whether, having regard to all the circumstances including the nature of the goods and the conditions in which they were marketed, the degree of any aural similarity would of itself be likely to give rise to confusion’). 74 See judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraph 27); of 23 March 2006, Mülhens v OHIM (C‑206/04 P, EU:C:2006:194, paragraph 50); of 15 March 2007, T.I.M.E. ART v OHIM (C‑171/06 P, not published, EU:C:2007:171, paragraph 49); of 14 October 2003, BASS (T‑292/01, EU:T:2003:264, paragraph 54); and of 12 January 2006, QUANTUM (T‑147/03, EU:T:2006:10, paragraphs 98 and 100). This explains, in my view, that that ‘theory’ does not apply where the visual and aural similarities between the signs are very strong, and therefore the conceptual difference between the signs is liable to escape the attention of the relevant public. See order of 27 October 2010, REWE-Zentral v OHIM (C‑22/10 P, not published, EU:C:2010:640, paragraphs 46 and 47). 75 For example, if the earlier trade mark is highly distinctive and the degree of attention of the public is particularly low, even visual and aural similarities that are ‘counteracted’ by a marked conceptual difference may be sufficient to give rise to a likelihood of confusion. 76 See, to that effect, judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25, paragraphs 23 to 25), and Jaeger‑Lenz, A., ‘Relative grounds for refusal’, in Hasselblatt, G.N. (ed.), European Union Trade Mark Regulation — Article-by-Article Commentary, Beck, Hart, Nomos, 2nd edition, 2018, p. 246. In any event, I would point out that, in order for the counteraction theory to apply, the General Court must find that at least one of the signs at issue has, in the mind of the relevant public, a clear and specific meaning (see point 56 of this Opinion). And although this point has not been raised by EUIPO in its appeal, I note that, in the judgment under appeal, the Court did not verify compliance with that condition. 77 See judgments of 29 September 1998, Canon (C‑39/97, EU:C:1998:442, paragraphs 27 and 28), and of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 35), and Davis, R., St Quintin, T. & Tritton, G., cited above, pp. 362 and 365. See also Folliard‑Monguiral, A., ‘TPICE, affaire Quantum: le faible caractère distinctif peut-il jouer contre le risque de confusion ?’, Propriété industrielle, No 4, April 2006, comm. 30, according to which the likelihood of confusion is ‘a fantasy with a human face aimed at protecting the competitive interests of an economic operator’. 78 Admittedly, it is unlikely, for example, that the conceptual similarity between the signs alone leads, in practice, to a likelihood of confusion (see Opinion of Advocate General Jacobs in SABEL (C‑251/95, EU:C:1997:221, points 61 and 62)). However, an opponent must not, in my view, be deprived of the opportunity to demonstrate this. 79 See Humblot, B., ‘Droit des marques: de l’influence ou non du risque de confusion sur la similitude et vice-versa — Motifs relatifs de refus: regard sur un arrêt éclairant de la CJUE (Ferrero c/ OHMI, 24 mars 2011)’, Lamy, Droit de l’immatériel, No 72, June 2011, pp. 85-90. 80 See, for a recent reminder of that evidence, judgment of 27 June 2019, Luciano Sandrone v EUIPO — J. García Carrión (Luciano Sandrone) (T‑268/18, EU:T:2019:452, paragraph 96). 81 See, to that effect, 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 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 42). 82 Moreover, at the stage of comparing the signs at issue, their distinctive and dominant elements must be determined. In that connection, an element which is descriptive of the goods or services in question is less able to attract the attention of consumers and must therefore have less weight in the overall impression of the signs. It follows that, for example, visual similarities in respect of that descriptive element should not bring about a finding that the signs are visually similar, or at most, the finding of a low degree of similarity. See, to that effect, judgments of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 53); of 5 April 2006, Saiwa v OHIM — Barilla Alimentare (SELEZIONE ORO Barilla) (T‑344/03, EU:T:2006:105, paragraphs 32 to 38); and of 13 May 2015, easyGroup IP Licensing v OHIM — Tui (easyAir-tours) (T‑608/13, not published, EU:T:2015:282, paragraphs 35 to 42). 83 See, inter alia, judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH) (T‑29/04, EU:T:2005:438, paragraph 29); of 22 March 2007, Terranus (T‑322/05, not published, EU:T:2007:94, paragraph 41); of 27 February 2014, QTA S. JOSÉ DE PERAMANCA (T‑602/11, not published, EU:T:2014:97, paragraph 61); and of 4 December 2014, BSH v OHIM — LG Electronics (compressor technology) (T‑595/13, not published, EU:T:2014:1023, paragraph 28). See also, highlighting a similar trend in the case-law of the Court, judgment of 8 November 2016, BSH v EUIPO (C‑43/15 P, EU:C:2016:837, paragraphs 63 and 64). 84 See, inter alia, Folliard-Monguiral, A., op. cit.; Monteiro, J., ‘Marque communautaire — La surprotection des marques faibles dans la jurisprudence communautaire’, Propriété industrielle, No 6, June 2009, essay 12; Passa, J., ‘Le risque de confusion déduit d’éléments dépourvus de caractère distinctif dans la jurisprudence européenne: l’angle mort du droit des marques’, Propriétés Intellectuelles, October 2017, No 65, pp. 32-40 ; and Kur, A. & Senftleben, M., European Trade Mark Law — A Commentary, Oxford University Press, United Kingdom, 2017, pp. 229-231. 85 See point 48 of this Opinion. 86 See point 72 of this Opinion. 87 That provision is reproduced in point 6 of this Opinion. 88 See judgments of 20 November 2014, Intra-Presse v OHIM (C‑581/13 P and C‑582/13 P, not published, EU:C:2014:2387, paragraphs 74 to 76), and of 10 December 2015, El Corte Inglés v OHIM (C‑603/14 P, EU:C:2015:807, paragraphs 47 and 48). 89 See judgments of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177, paragraph 53), and of 10 December 2015, El Corte Inglés v OHIM (C‑603/14 P, EU:C:2015:807, paragraph 39). In the judgment under appeal in the latter case, the General Court had, in its analysis with regard to Article 8(1)(b) of Regulation No 207/2009, found that there was a low degree of conceptual similarity between the signs at issue and then concluded, in essence, that, in the absence of any visual or aural similarity, those signs were ‘different overall’ (see judgment of 15 October 2014, The English Cut (T‑515/12, not published, EU:T:2014:882, paragraph 33)). However, the fact that the Court did not take action against that reasoning may be explained by the circumstance that the appellant had not disputed the way in which the General Court had applied that provision.