JUDGMENT OF THE GENERAL COURT (First Chamber)
7 March 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark RSTUDIO — Earlier EU word mark ER/STUDIO — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001))
In Case T‑230/17,
Rstudio, Inc., established in Boston, Massachusetts (United States), represented by M. Edenborough QC and G. Smith, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Embarcadero Technologies, Inc., established in San Francisco, California (United States),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 6 February 2017 (Case R 493/2016-5), relating to opposition proceedings between Embarcadero Technologies and Rstudio,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,
Registrar: I. Drăgan, Administrator,
having regard to the application lodged at the Court Registry on 18 April 2017,
having regard to the response lodged at the Court Registry on 3 July 2017,
further to the hearing on 9 January 2018,
gives the following
Judgment
Background to the dispute
1        On 7 May 2009, the applicant, Rstudio, Inc., filed with the European Union Intellectual Property Office (EUIPO) an application for protection within the European Union of international registration No 999644 of 31 March 2009, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The registration in respect of which protection was sought relates to the word sign RSTUDIO.
3        The goods in respect of which protection was sought are, inter alia, following the restriction made in the course of the proceedings before EUIPO, in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Computer software for statistical computing using the R computing language; computer software for development of software applications for statistical computing using the R computing language’.
4        The particulars of the international registration which are provided for in Article 152(1) of Regulation No 207/2009 (now Article 190(1) of Regulation 2017/1001) were published in Community Trade Marks Bulletin No 23/2009 of 22 June 2009.
5        On 18 March 2010, Embarcadero Technologies, Inc. filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the application for protection of the international registration in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier EU word mark ER/STUDIO, which was registered on 10 May 2000 under the number 1005875 and covers goods in Class 9 corresponding, after the restriction made during revocation proceedings, to the following description: ‘Database software and programmes; data modelling software and programmes; entity relationship modelling software for SQL databases’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 29 March 2014, the applicant made a request pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) for Embarcadero Technologies to furnish proof of genuine use of the earlier mark.
9        By decision of 21 January 2016, the Opposition Division upheld the opposition.
10      On 14 March 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11      By decision of 6 February 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First, after stating that the period during which genuine use of the earlier mark had to be demonstrated ran from 22 December 2004 to 21 December 2009 (‘the relevant period’), the Board of Appeal assessed the evidence of genuine use of the mark submitted by Embarcadero Technologies and found that such use had been proved in respect of the relevant period. Secondly, the Board of Appeal found, in essence, that the relevant public consisted of professionals, that the goods at issue were similar and that the degree of visual, phonetic and conceptual similarity between the signs at issue was considerably high. It concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant relies, in essence, on two pleas in law alleging, first, infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 10(3) of Delegated Regulation (EU) 2017/1430 supplementing Regulation No 207/2009 and repealing Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)), and, secondly, infringement of Article 8(1)(b) of Regulation No 207/2009.
The first plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95
15      In the context of its first plea, the applicant complains, in essence, that the Board of Appeal erred in finding that the earlier mark had been put to genuine use in respect of the goods in Class 9 corresponding to the description ‘Database software and programmes’, although, in the applicant’s view, genuine use of the earlier mark had been established only in connection with the goods in Class 9 which correspond to the description ‘Data modelling software and programmes’ and ‘Entity relationship modelling software for SQL databases’. The applicant claims that that incorrect conclusion arises from confusion on the part of the Board of Appeal between the provisions of Article 42(2) and (3) of Regulation No 207/2009, which concern proof of genuine use of an earlier mark in the context of opposition proceedings, and those of Article 51(1)(a) of that regulation (now Article 58(1)(a) of Regulation 2017/1001), which relate to the revocation of a mark which has not been put to genuine use.
16      It takes the view that the fact that genuine use of the earlier mark has been established in connection with ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ cannot, in the context of opposition proceedings, imply that it was also established in connection with ‘database software and programmes’, which, like ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’, are also in Class 9. In that regard, the applicant submits that the category ‘database software and programmes’, which includes ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’, is a broad generic category and that those two subcategories are capable of being viewed independently. Thus, according to the applicant, genuine use of the earlier mark should have been established in connection with ‘database software and programmes’, irrespective of the fact, which is, moreover, not disputed, that it has been established for ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’.
17      EUIPO disputes the applicant’s arguments.
18      The Court points out that, by its first plea, the applicant in actual fact seeks to challenge the statement, contained, in essence, in paragraphs 49 to 51 of the contested decision, that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ do not constitute significant subcategories within the category of ‘database software and programmes’, with the result that proof of genuine use of the earlier mark in connection with ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ necessarily covers the broader category of ‘database software and programmes’ for the purposes of the opposition.
19      According to settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation (now recital 24 of Regulation 2017/1001), and from Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedl & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
20      It follows from Article 42(2) and (3) of Regulation No 207/2009 that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).
21      Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46, and of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24).
22      It must therefore be examined whether the ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ constitute coherent subcategories which are capable of being viewed independently of ‘database software and programmes’ or whether those goods are part of a single group of goods designated by the definition ‘database software and programmes’, the division of which into subcategories would be arbitrary.
23      If it were established that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ constituted such coherent subcategories which are capable of being viewed independently of ‘database software and programmes’, it would follow that the evidence of use with regard to ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ could not, in any event, prove genuine use in connection with ‘database software and programmes’ as a whole. By contrast, if it were established that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ did not constitute such coherent subcategories which are capable of being viewed independently of ‘database software and programmes’, the opponent could not be required, pursuant to the case-law cited in paragraph 21 above, to furnish proof that the earlier mark has been used in connection with all the other conceivable variations of the goods belonging to the category of ‘database software and programmes’, since it would in practice be impossible for it to furnish such proof.
24      As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose or intended use of the goods or services in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, that criterion is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29, and of 16 May 2013, Aleris v OHIM — Carefusion 303 (ALARIS), T‑353/12, not published, EU:T:2013:257, paragraph 22). By contrast, the nature of the goods at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods (see, to that effect, judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 31, and of 16 May 2013, ALARIS, T‑353/12, not published, EU:T:2013:257, paragraph 23).
25      In the present case, it must be stated that the applicant neither claims nor shows that there are fundamental differences between the various types of ‘database software and programmes’ which would have the result that, from the point of view of the end consumers, the ‘data modelling software and programmes’, on the one hand, and the ‘entity relationship modelling software for SQL databases’, on the other hand, would not be interchangeable with other types of ‘database software and programmes’.
26      In that regard, it must be borne in mind that it is apparent from the case-law cited in paragraph 24 above that the decisive criterion for defining subcategories of goods or services is the purpose and intended use of the goods at issue and that the nature and characteristics of those goods are irrelevant. It follows that, even if the nature or characteristics of various types of goods are so different that, from the point of view of the end consumer, they are not interchangeable, the fact remains that, to constitute a separate subcategory of goods for the purposes of the case-law cited in paragraphs 20 and 21 above, it is necessary for their purpose or intended use to be different. However, the applicant does not put forward any evidence which makes it possible to state that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ are not interchangeable with other types of ‘database software and programmes’. Consequently, it cannot be held that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ constitute separate subcategories of goods in relation to ‘database software and programmes’.
27      It follows that the applicant has not managed to call into question the Board of Appeal’s analysis that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ do not, in relation to ‘database software and programmes’, constitute coherent subcategories which are capable of being viewed independently within the meaning of the case-law cited in paragraphs 20 and 21 above.
28      As the three designations of goods in Class 9 overlap, the Board of Appeal did not fail to comply with the criterion of the purpose or intended use, which is of fundamental importance in the definition of a subcategory, in finding that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ could fall within the broader category of ‘database software and programmes’ in Class 9 covered by the earlier mark.
29      Accordingly, as has been stated in paragraph 23 above, it follows from the case-law cited in paragraphs 20 and 21 above that any proof of genuine use in connection with a type of goods belonging to the category of ‘database software and programmes’, although that type of goods does not constitute a coherent subcategory which is capable of being viewed independently, necessarily covers the whole category of ‘database software and programmes’. The proprietor of a trade mark cannot be required to furnish proof that that mark has been used in connection with all the conceivable variations of the goods belonging to the category of ‘database software and programmes’. Since it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods belonging to the category of goods in question, the Board of Appeal was, in the present case, entitled to conclude that proof of genuine use of the earlier mark in connection with ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ necessarily afforded proof of genuine use in connection with the broader category of ‘database software and programmes’ for the purposes of the opposition.
30      That finding cannot be called into question by the applicant’s argument relating to the alleged confusion on the part of the Board of Appeal between the provisions of Article 42(2) and (3) of Regulation No 207/2009, which concern proof of genuine use of an earlier mark in the context of opposition proceedings, and those of Article 51(1)(a) of that regulation (now Article 58(1)(a) of Regulation 2017/1001), which relate to the revocation of a mark which has not been put to genuine use. It is sufficient, for the purposes of rejecting that argument, to point out that the concept of genuine use is an autonomous concept of EU law which means only that a trade mark is to be used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Consequently, the assessment as to whether the use of a trade mark is genuine cannot differ depending on whether what is involved concerns the application of the provisions of Article 42(2) and (3) of Regulation No 207/2009 or those of Article 51(1)(a) of that regulation, with the result that the applicant’s argument must be rejected.
31      Furthermore, it must be pointed out that the applicant expressly acknowledges that the earlier mark has been put to genuine use in connection with ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’. Consequently, and since it has been held that ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ are capable of falling within the broader category of ‘database software and programmes’, the applicant is not justified in disputing the finding that genuine use of the earlier mark has also been proved in connection with ‘database software and programmes’.
32      It follows that the first plea must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
33      The applicant maintains, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion, in that, first, the goods covered by the marks at issue are different or similar only to a very low degree and, secondly, the degree of similarity between the signs at issue is low.
34      EUIPO disputes the applicant’s arguments.
35      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for 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.
36      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
37      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).
The relevant public
38      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
39      In the present case, in the light of the nature of the goods concerned and the fact that the earlier mark relied on in support of the opposition is an EU trade mark, it is necessary to uphold the Board of Appeal’s finding in paragraph 64 of the contested decision that, in essence, the likelihood of confusion must be analysed from the point of view of IT professionals in the European Union, whose level of attention is high.
The comparison of the goods
40      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
41      The applicant complains, in essence, that the Board of Appeal assessed whether the goods at issue were similar by taking the view that the goods covered by the earlier mark corresponded to the description ‘Database software and programmes’, although that description is, in the applicant’s view, incorrect, in that the goods covered by the earlier mark correspond to the description ‘Data modelling software and programmes’ and ‘Entity relationship modelling software for SQL databases’. Consequently, according to the applicant, the Board of Appeal should have assessed whether the goods at issue were similar by comparing the ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ covered by the earlier mark with the ‘computer software for statistical computing using the R computing language’ and ‘computer software for development of software applications for statistical computing using the R computing language’ covered by the mark applied for.
42      Furthermore, the applicant argues that the goods at issue have different essential characteristics and purposes, with the result that they are, if not dissimilar, at most similar to a very low degree.
43      In the present case, the Board of Appeal found that the goods covered by the earlier mark and those covered by the contested mark were of the same nature and had the same method of use and a complementary purpose, with the result that those goods could be considered to be similar.
44      It should be noted at the outset that, in the context of the assessment of whether there is a likelihood of confusion, the list of goods and services covered by the earlier registration has to be compared with the list of goods and services covered by the trade mark application (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 31 and the case-law cited). The applicant’s argument alleging that the ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ were not taken into consideration is thus irrelevant, since the Board of Appeal took the ‘database software and programmes’, which are on the list of goods covered by the earlier mark, into consideration for the purposes of the comparison of the goods at issue.
45      Consequently, the Court agrees with the Board of Appeal’s observation that the earlier mark covers ‘database software and programmes’ in Class 9, with the result that the Board of Appeal cannot be criticised for not having compared the ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’, which are also included in the list of goods covered by the earlier registration, with the goods covered by the application for registration. For it to be held that the goods at issue are similar, it is sufficient if the goods covered by the application for registration and some of the goods covered by the earlier mark are similar.
46      In the first place, it must be stated that the goods at issue, namely ‘database software and programmes’, on the one hand, and ‘computer software for statistical computing using the R computing language’ and ‘computer software for development of software applications for statistical computing using the R computing language’, on the other hand, are in Class 9 and are mainly recorded computer programs, regardless of their recording media or means of dissemination. It must therefore be held that the goods at issue are of the same nature.
47      In the second place, the goods at issue may be held to have at least one intended purpose in common, namely the satisfaction of the needs of their users with regard to statistical analysis and the use of data, irrespective of the computing language used. In that regard, it must also be pointed out that the applicant itself admits, in the application, that the goods at issue have some functionality in common.
48      In the third place, it must be borne in mind that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 12 November 2008, Weiler v OHIM — IQNet Association — The International Certification Network (Q2WEB), T‑242/07, not published, EU:T:2008:488, paragraph 23 and the case-law cited).
49      In that regard, it must be pointed out that the ‘computer software for statistical computing using the R computing language’ and ‘computer software for development of software applications for statistical computing using the R computing language’ covered by the mark applied for expressly designate a computer programming language used for data processing and statistical analysis. However, data processing and statistical analysis are generally the result of the extraction of data from a set grouped together in a database. Consequently, the Board of Appeal did not err in observing, in essence, that, data is not incidental, but essential to data processing and statistical analysis, with the result that software which interrogates data so as to establish statistical relationships, irrespective of the language which it uses, and database software are complementary.
50      Accordingly, it must be held that the Board of Appeal did not err in finding that the goods in Class 9 covered by the trade mark application and the goods in that class protected by the earlier mark were similar.
51      It follows from all of the foregoing that the contested decision must be upheld as regards the analysis of the similarity of the goods at issue.
The comparison of the signs
52      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
53      Furthermore, it must be borne in mind that, according to settled case-law, 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 relevant aspects (see judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑565/15, not published, EU:T:2016:518, paragraph 23 and the case-law cited).
–       The distinctiveness of the word element ‘studio’
54      The applicant submits that the word element ‘studio’, which is common to the marks at issue, is weakly distinctive with regard to the goods in Class 9, since its use on the market for those types of goods is common.
55      First, it must be pointed out that the mere existence on the market of items of software with the element ‘studio’ in their names that are marketed by third parties, without any reference to their registration in the EU trade marks register or their actual use on the market, does not, on its own, make it possible to deduce that that word element is, for the relevant public, weakly distinctive as regards the goods at issue.
56      Secondly, it must be pointed out that even if the element ‘studio’ were commonly used in connection with goods in Class 9, it has no immediate meaning for the relevant public as regards the goods at issue. It therefore has an average degree of distinctiveness. In any event, it must be borne in mind that, even if an element of a mark is weakly distinctive, that does not necessarily mean that it will not be taken into consideration by the relevant public.
–       The visual similarity
57      The Board of Appeal found, in paragraph 67 of the contested decision, that there was some degree of visual similarity between the signs at issue on account of the presence in both of them of the sequence of letters ‘r’, ‘s’, ‘t’, ‘u’, ‘d’, ‘i’ and ‘o’.
58      The applicant submits, in essence, that the signs at issue are visually different because of a difference in structure. According to the applicant, the earlier mark consists of two distinct parts, ‘er’ and ‘studio’, whereas the mark applied for consists solely of the word element ‘rstudio’.
59      First, it must be stated that the signs at issue each contain the word element ‘studio’. Furthermore, it must be pointed out that, notwithstanding the presence of an oblique between the letters ‘r’ and ‘s’ in the earlier mark, the signs at issue have the sequence of letters ‘r’, ‘s’, ‘t’, ‘u’, ‘d’, ‘i’ and ‘o’ in common.
60      Secondly, it must, however, be noted that the signs at issue can be distinguished by their length. Whereas the earlier mark consists of two elements, ‘er’ and ‘studio’, which are separated by an oblique and comprise eight letters, the mark applied for consists solely of the element ‘rstudio’, which comprises seven letters.
61      Thirdly, it must be stated that the element ‘studio’ in the mark applied for, to which the letter ‘r’ has been added, is an independent element. The element ‘studio’ in the mark applied for may still be easily identified and perceived by the relevant public. The same is true of the element ‘studio’ in the earlier mark, which may easily be identified on account of the presence of an oblique between it and the element ‘er’, which precedes it.
62      Consequently, it must be held that the differences between the signs at issue are not such as to call into question their partial visual identity.
63      In those circumstances, the Board of Appeal was right in finding that the signs at issue were visually similar.
–       The phonetic similarity
64      The Board of Appeal found, in paragraph 68 of the contested decision, that there was some degree of phonetic similarity between the signs at issue on account of the presence of the sequence of letters ‘r’, ‘s’, ‘t’, ‘u’, ‘d’, ‘i’ and ‘o’. Moreover, the Board of Appeal added that, in some languages, the signs at issue were identical because the group of letters ‘er’ and the letter ‘r’ would be pronounced in the same way.
65      The applicant disputes the Board of Appeal’s assessment and claims, in essence, that there are significant phonetic differences between the signs at issue because of the juxtaposition, in the mark applied for, of the letter ‘r’ with the word ‘studio’.
66      First, it must be stated that the signs at issue have in common the sequence of letters ‘r’, ‘s’, ‘t’, ‘u’, ‘d’, ‘i’ and ‘o’, which will be pronounced in the same way by the relevant public, as three syllables.
67      Secondly, it must be noted that the presence, in the earlier mark, of an oblique, will lead the relevant public to pronounce the elements ‘er’ and ‘studio’ separately. As regards in particular the element ‘er’, it follows from the structure of the earlier mark that the majority of the relevant public might pronounce that element as two separate letters of the alphabet and not as a single syllable consisting of those two letters ‘e’ and ‘r’. That is borne out by the applicant’s statement that those two letters correspond to the English expression ‘entity relationship’, which the relevant public, consisting of IT professionals, is capable of identifying relatively easily.
68      However, it must be pointed out that, even if the element ‘er’ were pronounced as one syllable, its pronunciation in various languages of the European Union, such as Finnish or Hungarian, will be identical to that of the letter ‘r’.
69      Thirdly, it must be observed that, in the mark applied for, the juxtaposition of the letter ‘r’ with the word ‘studio’ will lead the relevant public to separate the consonants ‘r’ and ‘s’, with the result that the mark applied for will be pronounced by the majority of that public as the letter ‘r’ on its own, followed by the three syllables of the element ‘studio’. In many languages of the European Union, it is difficult to pronounce the element ‘rstudio’ as a single word.
70      Furthermore, even if the element ‘er’ in the earlier mark were, as the applicant maintains, pronounced as two distinct letters of the alphabet, and not as a single syllable, that difference in the number of letters to be pronounced in addition to the three syllables of the element ‘studio’ is not capable of calling into question the partial phonetic identity of the signs at issue.
71      In those circumstances, the Board of Appeal was right in finding that the signs at issue were phonetically similar.
–       The conceptual similarity
72      The Board of Appeal found, in paragraph 69 of the contested decision, that the signs at issue were conceptually similar inasmuch as the element ‘studio’ would be noticed by the relevant public as it was an element which was known to it. Furthermore, the Board of Appeal pointed out, first, that the relevant public would understand the letter ‘r’ in the mark applied for as referring to a computer programming language which is used for data processing and statistical analysis and, secondly, that the element ‘er’ (which corresponds to the English expression ‘entity relationship’) in the earlier mark would refer that public to the concept of ‘entity relationship’, for the purposes of data science.
73      The applicant disputes the Board of Appeal’s assessment and submits that the relevant public will attach greater importance to the elements at the beginning of the signs, with the result that it will perceive the letter ‘r’ in the mark applied for as referring to a computing language and will understand the element ‘er’ in the earlier mark as referring to the different concept of ‘entity relationship’.
74      To begin with, it is necessary to reject the applicant’s argument based on the premiss that the element ‘studio’ will attract the relevant public’s attention less, since it has been held, in paragraph 56 above, that that element is not weakly distinctive.
75      First, it must be pointed out that the signs at issue include the element ‘studio’, which admittedly has a meaning for the relevant public but, as has been pointed out in paragraph 56 above, does not have an immediate association with the goods at issue. In that regard, it must be noted that the word ‘studio’ exists in, inter alia, English, French, Italian and Dutch and has the same meanings in those languages.
76      Secondly, it must be observed that both the applicant and the Board of Appeal in the contested decision maintain that the relevant public will perceive the letter ‘r’ in the mark applied for as referring to a computing language and will understand the element ‘er’ in the earlier mark as referring to the concept of ‘entity relationship’.
77      Consequently, it must be held that the signs at issue are capable of evoking for the relevant public computing programmes intended for statistical analysis and the use of data, irrespective of the computing language used by each of those items of software.
78      In those circumstances, the Board of Appeal was right in finding that the signs at issue were conceptually similar.
79      It is apparent from all of the foregoing that the Board of Appeal did not err in finding that the signs at issue were similar overall.
The likelihood of confusion
80      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
81      The Board of Appeal, in paragraph 78 of the contested decision, endorsed the Opposition Division’s analysis that, in the light of the similarity of the signs at issue and the similarity of the goods at issue, there was a likelihood of confusion.
82      The applicant submits that, in the light of the high level of attention of the relevant public, the fact that the goods at issue have different essential characteristics and that their intended purposes are different should preclude any likelihood of confusion.
83      In the present case, it is apparent from the examination carried out in paragraphs 38 to 79 above that, in view of the similarity of the goods concerned, the similarity of the signs at issue for the relevant public and the level of attention of that public, there is a risk that that public may believe that the goods in question come from the same undertaking or from economically-linked undertakings.
84      Consequently, the Board of Appeal did not err in finding, in the context of a global assessment, that, in the light of the similarity of the signs at issue and the similarity of the goods at issue, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
85      That finding cannot be called into question by the applicant’s argument which can be understood as seeking to claim that the peaceful coexistence on the market of the earlier mark with other marks that use the word element ‘studio’ is capable of reducing, or even ruling out, any likelihood of confusion in the present case. In that regard, it must be pointed out that such a possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public, and provided that the marks which have been coexisting are identical to the marks at issue (see, to that effect, judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (skype), T‑423/12, not published, EU:T:2015:260, paragraph 66 and the case-law cited). However, it is clear that the applicant did not prove that the peaceful coexistence on which it relies is based on the absence of a likelihood of confusion between the earlier marks it invokes and the earlier mark.
86      It follows from all of the foregoing that the second plea put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
87      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.
88      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Rstudio, Inc. to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 7 March 2018.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.