JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
8 May 2019
(*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Brave Paper — Earlier national word mark BRAVO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Conceptual similarity)
In Case T‑37/18,
Stirlinx Arkadiusz Kamusiński, established in Warsaw (Poland), represented by M. Pruszczyk, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Heinrich Bauer Verlag KG, established in Hamburg (Germany), represented by U. Grübler, S. Engels and C. Engelmann, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 15 November 2017 (Case R 391/2017-4), relating to opposition proceedings between Heinrich Bauer Verlag and Stirlinx Arkadiusz Kamusiński,
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 23 January 2018,
having regard to the response of EUIPO lodged at the Court Registry on 6 July 2018,
having regard to the response of the intervener lodged at the Court Registry on 26 June 2018,
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 25 February 2015, the applicant, Stirlinx Arkadiusz Kamusiński, 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        The trade mark in respect of which registration was sought is the word sign Brave Paper.
3        The goods and services in respect of which registration was sought are
in, inter alia, Classes 16 and 35 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, for each of those classes, to the following description:
–        Class 16: ‘Paper; printed matter; prospectuses; textbooks; books; magazine; newsletters, periodicals; newspapers, printed publications; albums; booklets; notebooks; diaries, desk calendars, wall calendars, multi-page calendars; notebooks, packaging of cardboard, paper and plastic, stationery, fountain pens, ballpoint pens, pencils, markers, pens, marking pens, rubber erasers, rulers.’
–        Class 35: ‘Advertising, promotion and sale of goods, including electronic versions of newspapers, paper, printed matter, prospectuses, manuals, books, magazines, periodicals, bulletins, newspapers, publications, albums, pamphlets, writing or drawing books, diaries, desk calendars, wall calendars, multi-page calendars, notebooks, packaging of cardboard, paper and plastic, stationery.’
4        The trade mark application was published in Community Trade Marks Bulletin No 097/2015 of 28 May 2015.
5        On 18 August 2015, the intervener, Heinrich Bauer Verlag KG, 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 and services referred to in paragraph 3 above.
6        The opposition was based, inter alia, on the German word mark BRAVO No 30 2010 010 084, registered on 3 September 2010.
7        That earlier mark covers, inter alia, goods and services in Classes 9, 16, 35 and 41, corresponding, for each of those classes, to the following description:
–        Class 9: ‘Recorded and unrecorded sound, image and data carriers of all kinds, included in class 9 (except unexposed films), in particular tapes, cassettes, compact discs, video discs, records, DAT tapes, audio and video tapes, diskettes, CD-Rom, Digital Versatile Discs (DVDs); apparatus for recording, transmission or reproduction of sound, images and data; calculating machines, data processing equipment and computers; computer software [recorded or downloadable]; glasses [optics], spectacle cases; electronic publications [downloadable].’
–        Class 16: ‘Paper, cardboard (carton) and goods made from these materials (included in Class 16), in particular paper napkins, paper handkerchiefs, toilet paper, household paper and paper towels; printed matter, in particular magazines, newspapers, books, catalogues and brochures; bookbinding material; photographs; instructional and teaching material (except apparatus); stationery; posters; decals; trading cards [stationery]; adhesives for stationery or household purposes; artists’ materials; brush; typewriters and office requisites (except furniture); plastic materials for packaging, included in Class 16; printers’ type; printing blocks.’
–        Class 35: ‘Advertising research, namely sales, market research and public opinion; for advertising purposes; distribution of goods, especially of leaflets, prospectuses, printed matter and samples; arranging advertising contracts for third parties; advertising, in particular radio, television, cinema, print, Videotext and teletext advertising; PR [public relations]; preparation of marketing plans; rental of advertising material; rental of advertising films; rental of advertising space, including in electronic form on the internet; business management; business administration; office functions; systemisation and compilation of data in computer databases; updating of data in computer databases, administrative processing of purchase orders for goods and services (including teleshopping), in particular order taking, order processing, order routing, handling of complaints and demands offer and placement of orders; provision of information (information) and consultancy for consumers in trade and business affairs [consumer advice]; publication of printed matter for advertising purposes.’
–        Class 41: ‘Advertising research, namely sales, market research and public opinion; for advertising purposes distribution of goods, especially of leaflets, prospectuses, printed matter and samples; arranging advertising contracts for third parties; advertising, in particular radio, television, cinema, print, Videotext and teletext advertising; PR [public relations]; preparation of marketing plans; rental of advertising material; rental of advertising films; rental of advertising space, including in electronic form on the internet; business management; business administration; office functions; systemisation and compilation of data in computer databases; updating of data in computer databases, administrative processing of purchase orders for goods and services (including teleshopping), in particular order taking, order processing, order routing, handling of complaints and demands offer and placement of orders; provision of information (information) and consultancy for consumers in trade and business affairs [consumer advice]; publication of printed matter for advertising purposes.’
8        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001).
9        On 11 January 2017, the Opposition Division rejected the opposition and ordered the intervener to pay the costs. The Opposition Division found that there was no likelihood of confusion under Article 8(l)(b) of Regulation No 207/2009 with regard to any of the earlier marks invoked, including the German word mark BRAVO. Taking into account the descriptive meaning of the element ‘paper’ of the mark applied for in respect of paper goods, it found that the signs at issue had an
average degree of visual similarity and a low degree of phonetic similarity. From a conceptual standpoint, the relevant German public would understand ‘bravo’ as an ‘exclamation of applause’ and ‘brave’ as either the English word for ‘showing no fear of dangerous or difficult things’ or the German word for ‘good, dutiful, well behaved’. Given those clear meanings, the Opposition Division found that the signs at issue were conceptually different. It also considered that the evidence submitted showed that
the distinctive character
of some of the earlier marks relied on and part of the goods in Classes 9 and 16
is enhanced in Germany, but, in view of the significant differences between the signs at issue, the clear conceptual differences
in particular, there could be no likelihood of confusion, even if the goods and services were regarded as identical. The Opposition Division rejected the intervener’s argument that the mark applied for could be perceived as forming part of its series of marks, which share the element ‘bravo’, on the ground that the sign applied for does not contain that element. Moreover, the Opposition Division found that, on account of the conceptual differences, the relevant public would not establish any link between the signs at issue, so that the opposition should also be rejected in so far as it was based on Article 8(5) of Regulation No 207/2009.
10      On 20 February 2017, the intervener 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 15 November 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the application for registration of the mark applied for in respect of all the goods and services in Classes 16 and 35. First, the Board of Appeal found that the relevant public is the German general public, whose level of attention is average. Secondly, it found that the goods in Class 16 covered by the mark applied for are identical to the respective goods covered by the German word mark BRAVO (‘the earlier mark’) in Class 16 and the services covered by the mark applied for in Class 35 have an average degree of similarity to the respective goods in Classes 9 and 16 covered by the earlier mark on account of their complementary relationship. Thirdly, the Board of Appeal found that the signs at issue have an average degree of visual and phonetic similarity and the conceptual comparison remains neutral, and that the signs at issue are similar. The Board of Appeal found, in particular, that the element ‘bravo’ may be understood by part of the German-speaking public as the English word ‘brave’, that is, ‘bold’, the meaning of which is closely linked to the exclamation ‘bravo’. Fourthly, the Board of Appeal confirmed the Opposition Division’s finding
that the inherent distinctive character of the mark has been proved in respect of certain goods in Classes 9 and 16. Fifthly, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public, even in respect of the goods for which enhanced distinctive character has been proved. Sixthly, as the opposition based on the earlier mark was upheld, the Board of Appeal did not examine the other earlier marks invoked.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        allow the mark applied for to be registered in respect of all the goods and services applied for;
–        order EUIPO to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the applicant’s second head of claim
14      By its second head of claim, the applicant claims that the Court should allow the mark applied for to be registered.
15      However, as EUIPO observes, it is
settled case-law that, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature.
Accordingly, it is not for the Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (see 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 20 and the case-law cited). Therefore, the applicant’s head of claim requesting the Court to issue directions to EUIPO to allow the application for registration is inadmissible.
Substance
16      The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
17      It criticises the Board of Appeal for having failed to examine the other earlier German marks on which the opposition was based and disputes the visual and phonetic similarities of the signs at issue found by the Board of Appeal. Moreover, the applicant submits that the signs at issue convey different concepts. Finally, there is no real likelihood of confusion between the two signs.
18      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.
19      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).
The relevant public and its level of attention
20      In paragraph 16 of the contested decision, the Board of Appeal found that the relevant public to be taken into consideration is the German public and that the goods and services covered by the mark applied for are directed, in essence, at the final consumer who is reasonably well informed and reasonably observant and circumspect. In addition, it found, in paragraph 30 of the contested decision, that the goods and services in Classes 16 and 35 were directed at the general public, whose level of attention is average.
21      The applicant maintains, first, that the goods and services assumed to be identical are not directed at the general public alone, but also to business consumers, whose level of attention is higher than average. Moreover, the level of attention of the relevant public could also vary between average and high, depending on the goods and services purchased.
22      EUIPO and the intervener dispute the applicant’s arguments.
23      At the outset, there is no need to call into question the Board of Appeal’s finding, which, moreover, has not been challenged by the parties, that the relevant territory for the purpose of assessing the likelihood of confusion is Germany.
24      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, first, 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,
Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited) and, secondly, that it is the public with the lowest level of attention that should be taken into account (judgment of 8 September 2010, Kido v OHIM — Amberes (SCORPIONEXO), T‑152/08, not published, EU:T:2010:357, paragraph 40). Therefore, it is not always necessary to examine the likelihood of confusion on the part of the relevant public which shows a higher than average level of attention (see, to that effect, judgment of 14 December 2017, RRTec v EUIPO — Mobotec (RROFA), T‑912/16, not published, EU:T:2017:905, paragraph 56).
25      In addition, in order to call into question the Board of Appeal’s assessment, it is not enough for the applicant to assert that, in a given sector, consumers are particularly attentive to marks, but it must support that claim with evidence (see, to that effect, judgment of 13 April 2005, Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport), T‑286/03, not published, EU:T:2005:126, paragraphs 20 and 21).
26      In the present case, it is not disputed by the parties that at least part of the relevant public is made up of the general public. Therefore, the applicant’s argument that the goods and services covered by the mark applied for are directed at both the general public and business consumers has no effect on the assessment of the likelihood of confusion. Indeed, as stated in paragraph 24 above, in so far as part of the relevant public has a normal level of attention, it is not necessary to assess the likelihood of confusion on the part of the section of the relevant public made up of business consumers which shows a higher than average level of attention.
27      In addition, it is clear that the applicant has provided no evidence whatsoever to support its claim that the level of attention of the general public can vary from average to high depending on the goods and services.
28      It follows from the foregoing that the Board of Appeal, in paragraph 30 of the contested decision, did not err in finding that the goods and services are directed at the general public, whose level of attention is average.
Comparison of the goods and services
29      In the present case, there is no need to call into question the Board of Appeal’s assessment in paragraphs 18
and 23 of the contested decision, which is, moreover, not disputed by the parties, that the goods in Class 16 covered by the mark applied for are identical to the goods in the same class covered by the earlier mark and that the services in Class 35 covered by the mark applied for
have, on account of their complementary relationship with the goods in Classes 9 and 16 covered by the earlier mark, an average degree of similarity to the goods in Classes 9 and 16 covered by the earlier mark.
The comparison of the signs
30      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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).
31      In this respect, it should be borne in mind that the signs to be compared are Brave Paper and BRAVO.
–       The distinctive character of the word element ‘paper’
32      The Board of Appeal found, in paragraphs 25, 26 and 27 of the contested decision that the element ‘paper’ of the mark applied for, which is basic English and highly similar to its German translation ‘Papier’, is descriptive of the goods in Class 16 and services in Class 35 covered by that mark.
33      That finding has not been challenged by the applicant or the intervener.
34      In that regard, it should be borne in mind that the public will not generally consider a descriptive element forming part of a word mark to be the distinctive and dominant element of the overall impression it conveys (see, to that effect, judgment of 7 June 2017, Mediterranean Premium Spirits v EUIPO — G-Star Raw (GINRAW), T‑258/16, not published, EU:T:2017:375, paragraph 46 and the case-law cited).
35      In those circumstances, the Board of Appeal was correct in finding that the element ‘paper’ of the mark applied for was not decisive with regard to the global impression created by the signs at issue, with the result that it could not be decisive with regard to their visual, phonetic and conceptual comparison and, therefore, to the assessment of the likelihood of confusion between the marks at issue.
–       The visual similarity
36      In paragraph 25 of the contested decision, the Board of Appeal stated that, as the marks at issue are word marks, it is irrelevant that the sign applied for is represented in lower-case and the earlier sign in upper-case characters. It observed that the marks at issue differ in the letters ‘e’ and ‘o’ situated at the end of the elements ‘brave’ and ‘bravo’ and by the additional element ‘paper’ present in the mark applied for, which is nonetheless regarded as descriptive by the relevant public in the light of the goods in Class 16 covered by the mark applied for and the services in Class 35 covered by the mark applied for. The Board of Appeal concluded that the signs at issue have an average degree of visual similarity.
37      The applicant claims that the Board of Appeal failed to have regard to the fact that the mark applied for is composed of two distinct words, each of those words being different than the single term making up the earlier mark. The applicant further claims that the fact that the earlier sign is always represented in upper-case characters
accentuates its difference from the sign applied for, which is written in lower-case characters. The applicant submits that the Board of Appeal ought to have taken that fact into account.
38      EUIPO and the intervener dispute the applicant’s arguments.
39      In the first place, it should be borne in mind that, according to case-law, the presence in each of the marks at issue of several letters in the same order have some significance in the assessment of the visual similarity between those marks (see, to that effect, judgment of 25 March 2009, Kaul v OHIM — Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 83). Moreover, the first part of a word mark is more likely to catch the consumer’s attention than the parts that follow (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65).
40      In the present case, it is apparent, as stated by the Board of Appeal, that the signs at issue share the same four first letters ‘b’, ‘r’, ‘a’ and ‘v’. They differ only in their last letter, ‘o’ as regards the earlier mark and ‘e’ as regards the mark applied for. Having regard to the case-law cited in paragraph 39 above, these are elements that point towards the similarity of the signs at issue. Given their position at the end of the words, the last letters ‘e’ and ‘o’ are less important. Moreover, as regards the element ‘paper’, present in the sign applied for alone, as stated in paragraphs 32 and 35 above, that element is descriptive of the goods and services in question and is therefore not capable of dominating the visual impression produced by the sign applied for. All of these elements were taken into consideration by the Board of Appeal in paragraph 25 of the contested decision.
41      Consequently, the applicant’s argument that the Board of Appeal failed to have regard to the fact that the mark applied for is made up of two words which are different than the single word making up the earlier mark is unfounded and must be rejected.
42      In the second place, as EUIPO submits, the fact that the earlier sign always appears in upper-case characters is irrelevant, since the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might possess (judgments of 22 May 2008, Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, not published, EU:T:2008:165, paragraph 43, and of 29 April 2015, Chair Entertainment Group v OHIM — Libelle (SHADOW COMPLEX), T‑717/13, not published, EU:T:2015:242, paragraph 50). Therefore, the applicant’s argument on the dissimilarity of the signs at issue on account of the use of lower- and upper-case characters in each of the signs must be rejected.
43      It follows from all the foregoing that the Board of Appeal did not err in finding, in paragraph 25 of the contested decision, that the signs at issue have an average degree of visual similarity.
–       The phonetic similarity
44      In paragraph 26 of the contested decision, the Board of Appeal found that, from a phonetic standpoint, the pronunciation of the first syllable of the mark applied for is either identical or highly similar to that of the first syllable of the earlier mark. What is more, the Board of Appeal noted that the two signs share the sound of the consonant ‘v’ at the end of the first syllable or the beginning of the second, but differ by the letters ‘e’ and ‘o’ of the second syllable and by the element ‘paper’ of the mark applied for, which is descriptive of the goods and services covered by that mark. The Board of Appeal concluded that the signs have an average degree of phonetic similarity.
45      The applicant submits that it is not disputed that the element ‘bravo’ making up the earlier mark has two syllables, none of which is similar to the three syllables of the Brave Paper sign applied for. Consequently, it claims that there is no phonetic similarity between the marks if the mark applied for is spoken in English and only a low phonetic similarity if it is spoken in German.
46      EUIPO and the intervener dispute the applicant’s arguments.
47      In the first place, it is clear that the element ‘bravo’ of the earlier mark is made up of the two syllables, ‘bra’ and ‘vo’.
48      In the second place, as is apparent from paragraph 44 above, the Board of Appeal did not find that the word element ‘paper’ was negligible, but merely considered that it was descriptive of the goods and services covered by the mark applied for. There is therefore no reason to think that the relevant public will not pronounce that element.
49      However, even if the relevant public will pronounce the element ‘paper’, it follows from the case-law cited in paragraph 34 above that the Board of Appeal was fully entitled to find that the element ‘paper’ was not a decisive factor in the phonetic comparison of the signs at issue.
50      In the third place, regarding the element ‘brave’ of the mark applied for, the Board of Appeal found that it could be pronounced as one syllable, ‘braev’, or two syllables, ‘bra’ and ‘ve’.
The applicant has not challenged the Board of Appeal’s finding or the fact that the mark applied for can be pronounced differently in English or German.
51      In that case, the German pronunciation of the first syllable of the word ‘brave’ is identical to that of the first syllable of the word ‘bravo’. In addition, the signs at issue have the sound of the letter ‘v’ in common at the end of the first syllable or the beginning of the second syllable. It is true, as the applicant submits, that the endings of those word elements, namely ‘o’ and ‘e’, are different. However, the difference in the pronunciation of the endings of the words in question does not offset the phonetic similarity which follows from the other abovementioned factors (see, to that effect, judgment of 13 September 2018, Apple v EUIPO — Apo International (apo), T‑104/17, not published, EU:T:2018:536, paragraph 63).
52      Therefore, there is, for a significant part of the relevant public, that is, the part using the German pronunciation of ‘brave’, a certain degree of phonetic similarity between the mark applied for and the earlier mark. In those circumstances, there is no need to call into question the Board of Appeal’s assessment in paragraph 26 of the contested decision that there is an average degree of phonetic similarity between the signs at issue.
–       The conceptual similarity
53      In paragraph 27 of the contested decision, the Board of Appeal found that the word ‘bravo’ will be perceived as referring to a cheer, while the expression ‘brave paper’ has no meaning in English or German, although the element ‘paper’ will be understood by the relevant public as descriptive of the goods and services in question. The Board of Appeal found
that the element ‘brave’ might nonetheless be understood by part of the relevant public as the English word ‘brave’, meaning ‘bold’, the meaning of which is closely linked to the exclamation ‘bravo’, praising a brave person. It added that the element ‘brave’ could also be the feminine form of the German adjective ‘brav’, meaning ‘well
behaved’, but it is unlikely that the relevant public would recognise such meaning in the combination ‘brave paper’. The Board of Appeal therefore concluded that the conceptual comparison of the signs is neutral or the signs at issue are conceptually similar.
54      The applicant submits that the element ‘bravo’ is an ‘exclamation of applause’ and recognition meaning ‘well done!’. By contrast, the element ‘brave’ will be understood as meaning ‘brave’ in English or ‘good, dutiful, well
behaved’ in German. Moreover, the element ‘paper’ is very close to the word ‘Papier’ in German, and will therefore be understood as meaning ‘paper’. The other meaning of the word ‘paper’, that is, ‘newspaper’, will be understood only by consumers with a good command of English. Consequently, according to the applicant, the elements contained in the two signs have specific meanings and, as a result, the marks at issue convey completely different concepts.
55      EUIPO and the intervener dispute the applicant’s arguments.
56      In the present case, the Board of Appeal considered in paragraph 27 of the contested decision that the relevant public will perceive the element ‘bravo’ making up the earlier mark as a cheer. There is no need to call into question the Board of Appeal’s assessment, which, moreover, has not been disputed by the parties.
57      It follows that the Board of Appeal’s first conclusion in the alternative, in paragraph 27 of the contested decision, that the conceptual comparison between the signs at issue is neutral, is incorrect. It is apparent from the case-law that, in the conceptual comparison of the signs, where at least one of the signs conveys a concept which is understood by a significant part of the relevant public, such a conceptual comparison is possible (see, to that effect, judgments of 9 March 2012, EyeSense v OHIM — Osypka Medical (ISENSE), T‑207/11, not published, EU:T:2012:121, paragraph 34, and of 22 November 2018, The Vianel Group v EUIPO — Viania Dessous (VIANEL), T‑724/17, not published, EU:T:2018:825, paragraphs 41 and 43).
58      Regarding the word elements of the mark applied for, as regards the English-speaking part of the relevant public, the words ‘brave’ and ‘paper’ will be understood as such. As regards the non-English-speaking part of the relevant
public, the word ‘brave’ will be understood as meaning ‘well
behaved’ and the word ‘paper’ will be understood as such. Indeed, the German translation of the word ‘paper’ is ‘Papier’. Nonetheless, as stated in paragraph 35 above, that word element is not decisive with regard to the conceptual comparison.
59      It follows that the Board of Appeal was fully entitled to find that there is a conceptual link between the meaning of the exclamation ‘bravo’, praising a brave person for an accomplishment, and the meaning, for the English-speaking part of the relevant public, of the element ‘brave’. It follows that the second conclusion in the alternative, in paragraph 27 of the contested decision, that the signs at issue are conceptually similar, is correct.
60      Therefore, the Board of Appeal’s error set out in paragraph 57 above is irrelevant to the outcome of the case since the Board of Appeal was, in any event, fully entitled to find, in paragraph 27 of the contested decision, that the signs at issue could also be regarded as conceptually similar.
The likelihood of confusion
61      The Board of Appeal found, as did the Opposition Division, that the enhanced distinctive character of the earlier mark has been proved in respect of the goods ‘electronic publications (downloadable)’ in Class 9 and ‘printed matter, in particular magazines’ in Class 16. In respect of the remaining relevant goods covered by the earlier mark, namely ‘Paper, cardboard (carton) and goods made from these materials and plastic materials for packaging, stationery’ in Class 16, the Board of Appeal found, in paragraph 32 of the contested decision, that the inherent distinctive character of the earlier mark must be regarded as normal. Given the identity or average degree of similarity of the goods and services in question, together with the similarities between the signs at issue, the Board of Appeal found, in paragraph 33 of the contested decision, that there was a likelihood of confusion on the part of the relevant public in respect of all the goods and services covered by the mark applied for, even those in respect of which enhanced distinctive character had not been proved. The Board of Appeal therefore upheld the opposition based on the earlier mark and did not examine the other earlier marks invoked.
62      The applicant submits that the signs at issue convey different meanings and therefore differ conceptually. It recalls that conceptual differences can, in some circumstances, counteract the visual and phonetic similarities between two signs when at least one of the signs has a clear and specific meaning for the relevant public. Moreover, the applicant is of the view that there is no likelihood of confusion between the signs BRAVO and Brave Paper. Lastly, the Board of Appeal erred in failing to examine the other earlier German marks invoked in support of the opposition.
63      EUIPO and the intervener dispute the applicant’s arguments.
64      It should be borne in mind that 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).
65      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).
66      In the present case, as held in paragraphs 43, 52 and 60 above, the Board of Appeal did not err in finding that the signs at issue were visually, phonetically and conceptually similar. As a result, one of the conditions of a likelihood of confusion is met and the applicant’s argument that the conceptual differences between the signs at issue could counteract the visual and phonetic similarities found by the Board of Appeal must be rejected.
67      Moreover, as held in paragraph 29 above, the goods in Class 16 covered by the mark applied for are identical to the goods in that class covered by the earlier mark, and the services in Class 35 covered by the mark applied for have an average degree of similarity to the goods in Classes 9 and 16 covered by the earlier mark. The second condition of a likelihood of confusion is therefore also met.
68      There is therefore no need to call into question the Board of Appeal’s assessment in paragraphs 31 and 32 of the contested decision, which, moreover, is not disputed by the parties, that the earlier mark has an enhanced distinctive character in respect of the goods ‘electronic publications (downloadable)’ in Class 9 and ‘printed matter, in particular magazines’ in Class 16, and normal distinctive character in respect of the remaining goods, all in Class 16, namely ‘paper, goods made of paper, cardboard and plastic materials for packaging, stationery’.
69      Moreover, the applicant has not provided any evidence capable of challenging the existence of a likelihood of confusion between the earlier mark and the mark applied for, even in respect of the goods in Class 16 covered by the earlier mark in respect of which no enhanced distinctive character has been proved, namely ‘paper, goods made of paper, cardboard and plastic materials for packaging, stationery’.
70      It follows that the Board of Appeal was entitled to conclude, as it did in the present case in paragraph 33 of the contested decision, that there is a likelihood of confusion on the part of the relevant public even in respect of the goods in Class 16 covered by the earlier mark in respect of which no enhanced distinctive character has been proved.
71      The Board of Appeal was therefore fully entitled to uphold the opposition based on the earlier mark without examining the other earlier marks invoked in support of the opposition, contrary to the applicant’s claims (see, to that effect, judgment of 16 September 2004, Metro-Goldwyn-Mayer Lion v OHIM — Moser Grupo Media (Moser Grupo Media), T‑342/02, EU:T:2004:268, paragraph 45).
72      In the light of all the foregoing, the action must be dismissed in its entirety.
Costs
73      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 forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Stirlinx Arkadiusz Kamusiński to pay the costs.
Kanninen
Calvo-Sotelo Ibáñez-Martín
Reine
Delivered in open court in Luxembourg on 8 May 2019.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.