JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
25 November 2020 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark Flaming Forties – Earlier national figurative mark 40 FLAMING FRUITS – 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‑875/19,
Impera GmbH, established in Steinhaus (Austria), represented by C. Straberger, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by I. Lecheva, J. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Euro Games Technology Ltd, established in Vranya-Lozen-Triugulnika (Bulgaria), represented by K. Manev, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 23 October 2019 (Case R 2321/2018‑5), relating to opposition proceedings between Euro Games Technology and Impera,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, O. Spineanu-Matei (Rapporteur) and R. Mastroianni, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 December 2019,
having regard to the response of EUIPO lodged at the Court Registry on 12 May 2020,
having regard to the response of the intervener lodged at the Court Registry on 1 May 2020,
having regard to the observations of EUIPO on the corrigendum to the application, lodged at the Court Registry on 17 June 2020,
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 19 July 2017, the applicant, Impera GmbH, 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, in respect of which the colours dark grey, golden yellow, yellow, red, green and blue were claimed, was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 9, 28 and 41 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 9: ‘Apparatus for recording, transmission or reproduction of sound or images; mechanisms for coin-operated apparatus; data processing apparatus and computers; computer software; hardware and software, in particular for slot machines or gambling via the internet or via telecommunications networks, or gambling on telecommunications devices’;
–        Class 28: ‘Automatic slot machines, automatic gambling machines, automatic entertainment gaming machines, games for automatic slot machines, automatic gambling machines, automatic entertainment gaming machines’;
–        Class 41: ‘Entertainment; sporting and cultural activities; entertainment supplied via the internet; services for internet games; providing on-line computer games’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2017/147 of 4 August 2017.
5        On 31 August 2017, the intervener, Euro Games Technology Ltd, 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 the goods and services referred to in paragraph 3 above.
6        The opposition was based on the earlier Bulgarian figurative mark in respect of which registration was sought on 7 February 2017, which was registered on 15 November 2017 under the number 99801 and which is represented as follows:
7        That earlier mark covers goods and services in Classes 9, 28 and 41 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Software; computer gaming software; computer software packages; computer operating system software; computer software, recorded; software drivers; virtual reality software; games software; entertainment software for computer games; computer programs for network management; operating computer software for main frame computers; monitors (computer hardware); computer hardware; apparatus for recording images; monitors (computer programs); computer game programs; computer programs for recorded games; apparatus for recording, transmission or reproduction of sound or images; communications servers [computer hardware]; electronic components for gambling machines; computer application software featuring games and gaming; computer software for the administration of on-line games and gaming; computer hardware for games and gaming; hardware and software for gambling, gambling machines, gambling games on the Internet and via telecommunication network’;
–        Class 28: ‘Gaming machines for gambling; chips for gambling; mah-jong; arcade games; gambling machines operating with coins, notes and cards; games; electronic games; parlor games; gaming chips; gaming tables; slot machines [gaming machines]; LCD game machines; slot machines and gaming devices; coin-operated amusement machines; roulette chips; poker chips; chips and dice [gaming equipment]; equipment for casinos; roulette tables; gaming roulette wheels; casino games; automats and gambling machines; coin-operated machines and/or electronic coin-operated machines with or without the possibility of gain; boxes for coin-operated machines, slot machines and gaming machines; electronic or electrotechnical gaming devices, automats and machines, coin-operated machines; housings for coin-operated machines, gaming equipment, gaming machines, machines for gambling; electropneumatic and electrical gambling machines (slot machines)’;
–        Class 41: ‘Gambling; services related to gambling; gaming services for entertainment purposes; casino, gaming and gambling services; training in the development of software systems; provision of equipment for gambling halls; providing casino equipment [gambling]; gaming machine entertainment services; providing casino facilities [gambling]; halls with gaming machines; amusement arcade services; games equipment rental; rental of gaming machines; providing amusement arcade services; rental of gaming machines with images of fruits; editing or recording of sounds and images; sound recording and video entertainment services; hire of sound reproducing apparatus; provision of gaming equipment for casinos; providing of casino facilities; online gambling services; casino management services; services for exploitation of gaming establishments, gaming halls, internet casinos, online gambling sites (entertainment)’.
8        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).
9        On 27 September 2018, the Opposition Division upheld the opposition.
10      On 27 November 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11      By decision of 23 October 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It found that, in the light of the goods and services at issue, the relevant public was the Bulgarian public, consisting in part of the general public and in part of a public of specialists, in particular in the gaming and gambling industry, and that its level of attention varied from normal to enhanced, according to the goods and services concerned. It took the view that the goods and services covered by the marks at issue were identical or similar. It found that the signs at issue were visually similar to an average degree and phonetically similar to a low degree, whereas a conceptual comparison between them was not possible. It took the view that the inherent distinctiveness of the earlier mark was normal. It found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, with regard to all of the goods and services covered by the mark applied for.
Forms of order sought
12      The applicant claims that the Court should:
–        ‘set aside’ and annul the contested decision;
–        allow the trade mark application in its entirety or, in the alternative, remit the case to the Board of Appeal;
–        order the intervener to pay the costs;
–        order EUIPO to pay the costs if the intervener is not ordered to pay them.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
14      The intervener contends that the Court should:
–        dismiss the action and uphold the contested decision;
–        reject the EU trade mark application in its entirety;
–        order the applicant to pay the costs.
Law
15      It must be pointed out at the outset that the intervener requests, by its first head of claim, that the Court dismiss the action and uphold the contested decision and, by its second head of claim, that the Court reject the EU trade mark application in its entirety. Since the Board of Appeal upheld the Opposition Division’s decision, which had rejected the application for registration of the mark at issue, and upholding the contested decision is tantamount to dismissing the action, those two heads of claim put forward by the intervener must be understood as seeking, in essence, the dismissal of the action.
16      Furthermore, given the date on which the application for registration at issue was filed, namely 19 July 2017, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
17      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision by the applicant in the arguments put forward and by EUIPO to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, as amended, the wording of which is identical.
18      In support of the action, the applicant relies on a single plea in law, alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009, as amended. In that regard, it claims that there is no likelihood of confusion on the part of the relevant public.
19      EUIPO and the intervener dispute the applicant’s arguments.
20      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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
21      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
22      The Board of Appeal found, in essence, that, since the earlier mark which had to be taken into consideration was a Bulgarian mark, the relevant public was the Bulgarian public (paragraph 39 of the contested decision). That finding is not, moreover, disputed by the parties and there is no need to call it into question.
23      Furthermore, 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, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
24      The Board of Appeal found, referring to some of the goods and services in Classes 9, 28 and 41 covered by the marks at issue, that they were aimed in part at the general public and in part at a public of specialists, in particular in the gaming and gambling industry, and that the relevant public’s level of attention varied from normal to enhanced, according to the goods and services concerned. It took the view that, as regards most of those goods and services, that level of attention was normal because the relevant public was not highly attentive when it was confronted with simple software, apparatuses for reproduction of sound or sporting, cultural or entertainment activities. By contrast, it took the view that it would be enhanced with regard to sophisticated apparatuses, machines or services relating to gambling (paragraphs 18, 19 and 21 to 23 of the contested decision).
25      The applicant submits that the goods in Classes 9 and 28 covered by the mark applied for, which it refers to collectively by using the expression ‘gambling machines’, are exclusively aimed at and sold to specialists in the gaming and gambling industry, whose level of attention is always very high.
26      EUIPO and the intervener dispute the applicant’s arguments.
27      In the first place, as regards the definition of the relevant public, contrary to what the applicant seems to claim, it is important to point out that the Board of Appeal found that, with regard to the goods and services at issue, the relevant public consisted in part of the general public and in part of a public of specialists, and not that all those goods and all those services were aimed both at the general public and at a public of specialists.
28      Regarding the services in Class 41, the applicant does not dispute the Board of Appeal’s assessments relating to the definition of the relevant public and it is not necessary to examine those assessments further.
29      Regarding the goods in Classes 9 and 28, contrary to what the applicant claims, the goods in those classes covered by the mark applied for cannot be held to be exclusively aimed at and sold to specialists in the gaming and gambling sector. The apparatuses for recording, transmission or reproduction of sound or images and the data processing apparatuses and computers in Class 9 covered by the mark applied for are broad categories that include, for example, mobile phones, cameras, dictaphones and CD players, which are also aimed at the general public. The same is true of the ‘hardware’ in that class, since the words ‘in particular’ merely introduce examples of goods, such as ‘slot machines or gambling via the internet or via telecommunications networks, or gambling on telecommunications devices’, as the Board of Appeal pointed out. Furthermore, it must be held, as pointed out by EUIPO and contrary to what the applicant claims, that the mechanisms for coin-operated apparatuses in Class 9 and the automatic slot machines, automatic gambling machines and automatic entertainment gaming machines in Class 28 are also aimed at the general public, which includes persons who are interested in those machines and purchase them for the purposes of private entertainment or as collectors. All those goods are therefore, as the Board of Appeal found, aimed at specialists, but also at the general public.
30      In the second place, regarding the relevant public’s level of attention, the applicant concurs with the Board of Appeal’s assessment that that level of attention is high with regard to apparatuses, machines and services relating to gambling. By contrast, it criticises it for summing up its findings regarding the different levels of attention, whereas the likelihood of confusion should have been assessed, first, with regard to the goods which it refers to by using the expression ‘gambling machines’ (see paragraph 25 above), in respect of which the relevant public’s level of attention is, in its view, enhanced, and, secondly, with regard to the other goods and services at issue. That line of argument must be rejected since it is based on the incorrect premiss that the goods categorised as ‘gambling machines’ are exclusively aimed at and sold to specialists in the gaming and gambling sector (see paragraph 29 above). Furthermore, since broad categories of goods which can include goods that are to a greater or lesser extent sophisticated and vary very much in price (see paragraph 29 above) are referred to, the Board of Appeal could, without making any error of assessment, find that the relevant public’s level of attention could vary from normal to high depending on the goods (paragraphs 20 to 22 of the contested decision) and sum up its findings as it did in paragraph 23 of the contested decision. As regards the issue of the level of attention which the Board of Appeal took into account in assessing whether there was a likelihood of confusion, it must be pointed out that that issue will be examined in the context of the examination of that assessment.
31      Consequently, the Board of Appeal’s assessments relating to the definition of the relevant public and to its level of attention (paragraph 24 above) must be upheld.
The comparison of the goods and services
32      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. Other factors may also be taken into account, such as the distribution channels of the goods concerned (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 37 and the case-law cited).
33      The Board of Appeal found that, first, the goods in Classes 9 and 28 covered by the marks at issue were identical (paragraphs 27 to 31 of the contested decision) and that, secondly, with the exception of ‘sporting and cultural activities’, the services in Class 41 covered by the mark applied for were identical to the services in the same class covered by the earlier mark (paragraphs 32 to 34 of the contested decision). The applicant does not, moreover, dispute those assessments and there is no need to call them into question.
34      As regards the ‘sporting and cultural activities’ in Class 41 covered by the mark applied for, the Board of Appeal found that they were similar to the services in that class covered by the earlier mark. The applicant submits that there is no similarity between those services. First, it argues that casinos and gambling halls do not allow sporting activities and that the marketing channels for the services at issue are not similar, equivalent, complementary or even in any way related. Secondly, it argues that the editing or recording of sounds and images, which are technical procedures, are not to be regarded as cultural activities.
35      EUIPO and the intervener dispute the applicant’s arguments.
36      In the first place, regarding the ‘sporting activities’ in Class 41 covered by the mark applied for, the Board of Appeal found that they were at least similar to some of the services in that class covered by the earlier mark, namely gambling and gaming, for a non-negligible part of the relevant public. It took the view that those services were complementary and coincided in their purpose and their marketing channels.
37      In that regard, first, it must be held that the sporting activities covered by the mark applied for and the gaming services for entertainment purposes covered by the earlier mark, which include games connected with sporting activities, can have the same intended purpose, namely that of offering sports-related entertainment services. Furthermore, they can, as the Board of Appeal stated, share the same distribution channels, because the earlier mark covers amusement arcade services and sporting activities may be recreated, in the form of virtual games, in gambling arcades. The applicant’s argument in that regard must be rejected because, as regards the mark applied for, it is not specified that sporting activities in the form of ‘virtual reality sports games’ are excluded.
38      Secondly, as was pointed out by the Board of Appeal, the sporting activities covered by the mark applied for cover sports competitions, which can have a close link with the gambling covered by the earlier mark, which includes betting on the results of sports competitions and events. Consequently, sporting activities and gambling, including the abovementioned betting, can have the same intended purpose, since they constitute sports-related entertainment activities, and can be complementary, because the abovementioned betting could not exist without the sports competitions.
39      Thirdly, the public may be the same with regard to the sporting activities covered by the mark applied for, on the one hand, and the gaming services for entertainment purposes and gambling covered by the earlier mark, on the other hand, namely, the general public which is interested, as a spectator, in sporting activities.
40      Consequently, the Board of Appeal could, without making any error of assessment, conclude that the sporting activities in Class 41 covered by the mark applied for were similar to some of the services in that class covered by the earlier mark. However, that similarity must be held to be low in degree.
41      In the second place, regarding the ‘cultural activities’ in Class 41 covered by the mark applied for, the Board of Appeal found that they were similar to the services of editing or recording of sounds and images, the services of sound recording, the video entertainment services and the gaming services for entertainment purposes in that class covered by the earlier mark.
42      First, although, as the applicant submits and EUIPO and the intervener admit, the editing or recording of sounds and images are technical procedures and not cultural activities, the fact remains that the services at issue can be held to be similar. As was stated in essence by the Board of Appeal, they are complementary, since the services covered by the earlier mark may be indispensable for the purposes of offering cultural activities. Furthermore, they may have the same providers and channels of distribution because, according to the example referred to by the Board of Appeal, a museum offers cultural services, but may also provide games and other creative entertainment activities, in particular for children. Consequently, the cultural activities in Class 41 covered by the mark applied for and those services in that class covered by the earlier mark are similar, as the Board of Appeal found, and that similarity must be held to be low in degree.
43      Secondly, the ‘video entertainment services’ and the ‘gaming services for entertainment purposes’ covered by the earlier mark can, by contrast, constitute cultural activities. According to settled case-law, services can be considered to be identical when the services covered by the earlier mark are included in a more general category covered by the mark applied for (see, by analogy, judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
44      It follows that the Board of Appeal was right in finding that the goods and services at issue in Classes 9, 28 and 41 were either identical or similar.
The comparison of the signs
45      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).
46      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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). 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 (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
47      In the contested decision, after describing the signs at issue and determining the greater or lesser degree of distinctiveness of the elements of which they consist, the Board of Appeal compared those signs. It found that there was an average degree of visual similarity and a low degree of phonetic similarity between them. From a conceptual standpoint, it found that, for the substantial part of the Bulgarian public which did not understand the English words ‘flaming’, ‘forties’ and ‘fruits’, a comparison between those signs was not possible, and that, for the part of the Bulgarian public which understood those words, those signs were similar (paragraphs 43 to 55 of the contested decision).
48      The applicant claims that there is no visual, phonetic and conceptual similarity between the signs at issue.
49      EUIPO and the intervener dispute the applicant’s arguments.
50      The earlier mark is a composite mark consisting of a figurative element comprising a red banner on which the number ‘40’ is written in bold green characters, followed by the words ‘flaming’ and ‘fruits’ in bold yellow capital letters. Furthermore, crosses and white dots positioned randomly around those elements symbolise sparkles.
51      The mark applied for is a figurative mark which features, in the centre of a dark-grey square, the words ‘flaming’ and ‘forties’, written in bold yellow or golden-yellow capital letters, in which the two first letters, ‘f’, are slightly larger in size than the other letters. Two red lines appear in the background of those two words. As stated by the Board of Appeal, if the sign applied for is sufficiently enlarged, various fruits, such as a watermelon and grapes, can be seen before the first letter, ‘f’, and after the last letter, ‘s’.
The distinctive and dominant elements of the signs at issue
52      The Board of Appeal found that the distinctive elements of the signs at issue were the words ‘flaming’, ‘fruits’ and ‘forties’, which had an average degree of inherent distinctiveness. It took the view that a considerable part of the relevant public would not understand the meaning of those English terms and that the decisions quoted by the applicant, stating that the terms ‘fruits’ or ‘fruit’ were descriptive with regard to goods and services in Classes 9, 28 and 41, were not relevant in the present case because of the differences between the consumer groups (paragraph 46 of the contested decision).
53      In that regard, in the first place, in so far as the applicant complains that the Board of Appeal did not point out that a considerable part of the relevant Bulgarian public did not know the Latin alphabet, it must be pointed out that it is for the applicant to demonstrate, with corroborating evidence, that the analysis carried out by the Board of Appeal is incorrect in respect of a significant part of that public (see, to that effect, judgment of 19 December 2019, Japan Tobacco v EUIPO – I.J. Tobacco Industry (I.J. TOBACCO INDUSTRY), T‑743/18, not published, EU:T:2019:872, paragraph 35 and the case-law cited). Since no such evidence has been provided by the applicant, that argument is not capable of calling the Board of Appeal’s assessment into question. In any event, contrary to what the applicant claims and in line with what EUIPO submits, as is clear from the case-law, at least a large proportion of Bulgarian consumers is capable of reading Latin characters (see, to that effect, judgments of 23 October 2017, Tetra Pharm (1997) v EUIPO – Sebapharma (SeboCalm), T‑441/16, not published, EU:T:2017:747, paragraph 67, and of 7 February 2018, Şölen Çikolata Gıda Sanayi ve Ticaret v EUIPO – Zaharieva (Display box for cornets), T‑793/16, not published, EU:T:2018:72, paragraphs 53 to 56).
54      Furthermore, the Board of Appeal found that a considerable part of the relevant Bulgarian public would not understand the meaning of the English terms ‘flaming’, ‘fruits’ and ‘forties’. There is no need to call into question that assessment – which the applicant states, moreover, that it does not dispute – because, contrary to what the intervener claims, it is not established that those terms, except for the word ‘fruits’, form part of basic English vocabulary. Although English is an international language and a large proportion of consumers in the European Union is likely to have a knowledge of that language’s basic vocabulary (see, to that effect, judgment of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 53), some English terms or one of their meanings cannot be held to form part of that basic vocabulary (see, to that effect, judgment of 16 February 2017, Jaguar Land Rover v EUIPO – Nissan Jidosha (Land Glider), T‑71/15, not published, EU:T:2017:82, paragraph 45). As regards the English word ‘fruits’, it must be stated that that word can be held to form part of basic vocabulary, since it is a generic word and is very common in everyday life.
55      Consequently, since it is the part of the public for which a likelihood of confusion is most likely to occur that must be taken into consideration, it is necessary to take into account, in line with what the Board of Appeal found, the relevant public which reads Latin characters, but does not understand the meaning of the English terms ‘flaming’ and ‘forties’, and there is no need to call into question the Board of Appeal’s assessment that those words have an average degree of inherent distinctiveness. By contrast, it must be held that that public will be capable of perceiving the meaning of the English word ‘fruits’. Even if it could be held that the distinctiveness of that element is limited with regard to some of the goods or services in the gambling sector, that will not be the case with regard to all of the goods or services covered by the earlier mark, and it must, moreover, be pointed out that that element is only one of the various elements of which the earlier mark consists.
56      In the second place, as regards the element ‘40’ in the earlier sign, the Board of Appeal found that the distinctiveness of that element was limited with regard to the goods and services at issue and that the relevant public would focus more on the word ‘flaming’ in the earlier sign. It found that a part of that public knows that that number refers to one of the characteristics of slot machines, namely the pay lines on which a payout will be awarded based on winning combinations, a finding which the applicant does not dispute. It took the view that it might be perceived, by the remaining part of that public, as a reference to the model number of a machine, the number of spins of such a slot machine during a specific period or the minimum bet amount (paragraphs 47 and 49 of the contested decision). As regards the gambling machines or slot machines in Class 28 covered by the marks at issue, those assessments on the part of the Board of Appeal must be upheld and the distinctiveness of the element ‘40’ can be held to be low in degree. Although the intervener disputes that assessment on the part of the Board of Appeal, it does not put forward any substantiated arguments in that regard. By contrast, with regard to the other goods in Classes 9 and 28 and the services in Class 41 covered by the marks at issue, contrary to what the Board of Appeal found, that element must be held to have an average degree of distinctiveness, because it is not established that it may be perceived as a reference to pay lines or to the model number of a machine.
57      Furthermore, contrary to what the applicant seems to claim, the element ‘40’ is not dominant. Although, as it submits, it is written in bold green characters, the words ‘flaming’ and ‘fruits’ are also written in bold characters, albeit in yellow, and stand out clearly against the red banner. Furthermore, those elements are the same size. The mere fact that the element ‘40’ is at the beginning of the sign cannot make it dominant.
58      In the third place, as regards the red banner in the earlier sign, the Board of Appeal found that that banner was less distinctive than the words ‘flaming’ and ‘fruits’ (paragraph 48 of the contested decision). Contrary to what the applicant claims, that assessment is correct, on the ground that, where a mark consists of word and figurative elements, the former must, in principle, be considered to be more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element of the mark (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37). The same is true of the crosses and white dots symbolising sparkles, with regard to which it is not, moreover, certain that they will be perceived easily.
59      Furthermore, as regards the grey square, the red stripes and the fruits in the sign applied for, the Board of Appeal found that, if they were recognisable at all, they were in principle considered to be less distinctive than the distinctive word elements ‘flaming’ and ‘forties’. It added that it was common ground that depictions of fruit were commonplace in the gambling sector and thus of very low or even no distinctiveness. As regards basic geometric shapes like a square or a straight line, it pointed out that they were in principle considered to be without any distinctiveness. There is no need to call into question those assessments, which are not, moreover, disputed.
60      It follows from the foregoing that the signs at issue must, for the purposes of the visual, phonetic and conceptual comparison, be taken into consideration as a whole, since certain elements may be more distinctive than others, but none of the elements is dominant.
The visual comparison
61      The Board of Appeal found that, in the light of the partial identity of the signs at issue and the high degree of visual similarity in the larger part of those signs, which overrode the visual impact of the number ‘40’, there was an average degree of visual similarity between them (paragraph 53 of the contested decision).
62      Although the applicant does not dispute the fact that one of the words in each of the signs at issue is identical, it nevertheless claims that the signs at issue are visually different.
63      In the first place, the applicant claims that the Board of Appeal did not describe the overall impression created by the signs at issue correctly. It thus submits that the number ‘40’ constitutes the first part of the earlier sign and that the word ‘fruits’ is the third word in that sign, and not the second word. It must be pointed out that the Board of Appeal did not fail to take the element ‘40’ into consideration and that the words which follow it are written in a different colour, which contributes towards making it possible for two parts to be distinguished visually in the earlier sign and towards the words ‘fruits’ and ‘forties’ appearing as the second parts of the sequences of words contained in each of the signs at issue. Furthermore, the applicant submits that those two words are completely different. However, while it concerns itself with describing the positions of the vowels in those words and with pointing out the visual differences which arise out of those positions, it does not call into question the Board of Appeal’s assessments that those words are very similar in length, namely six letters in the earlier sign and seven letters in the sign applied for, and have five letters in common, including their first and last letters, which are identical. Consequently, they cannot be regarded as not being in any way visually similar.
64      In the second place, the applicant submits that the visual impact created by the element ‘40’ in the earlier sign is dominant, and not low as the Board of Appeal found. That argument must be rejected because the consequence of the use of two different colours is that it makes it possible for two parts to be distinguished visually, and not the element ‘40’ alone (see paragraphs 57 and 63 above). Furthermore, as the Board of Appeal pointed out, that element represents only 2 characters, whereas the words of which each of the signs at issue consists comprise 13 and 14 characters respectively. Lastly, although, as the applicant submits, the characters in that element are slightly larger in size than those in the words which follow it, that difference is apparent only when the signs at issue are examined meticulously.
65      In the third place, the applicant submits that, if the Board of Appeal had correctly assessed the impact of the sign applied for, it would have had to come to the conclusion that the earlier sign would be perceived as a red banner with the number ‘40’ in bold green characters at the far left-hand side thereof, followed by two incomprehensible words, whereas the earlier sign is a completely different design, namely a grey square with depictions of fruit and with incomprehensible words written in a golden colour, the only similarity between the two marks being the existence of one of the incomprehensible words. In that regard, it must be borne in mind that the Board of Appeal found that the geometric shape of the square was devoid of any distinctive character and that, if the grey square, the red stripes and the fruits represented in the sign applied for were recognisable at all, they were in principle considered to be less distinctive than the distinctive word elements ‘flaming’ and ‘forties’, findings which the applicant does not dispute (see paragraph 59 above). Consequently, those elements will not be capable of counteracting the similarities between the word elements in the signs at issue (see paragraph 63 above).
66      Consequently, the Board of Appeal was right in finding that the signs at issue were visually similar. However, in the light of the differences between the words ‘fruits’ and ‘forties’ as well as those resulting from the presence of the figurative elements in the signs at issue and of the number ‘40’ in the earlier sign, that visual similarity must be held to be low in degree and not average in degree as the Board of Appeal found.
The phonetic comparison
67      The Board of Appeal found that, from a phonetic standpoint, the identical word ‘flaming’ would be pronounced identically by the Bulgarian public. As regards the words ‘fruits’ and ‘forties’, it took the view that, notwithstanding some phonetic congruence on account of the identity of the first and last letters, the pronunciation of those elements was not, owing to the different order of the letters used and the difference in the number of syllables, so similar overall. Lastly, it found that at least some consumers might pronounce the number ‘40’ in Bulgarian. It concluded that there was a low degree of phonetic similarity between the signs at issue (paragraph 54 of the contested decision).
68      The applicant submits that there is no phonetic similarity between the signs at issue. First, it argues that the Bulgarian consumers who know only Cyrillic letters will pronounce the earlier sign as ‘chetirideset’, namely the number 40 in Bulgarian, as the rest of that sign is unpronounceable, whereas the sign applied for will be completely illegible and unpronounceable. Secondly, it submits that the Board of Appeal’s assessment is correct as regards the Bulgarian consumers who know the Latin alphabet, but that all the consumers will also pronounce the element ‘40’.
69      It is important to point out that the phonetic reproduction of a composite trade mark corresponds to that of all its word elements, regardless of their specific graphic features, which fall within the analysis of the sign on a visual level (see, to that effect, judgment of 11 December 2013, Eckes-Granini v OHIM – Panini (PANINI), T‑487/12, not published, EU:T:2013:637, paragraph 49 and the case-law cited). Consequently, it is not necessary to take the figurative elements of the signs at issue into account for the purposes of comparing them phonetically and what must be compared are, on the one hand, the word elements ‘40’, ‘flaming’ and ‘fruits’ and, on the other hand, ‘flaming’ and ‘forties’.
70      Furthermore, it must be borne in mind that a large part of the relevant Bulgarian public is able to read Latin characters (see paragraph 53 above) and consequently to pronounce them, regardless of what that pronunciation might be. Accordingly, that part of that public will pronounce the word ‘flaming’ in the same way in both signs. It will also pronounce the words ‘fruits’ and ‘forties’, in which the two initial consonants in common, ‘f’, and possibly the last letters, ‘s’, constitute points of phonetic similarity, which the applicant admits. By contrast, the overall pronunciation of the words ‘fruits’ and ‘forties’ and the pronunciation of the number ‘40’, which will be spoken first and, most probably, in Bulgarian, namely as ‘chetirideset’, transliterated from Bulgarian, as the applicant correctly states and as EUIPO admits, will give rise to points of phonetic dissimilarity.
71      Consequently, contrary to what the applicant claims, the Board of Appeal was right in finding that the signs at issue were phonetically similar. However, in the light of the identical pronunciation of the term ‘flaming’, which will also be longer than that of the words ‘fruits’ and ‘forties’, and in the light of the fact that it is followed by two words beginning with the same sound connected with the pronunciation of the letter ‘f’, that phonetic similarity must be held to be average in degree, and not low in degree as the Board of Appeal found.
The conceptual comparison
72      As regards the conceptual comparison of the signs at issue, the Board of Appeal found that a substantial part of the Bulgarian public did not understand the English words ‘flaming’, ‘fruits’ and ‘forties’ and that therefore a conceptual comparison was not possible for those consumers. It also found that, assuming that part of the public understood those terms, there would be a conceptual similarity on account of the identical word ‘flaming’, meaning ‘burning’, and the similarity of the term ‘forties’ and the number ‘40’, which referred, in particular, to the pay lines of slot machines (paragraphs 47 and 55 of the contested decision).
73      The applicant claims that, both for the consumers who cannot read Latin characters and for those who can read them, irrespective of whether those latter consumers understand English, the signs at issue are conceptually different.
74      EUIPO and the intervener dispute the applicant’s arguments.
75      First of all, the applicant’s argument regarding the perception by the public which cannot read Latin characters must be rejected, because what must be taken into account is the large part of the relevant public which can read them and which does not understand the English words ‘flaming’ and ‘forties’, but is capable of perceiving the meaning of the English word ‘fruits’ (see paragraphs 53 and 54 above). Next, while that large part of the relevant public will be able to perceive the concept of the number ‘40’ in the earlier sign, it will not be able to associate it with any concept which it might perceive in the sign applied for. Furthermore, that large part of the relevant public will be able to perceive the concept of fruits in each of the signs at issue. Consequently, the Board of Appeal erred in finding that no conceptual comparison between the signs at issue was possible and it must be held that those signs are conceptually similar, albeit to a very low degree.
76      It may be added that, as the Board of Appeal in essence found, even if part of the relevant public understood the English words ‘flaming’, ‘fruits’ and ‘forties’, there would then be a high degree of conceptual similarity between the signs at issue on account of the identical concept linked to the word ‘flaming’, which is present in both signs and means ‘burning’, the identity of the concept of fruits, on account of the term ‘fruits’ in the earlier sign and the depictions of fruits in the sign applied for, and the similar concepts arising out the number ‘40’ and the term ‘forties’, which refer to the notion of about 40 or to the 1940s.
The global assessment of the likelihood of confusion
77      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).
78      The applicant submits that there is no likelihood of confusion.
79      EUIPO and the intervener dispute the applicant’s arguments.
80      The Board of Appeal stated, first, that the goods and services at issue were identical, with the exception of the ‘sporting and cultural activities’ covered by the mark applied for, which were similar to the services covered by the earlier mark, secondly, that the signs at issue were visually and phonetically similar, pointing out that the first distinctive word element ‘flaming’ was identical and that there were similarities on account of their second word elements, thirdly, that the inherent distinctiveness of the earlier mark was average and, fourthly, that the attention of consumers could be enhanced with regard to some of the goods and services at issue. It concluded that there was a likelihood of confusion on the part of the Bulgarian public (paragraph 61 of the contested decision).
81      First of all, it must be stated that the applicant’s claim that the Board of Appeal erred in not taking the high level of attention of the relevant public with regard to some of the goods at issue into consideration in the global assessment (see paragraph 30 above) is unfounded.
82      Next, it must be borne in mind that the goods and services at issue are identical or similar to a low degree. The signs at issue have the distinctive element ‘flaming’ in common, which constitutes the first of the two words in the sign applied for and the first of the two words in the earlier sign. In the light of the substantial part of the relevant Bulgarian public which reads Latin characters and does not understand the meaning of the English terms ‘flaming’ and ‘forties’, but which is capable of perceiving that of the word ‘fruits’, the signs at issue are visually similar to a low degree and phonetically similar to an average degree, whereas there is a very low degree of conceptual similarity between those signs. Furthermore, the applicant does not dispute the Board of Appeal’s assessment relating to the average degree of inherent distinctiveness of the earlier mark, taken as a whole, and there is no need to call that assessment into question. Lastly, the Board of Appeal did not make any error of assessment in finding that the level of attention of the abovementioned relevant public varied from average to high according to the goods and services concerned.
83      In the light of all of the factors referred to in paragraph 82 above, it must be held that the Board of Appeal was right in finding that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion on the part of the relevant public. Since consumers have an imperfect recollection of trade marks, it is very likely that, in the light of the presence and the position of the distinctive element in common ‘flaming’ in the marks at issue, the relevant public, even though it displays a high level of attention with regard to some of the goods and services at issue, may be led to believe that the goods and services at issue come from the same undertaking or from economically linked undertakings.
84      In view of all of the foregoing considerations, since the single plea in law put forward by the applicant in support of its claims must be rejected, the action must be dismissed, without it being necessary to rule either on the plea of inadmissibility put forward by EUIPO, alleging that the first part of the applicant’s second head of claim, requesting that the Court allow the trade mark application in its entirety, is inadmissible, or on its observations regarding the second part of that head of claim, seeking, in the alternative, the remittal of the case to the Board of Appeal.
Costs
85      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 (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Impera GmbH to pay the costs.
Spielmann
Spineanu-Matei
Mastroianni
Delivered in open court in Luxembourg on 25 November 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.