JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
6 October 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark UGO — Earlier EU figurative mark il UGO ! — Partial surrender of the earlier mark — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑176/16,
Kofola ČeskoSlovensko a.s., established in Ostrava (Czech Republic), represented by L. Lorenc, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Mionetto SpA, established in Valdobbiadene (Italy),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 February 2016 (Case R 2707/2014-4), relating to opposition proceedings between Mionetto and Kofola ČeskoSlovensko,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 April 2016,
having regard to the response of EUIPO lodged at the Court Registry on 5 July 2016,
having regard to the letter of the applicant lodged at the Court Registry on 18 August 2016, by which it submitted inter alia an offer of further evidence, and EUIPO’s responses to that letter lodged at the Court Registry on 13 and 26 September 2016,
having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 7 November 2016 and 5 January 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 4 February 2013, the applicant, Kofola ČeskoSlovensko a.s., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Class 32 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Non-alcoholic beverages; waters including carbonated, still and flavoured waters; fruit drinks, fruit juices; cocktails, fruit predominating’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin of 29 May 2013.
5        On 26 August 2013, the opponent, Mionetto SpA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier EU figurative mark filed on 22 March 2011 and registered on 8 September 2011 under number 9831331, for ‘Non-alcoholic beverages, aperitifs, non-alcoholic, cocktails, non-alcoholic, fruit juices, non-alcoholic fruit juice beverages, non-alcoholic vegetable juices (beverages); other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ in Class 32 and ‘Alcoholic beverages (except beers), in particular wine, still wine, sparkling wines, sparkling wines, flavoured drinks containing wine, flavoured cocktails containing wine, alcoholic aperitifs, alcoholic cocktails, spirits’ in Class 33, reproduced below:
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 25 August 2014, the Opposition Division upheld the opposition for all the goods at issue in Class 32.
9        On 23 October 2014, 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.
10      By decision of 22 February 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, first of all, it found that, as regards the comparison of goods, the goods covered by both signs at issue were identical. Next, as regards the comparison of the signs, the Board of Appeal also considered that the overall degree of visual similarity between the signs was very low, their pronunciation was identical given the common word ‘ugo’ and it was impossible to carry out a conceptual comparison of the signs at issue. Finally, as regards the global assessment of the likelihood of confusion, the Board of Appeal concluded that, despite a low degree of visual similarity, there was a likelihood of confusion between the signs at issue, given their phonetic identity, the identity of the goods and the average distinctive character of the earlier trade mark.
Procedure before the Court and forms of order sought by the parties
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
13      By letter lodged at the Court Registry on 18 August 2016, the applicant informed the Court that, on 5 July 2016, the opponent had partially surrendered the earlier mark, that is for all the goods in Class 32. Accordingly, the applicant is of the view that the opposition, which was based precisely on that mark covering those goods, is devoid of purpose and the contested decision must be amended so as to close the opposition proceedings and order the opponent to pay the costs of those proceedings and of the appeal proceedings before EUIPO.
14      By letters of 13 and 26 September 2016, EUIPO asked the Court to reject the applicant’s claims. EUIPO considers that the surrender of the earlier mark cannot be taken into account for the purposes of assessing the validity of the contested decision. The action brought in the present case did indeed relate to an earlier mark which produced effects at the time that decision was adopted.
15      By letter of 28 October 2016, the Court asked EUIPO, first, to explain, with supporting evidence, the current state of play of the invalidity proceedings introduced by the applicant on 27 May 2016 concerning the earlier mark and, second, to submit the information available to it on the opponent’s position concerning its opposition to the mark applied for.
16      By letter sent the same day, the Court asked the applicant to submit its observations on EUIPO’s statement, in its letter of 13 September 2016, that it has withdrawn its application for a declaration of invalidity for goods in Class 32.
17      The parties replied to the Court’s questions within the prescribed period.
18      By letter of 7 November 2016, EUIPO confirms, with evidence in support, that the invalidity proceedings introduced by the applicant on 27 May 2016 were closed by the notificationsof 5 August 2016 sent to the applicant and to the opponent. EUIPO states that it does not have any information on the opponent’s position concerning its opposition to the mark applied for. Moreover, it states that it did not receive an application for withdrawal of the opposition to the registration of the mark applied for.
19      By letter of 9 November 2016, the applicant argues that the main aim of the invalidity proceedings it introduced on 27 May 2016 was to seek that the earlier mark no longer covers goods in Class 32, so that it could register the mark applied for. It states that, since the opponent had agreed to partially surrender the earlier mark in so far as it covered all the goods in Class 32, it did not object to the closure of the invalidity proceedings without a decision on the substance. The applicant maintains that how the earlier mark ceased to cover the goods in Class 32 is irrelevant.
20      By letter of 23 December 2016, the Court asked the applicant to submit its observations on whether it maintained an interest in pursuing the proceedings before the Court, given the exchanges between the parties on the applicant’s letter of 18 August 2016 and, more specifically, EUIPO’s observations in its letter of 13 September 2016.
21      The applicant, by its letter of 5 January 2017, complied with the Court’s request within the time limit prescribed. In its letter, it confirms its interest in pursuing the proceedings before the Court in order to obtain the annulment of the contested decision and, consequently, the registration of its mark for the goods included in Class 32.
Law
Form of order seeking to amend the contested decision owing to the partial surrender of the earlier mark for the goods in Class 32
22      It must be recalled that the applicant asked the Court to find that the opposition was devoid of purpose and amend the contested decision in order to close the opposition proceedings, and order the opponent to pay the costs of the those proceedings and the appeal proceedings before EUIPO. It based its application on the fact that, on 5 July 2016, the opponent partially surrendered the earlier mark in so far as it covered all the goods in Class 32, which are at issue in the present action.
23      It must be noted that that partial surrender occurred during the invalidity proceedings initiated by the applicant on 27 May 2016 pursuant to Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) and it was entered in the Register of EU trade marks on 19 September 2016 for all the goods in Class 32, namely after the adoption of the contested decision. The invalidity proceedings initiated by the applicant having become devoid of purpose, EUIPO, after hearing the parties, ended those proceedings of its own motion without taking a decision on the substance.
24      In that regard, it should be noted that the review carried out by the Court under Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001) is a review of the legality of the decisions of the Boards of Appeal of EUIPO and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 65(2) of that regulation (now Article 72(2) of Regulation 2017/1001). It follows that the Court’s power to alter decisions does not confer on it the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take(see, by analogy, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 71 and 72).
25      As mentioned by EUIPO, the surrender, in accordance with the provisions of Article 50(2) of Regulation No 207/2009 (now Article 57(2) of Regulation 2017/1001), only takes effect after it has been entered on the Register. By contrast, until that date, the EU mark benefits in full from all the effects arising from that protection, as laid down in Section 1 of Title VI of that regulation (see, by analogy, judgment of 8 October 2014, Fuchs v OHIM — Les Complices (Star within a circle), T‑342/12, EU:T:2014:858, paragraph 24).
26      In the present case, the surrender of the earlier mark for the goods in Class 32, having only occurred after the contested decision, it must be held that, at the date of adoption of the contested decision, the earlier mark did indeed benefit in full from all the effects laid down by the provisions of Section 1 of Title VI of Regulation No 207/2009 (now Section 1 of Title VI of Regulation 2017/1001).
27      It is necessary to distinguish a case in which opposition is withdrawn, which arises on the initiative of the opponent, and which allows the removal of all obstacles to registration of the mark applied for, from one where the mark is surrendered, the effects of which are restricted by Article 50(2) of Regulation No 207/2009 (see, by analogy, judgment of 8 October 2014, Star within a circle, T‑342/12, EU:T:2014:858, paragraph 27).
28      Accordingly, the applicant’s head of claim, in that it seeks a declaration that the opposition is devoid of purpose because of the aforementioned surrender, asks the Court to carry out an assessment on which the Board of Appeal has not taken a view. Consequently, that measure is not one of the measures which may be taken by the Court in the exercise of its power to alter decisions, in accordance with Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001).
29      Furthermore, that finding cannot be called into question by the applicant’s argument that the way in which the surrender of the mark for the goods in Class 32 occurred is irrelevant.
30      In the light of the finding in paragraph 27 above, the applicant’s form of order seeking the closure of the opposition proceedings and the payment of the costs of the opposition proceedings and the appeal proceedings before EUIPO by the opponent must be rejected.
Substance
31      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
32      The applicant claims (i) that there is no identity between the goods covered by the two signs at issue, (ii) the earlier mark’s word element ‘ugo’ lacks distinctive character and dominant character, and (iii) there is a lack of visual, phonetic and conceptual similarity between the signs at issue and, consequently, no likelihood of confusion between those signs.
33      EUIPO disputes the applicant’s arguments.
34      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, an 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.
35      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that 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).
36      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (see judgment of 20 January 2010, Nokia v OHIM — Medion (LIFE BLOG), T‑460/07, EU:T:2010:18, paragraph 59 and the case-law cited). However, 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 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 48, and of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 25).
37      The Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined in the light of the foregoing considerations.
38      First of all, the Court must confirm the Board of Appeal’s findings in paragraph 11 of the contested decision, undisputed by the applicant, according to which the territory concerned for the purposes of the assessment of the likelihood of confusion is the European Union and the relevant public is composed of the average consumer in all the Member States.
39      Furthermore, the Board of Appeal was legitimately able to decide to focus its analysis on the German-speaking public, which is also not disputed. According to the case-law, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union.
Comparison of the goods
40      The applicant considers that the Board of Appeal erred when it concluded that the goods at issue were identical. The applicant claims that the goods at issue are not in competition. They have different purposes, are destined for different consumers and sold in different places, given that alcoholic beverages and non-alcoholic beverages cannot be mixed. Moreover, according to the applicant, those facts should have been taken into account at the time of the comparison of the goods at issue.
41      EUIPO disputes the applicant’s arguments.
42      In that regard, according to the case-law, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited). In order to assess the similarity of the goods at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed under those marks (judgment of 16 June 2010, Kureha v OHIM — Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, paragraph 71).
43      In the present case, the Board of Appeal found, in paragraphs 12 to 15 of the contested decision, that the goods covered by the two signs at issue were identical because the goods concerned were in the same class, namely Class 32 (‘Non-alcoholic beverages’). Moreover, in its opinion, the goods should be compared as they had been registered. Consequently, it rejected the applicant’s argument that the goods at issue are not identical, since the applicant uses its mark for fresh juices, whereas the earlier mark is used for alcoholic beverages.
44      Therefore, the Board of Appeal was right to consider that the goods covered by the two signs at issue were identical.
Comparison of the signs at issue
45      It is to be noted that 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 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).
46      It is apparent from the case-law that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark. In addition, the fact that an element is not negligible does not mean that it is dominant, and by the same token the fact that an element is not dominant in no way means that it is negligible (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
47      The two figurative signs at issue must be compared in the light of those findings.
–       Visual comparison of the signs at issue
48      The Board of Appeal considered, in essence, in paragraphs 20 to 22 of the contested decision, that the signs at issue were overall visually similar to a low degree because, despite having the same word element ‘ugo’ represented on both signs at issue in white capital letters, they differed in their additional graphic elements which, in its view, played a secondary role in the overall impression of the marks.
49      The Board of Appeal stated that the word element ‘ugo’ common to the signs at issue remained the dominant and most distinctive element of the marks. The fact that consumers may perceive a word element ‘il’ in the loop-shaped element of the earlier mark, although according to the Board of Appeal this is unlikely, does not make any difference. Since the figurative background of the mark applied for is basic, it does not attract the attention of consumers in the presence of a distinctive word element ‘ugo’. Moreover, the Board of Appeal stated that it does not share the applicant’s view that the word element ‘ugo’ describes an elderflower-based alcoholic beverage and is therefore descriptive.
50      The applicant disagrees with the Board of Appeal’s reasoning regarding the visual similarity of the signs at issue. It is of the view, in essence, that the signs at issue are definitely not similar because of their entirely different graphic stylisation and the lack of distinctive character of the common word element ‘ugo’ as regards alcoholic beverages.
51      The applicant considers that the Board of Appeal incorrectly assessed the distinctive character of the word element ‘ugo’ and the decorative character of the earlier mark’s figurative elements and that, consequently, the signs at issue are definitely not visually similar. In its opinion, the word element ‘ugo’ is a descriptive term for an alcoholic cocktail mixing alcohol and elderflower, originally named HUGO, sometimes also UGO or ŰGO. In order to demonstrate that descriptive character, the applicant refers to a printout of a commercial website, drafted in English with the price indicated in pounds sterling, as well as the presentation of the product ‘il UGO !’ on the opponent’s web page and the current use of the term ‘hugo’ on that product’s packaging.
52      In the light of the descriptive character of the element ‘ugo’, the applicant is of the view that the comparison of the signs at issue must be based principally on the other elements. It is above all the element ‘il’ that is dominant in the earlier mark and represents one of the opponent’s products ‘il’. Therefore, the Board of Appeal incorrectly assessed the other elements of the earlier mark by finding that those elements were merely decorative and played a secondary role in the overall impression.
53      EUIPO disputes the applicant’s arguments.
54      In that regard, it must be noted that the graphic representation of the signs at issue is different and it is necessary, to establish, first, whether there are elements likely to dominate the overall visual impression of those signs.
55      It must be stated that, as regards, in the first place, the graphic stylisation of the mark applied for UGO, as described by the Board of Appeal in paragraph 18 of the contested decision, the sign consists of the word ‘UGO’ in bold white upper case letters positioned in the centre of a black round element which is connected with a black rectangle below it, without a clear picture being identified. Moreover, the parties agree that the mark applied for has a sole word element ‘ugo’ and the figurative sign is simple, non-stylised.
56      Therefore, the Board of Appeal was entitled to find that the figurative background of the mark applied for would not attract the attention of consumers in the presence of a distinctive word element ‘ugo’ and that, consequently, the word element ‘ugo’, in the mark applied for, was the dominant and most distinctive element.
57      As regards, in the second place, the graphic stylisation of the earlier mark, the Board of Appeal considered, also in paragraph 18 of the contested decision, that it consisted of a grey rectangle and the word element ‘ugo’ in thin white upper case letters, followed by a black exclamation mark. In its opinion, that word element is overlapped by the image of a butterfly and preceded by a black element forming a loop.
58      It must be noted that the parties discussed the presence of the term ‘il’ in the earlier mark. In that regard, it is apparent from the notice of opposition submitted by the opponent to EUIPO on 22 March 2011 that the earlier mark il UGO ! consists of the word element ‘ugo’ preceded by the term ‘il’. Contrary to what the Board of Appeal stated, it must be noted that the word element ‘ugo’ is preceded by another word element, namely the term ‘il’. Nevertheless, it cannot be denied that, in the light of its very stylised representation in the earlier trade mark, that latter element is part of the graphic representation of that mark and is therefore likely to be perceived by the consumer as being more of a decorative element than a word element.
59      As regards the existence, in the earlier mark, of elements likely to dominate the overall impression, it must be considered that it is the element representing the group of very stylised letters ‘il’ which, because of its size and its positioning in that mark, catches the eye of the consumer at first glance.
60      It is also the word element ‘ugo’ which is likely to attract the consumer’s attention. It is true that its positioning is less prominent than that of the element representing the very stylised group of letters ‘il’ and it may not be immediately perceived by the consumer because of its concision, its script in a font which is not bold and the presence of the bigger element representing the very stylised group of letters ‘il’.
61      Nevertheless, despite these characteristics, the word element ‘ugo’ is the only clearly discernible and legible word element in the earlier mark. As such, it is likely to take on a greater importance than other aspects in the overall impression produced by this mark in the relevant public’s memory. Despite its size and its positioning in the earlier mark, the element representing the group of very stylised letters ‘il’, owing to its decorative character, as it has been pointed out in paragraph 58 above, does not convey any identifiable conceptual content for the goods protected by that mark and will not be pronounced. Thus, that element will not attract the attention of the relevant consumer and, in those conditions, it is irrelevant in the present case that the element ‘il’ is the umbrella mark and the basis of the range of goods ‘il’.
62      According to the case-law, consumers tend to omit elements if they are unsure of their meaning or if, in order to simply economise on words, those elements are easily separable when being pronounced (see, by analogy, judgments of 16 September 2009, Zero Industry v OHIM — zero Germany (zerorh+), T‑400/06, not published, EU:T:2009:331, paragraph 58, and of 11 January 2013, Kokomarina v OHIM — Euro Shoe Group (interdit de me gronder IDMG), T‑568/11, not published, EU:T:2013:5, paragraph 44). Even if the word element ‘ugo’ does not convey, either, any conceptual content, the fact remains that it may be read and pronounced and that it is, therefore, likely to be remembered by consumers (see, to that effect, judgment of 23 November 2011, Pukka Luggage v OHIM — Azpiroz Arruti (PUKKA), T‑483/10, not published, EU:T:2011:692, paragraph 47).
63      Consequently, in the specific circumstances of the present case, the word element ‘ugo’, common to both signs at issue, is the element likely, for the relevant public, to have a greater importance than other aspects. Thus, the Board of Appeal was right to hold, in paragraph 19 of the contested decision, that the word element ‘ugo’ was the only clearly discernible word element in the two signs at issue and remained the dominant element and the most distinctive of both signs and the earlier mark’s figurative elements played a secondary role in the overall impression given by the signs at issue.
64      It is important, second, to reply to the applicant’s argument that the element ‘ugo’ has a very limited distinctive character for beverages and the comparison of the signs at issue relates principally to their other elements.
65      It must be recalled that, in the present case, the goods covered by the mark applied for are included in Class 32 (‘Non-alcoholic beverages’) and that the opposition is based on, inter alia, that class of goods. On the other hand, all the applicant’s arguments concerning the descriptive character of the word element ‘ugo’ refer to the use of that element for alcoholic beverages and not for goods identical to the two signs at issue. Nevertheless, according to the case-law, there is a low degree of similarity between alcoholic and non-alcoholic beverages (see, to that effect, judgment of 21 September 2012, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (WESTERN GOLD), T‑278/10, EU:T:2012:459, paragraph 41). Consequently, as EUIPO rightly states, those arguments are irrelevant for the purpose of assessing the descriptive character of the word element ‘ugo’ for non-alcoholic beverages.
66      For the same reasons, the evidence adduced by the applicant, namely a printout of a commercial web page, drafted in English with the price indicated in pounds sterling, as well as a reference to the presentation of the product ‘il UGO !’ as ‘HUGO’ on the opponent’s web page and the actual use of the term ‘hugo’ on the wrapping of that product must be regarded as immaterial.
67      Furthermore, the applicant does not provide any evidence seeking to establish that the relevant public perceives the term ‘ugo’ used for non-alcoholic beverages as descriptive, when it cannot be assumed that that public knows that term (see, by analogy, judgments of 24 May 2011, Space Beach Club v OHIM — Flores Gómez (SpS space of sound), T‑144/10, not published, EU:T:2011:243, paragraph 63 and the case-law cited, and of 15 July 2015, Westermann Lernspielverlag v OHIM — Diset (bambinoLÜK), T‑333/13, not published, EU:T:2015:490, paragraph 55).
68      It follows that the Board of Appeal’s findings that the earlier mark’s distinctive character is average in the absence of a specific meaning for the goods at issue must be confirmed.
69      In the light of the conclusions drawn, in paragraph 63 and paragraph 68 above respectively, from the dominant character of the word element ‘ugo’ in both signs at issue and from the distinctive character of the earlier mark, it must be held that the Board of Appeal did not err in considering that, because of different graphic stylisation of the marks, the signs at issue had, visually, a low degree of similarity.
–       Phonetic comparison of the signs at issue
70      The Board of Appeal held, in paragraph 21 of the contested decision, that the signs at issue were pronounced in an identical way (‘ugo’), at least for a relevant part of the public which will not perceive the earlier mark’s figurative element as the word ‘il’.
71      The applicant disputes this assessment. It is of the view that the element representing the group of very stylised letters ‘il’ has a dominant character in the earlier mark and, consequently, the signs at issue differ by the number and sequence of syllables, resulting accordingly in a different pronunciation. For that reason, the mark is pronounced ‘il ugo’, whereas the pronunciation of the mark applied for is simply ‘ugo’.
72      It has been held, in paragraph 58 above, that the element representing the very stylised group of letters ‘il’ is likely to be perceived by the consumer essentially as a decorative element. According to the case-law, figurative elements are left out of account during the phonetic comparison of the signs (judgment of 23 October 2002, Oberhauser v OHIM — Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 40). Accordingly, the Board of Appeal rightly held that the pronunciation of the two signs at issue coincided in the sound of the element ‘ugo’.
–       Conceptual comparison of the signs at issue
73      The Board of Appeal held, in paragraph 22 of the contested decision, that the signs at issue did not mean anything for the relevant public and that, consequently, it was not possible to carry out a conceptual comparison.
74      The applicant disputes this assessment. It considers that each of the signs under comparison has a distinctive meaning. In this respect, it claims that the word element ‘ugo’ represents a specific alcoholic beverage and describes goods covered by the earlier mark. Conversely, according to the applicant, the underlying concept is different in the case of the mark applied for in which the word element ‘ugo’, as is apparent from the applicant’s Czech language web page, is a name of a character.
75      As regards the word element ‘ugo’ in the earlier mark, it has been held, in paragraph 67 above, that the applicant has not provided any evidence seeking to establish the specific concept of the word element ‘ugo’ for non-alcoholic beverages.
76      As for the underlying concept of the mark applied for, it must be noted that the applicant has not submitted any evidence to establish that the relevant German public or another public of the European Union perceives that concept as a character’s name. In that regard, EUIPO was correct to claim that the alleged meaning relied upon by the applicant is not a matter of common knowledge likely to be known by everyone and not needing to be demonstrated.
77      Therefore, it must be held that the Board of Appeal was correct in finding that the signs at issue did not mean anything for the relevant public and, consequently, it was impossible to carry out a conceptual comparison.
–       Global assessment of the likelihood of confusion
78      The Board of Appeal held, in paragraph 29 of the contested decision, that there was a likelihood of confusion, taking into account the phonetic identity, the identity of the goods and the average distinctiveness of the earlier mark, despite a low degree of visual similarity. According to the Board of Appeal, the common word element ‘ugo’ is the dominant element and the most distinctive of the marks and the figurative elements of both signs are wholly decorative.
79      The applicant disputes this assessment. It considers that_as the word element ‘ugo’ lacks distinctiveness, it cannot prevail over the signs’ other elements. Therefore, in its opinion, the comparison of the signs at issue should be based principally on the other elements which are completely different.
80      In the present case, it has already been held that the Board of Appeal was fully entitled to hold, first, in paragraph 44 above, that the goods covered by the two signs at issue were identical; second, in paragraph 63 above, that the word element ‘ugo’ was the only clearly discernible word element in both signs at issue and remained the dominant element and the most distinctive of both signs and that the earlier mark’s figurative elements played a secondary role in the overall impression produced by the signs at issue and, consequently, in paragraph 69 above, that owing to the different graphic stylisation of the marks, the signs at issue had, visually, a low degree of similarity; third, in paragraph 72 above, that the pronunciation of both those signs coincided in the sound of the element ‘ugo’; and, fourth, in paragraph 77 above, that it was impossible to carry out a conceptual comparison.
81      In these circumstances, despite the different stylisation of the two signs at issue, noted in paragraph 54 above, it must be held that there is a likelihood of confusion. The word element ‘ugo’ that may play the main role in the process by which both signs at issue are memorised by the relevant public is likely to be perceived by the consumer as the sign indicating the commercial origin of those goods.
82      In the light of all the foregoing considerations, it is necessary to reject the single plea in law as unfounded and, therefore, dismiss the present action in its entirety.
Costs
83      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. 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 (Fourth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Kofola ČeskoSlovensko a.s. to pay the costs.
KanninenCalvo-Sotelo Ibáñez-MartínReine
Delivered in open court in Luxembourg on 6 October 2017.
E. CoulonH. Kanninen
RegistrarPresident
*      Language of the case: English.