JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
28 April 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark ACCUSÌ – Earlier EU word mark ACÚSTIC – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑300/20,
Nosio SpA, established in Mezzocorona (Italy), represented by J. Graffer, G. Rubino and A. Ottolini, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Tros del Beto, SLU, established in Marçà (Spain),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 13 March 2020 (Case R 871/2019-1), relating to opposition proceedings between Tros del Belo and Nosio,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, U. Öberg (Rapporteur) and R. Mastroianni, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 May 2020,
having regard to the response lodged at the Court Registry on 4 September 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 8 November 2016, the applicant, Nosio SpA, filed an application for registration of a European Union 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)), for the word mark ACCUSÌ.
2        The goods in respect of which registration was sought are in Classes 32 and 33 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 32: ‘Beers; Mineral, natural and aerated waters; Fruit beverages and fruit juices; Aperitifs, non-alcoholic; Cocktails, non-alcoholic’;
–        Class 33: ‘Alcoholic beverages, especially wines and sparkling wines’.
3        On 20 March 2017, the opponent, Tros del Beto, SLU, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 2 above.
4        The opposition was based on the following earlier marks:
–        the Spanish word mark ACÚSTIC filed on 27 July 2005 and registered on 1 February 2006 under number 2664091, designating goods in Class 33 and corresponding to the following description: ‘Alcoholic beverages (except beers)’;
–        the international registration designating the United Kingdom of the following figurative mark, registered on 17 August 2006 under number 901514, designating the goods in Class 33 referred to in the first indent of paragraph 4 above;
–        The EU word mark ACÚSTIC filed on 19 November 2009 and registered on 18 March 2010 under number 8696908, designating goods in Classes 29, 30, 32 and 33 and corresponding, for each of those classes, to the following description:
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;
–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking – powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;
–        Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;
–        Class 33: ‘Alcoholic beverages (except beers)’;
–        the following EU figurative mark, filed on 25 February 2013 and registered on 27 June 2013 under number 11600053, designating the goods in Class 33 referred to in the first indent of paragraph 4 above:
5        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), in so far as, according to the opponent, there was a likelihood of confusion between the signs at issue.
6        On 6 December 2017, the applicant requested proof of use of the earlier marks and registrations referred to in the first, second and third indents of paragraph 4 above. On 16 April 2018, within the prescribed period, the opponent adduced various pieces of evidence of use.
7        On 20 February 2019, the Opposition Division, after stating that the opposition would be examined in relation to the earlier EU word mark, the best case scenario for the opponent, held that, given the differences between the signs at issue, there was no likelihood of confusion between those signs on the part of the relevant public. Having thereby rejected the opposition, the Opposition Division specified that there was no need to examine proof of use of the earlier mark. It went on to extend the rejection of the opposition to the other earlier marks and registrations.
8        On 18 April 2019, the opposing party filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By decision of 13 March 2020 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division. At the outset, the Board of Appeal stated that it would carry out the examination of the opposition in relation to the registration of the earlier mark. First of all, the Board of Appeal held that it was not possible to assess the level of attention of the relevant public without having carried out a preliminary assessment of proof of use of the earlier mark, as that assessment is dependent on, inter alia, the nature of the goods in respect of which that proof could be adduced. Next, the Board of Appeal stated that the signs at issue had an average degree of distinctiveness and an average degree of visual and phonetic similarity and that the conceptual comparison did not have an influence on the global assessment of their similarity. Regarding the comparison of the goods, the Board of Appeal stated that that comparison could take place only after determining the goods in respect of which proof of use of the earlier mark had been adduced. Last, the Board of Appeal, after having rectified the Opposition Division’s assessment of the similarity of the signs at issue and found that a likelihood of confusion could not be ruled out, remitted the case to the Opposition Division for an assessment of proof of genuine use of the earlier mark and a new decision on whether there is a likelihood of confusion.
Forms of order sought
10      The applicant claims that the Court should:
–        confirm that when proof of use is requested by the applicant for an EU trade mark and evidence of use has been submitted by the opponent, that evidence must be examined before assessing the likelihood of confusion;
–        annul the contested decision in so far as it declares the signs at issue to be visually and phonetically similar to an average degree and the conceptual similarity not to have an impact on the assessment of similarity, without a prior examination of proof of use;
–        declare that the signs at issue are dissimilar;
–        confirm the decision of the Opposition Division; and
–        allow registration of the mark applied for.
11      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
12      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, composed, in essence, of two complaints. In the first place, the applicant claims that the Board of Appeal’s reasoning is contradictory, because it cannot hold that the signs at issue are similar without having carried out a preliminary examination of proof of use of the earlier mark, and that the contested decision is vitiated by a failure to state reasons in that regard. In the second place, the applicant submits that the Board of Appeal incorrectly found that the signs at issue are similar.
The application ratione temporis of the regulations on the European Union trade mark
13      It should be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 8 November 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (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). Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the substantive provisions of Regulation 2017/1001.
14      As a result, in the present case, as regards substantive rules, references made to Regulation 2017/1001 by the Board of Appeal in the contested decision, by the applicant in its arguments and by EUIPO, should be understood as referring to the articles of Regulation No 207/2009, which are identical in content.
Substance
The alleged contradiction and the failure to state reasons in the contested decision
15      The applicant claims that the Board of Appeal’s decision is contradictory. According to the applicant, the Board of Appeal could not, on the one hand, assert that it had no information relating to the relevant public, the nature of the goods in question or their distribution channels without having examined the use of the earlier mark and, on the other hand, draw conclusions relating to the similarity of the signs at issue, as those factors are interdependent.
16      The applicant adds that the contested decision is vitiated by a failure to state reasons in so far as the Board of Appeal did not answer the question whether proof of use of the earlier mark had to be examined before carrying out the analysis of the similarity of the signs at issue.
17      EUIPO disputes the applicant’s arguments.
18      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.
19      Under Article 42(2) and Article 15(1) of Regulation No 207/2009, opposition to registration of an EU trade mark must be rejected if the proprietor of the earlier trade mark at issue does not furnish proof that the earlier mark has been put to genuine use by its proprietor during the period of five years preceding the date of publication of the EU trade mark application. However, if the proprietor of the earlier trade mark furnishes that proof, EUIPO will examine the grounds for refusal advanced by the opposing party. Thus, if the earlier EU trade mark has been used in relation to only part of the goods or services for which it was registered it will, for the purposes of the examination of the opposition under Article 8(1)(b), be deemed to be registered in respect of only that part of the goods or services.
20      Once raised by the applicant of the mark which is the subject of the opposition, the question concerning proof of genuine use of the earlier mark must be settled before a decision is taken on the opposition itself and is, in that sense, a ‘preliminary issue’ (see, to that effect, judgments of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 88, and of 22 March 2007, Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraph 37 and the case-law cited).
21      The specific and preliminary nature of that issue stems from the fact that the analysis of genuine use leads to a determination whether, for the purposes of the examination of the opposition, the earlier mark can be deemed to be registered in respect of the goods or services concerned. This issue is therefore outside the scope of the examination of the opposition itself, based on the existence of a likelihood of confusion (see, to that effect, judgments of 27 March 2014, Intesa Sanpaolo v OHIM – equinet Bank (EQUITER), T‑47/12, EU:T:2014:159, paragraph 19, and of 15 February 2017, M. I. Industries v EUIPO – Natural Instinct (Natural Instinct Dog and Cat food as nature intended), T‑30/16, not published, EU:T:2017:77, paragraph 90).
22      In the present case, it is clear that the parties do not dispute that proof of use of an earlier mark must be examined as a preliminary matter in order to establish a series of factors such as the relevant public and its level of attention as well as the nature of the goods in question, which have an influence on the assessment of the likelihood of confusion between the signs at issue.
23      It should also be noted that it is common ground between the parties that there is an exception to that obligation to examine, as a preliminary matter, proof of genuine use of an earlier mark, that is to say, where the signs at issue are different, according to the applicant, or where the existence of a likelihood of confusion can be ruled out on the part of the average consumer of the goods and services in question, according to EUIPO.
24      In that regard, although it is apparent from the case-law cited in paragraph 20 above that genuine use of an earlier mark is a question which, when raised expressly, must, in principle, be settled before a decision is taken on the opposition itself, the Court has also held that, where there is no likelihood of confusion between the signs at issue, it is not necessary to examine proof of use of the earlier mark (see, to that effect, judgments of 15 February 2005, Lidl Stiftung v OHIM – REWE-Zentral (LINDENHOF), T‑296/02, EU:T:2005:49, paragraph 43, and of 4 February 2016, Meica v OHIM – Salumificio Fratelli Beretta (STICK MiniMINI Beretta), T‑247/14, EU:T:2016:64, paragraph 80).
25      It should also be pointed out that it is not apparent from the provisions of Regulation No 207/2009 or from the case-law cited in paragraphs 20, 21 and 24 above that the examination of proof of genuine use is, in all circumstances, an obligatory preliminary step before the analysis of the similarity of the signs at issue.
26      On the contrary, it is apparent from the case-law that the EUIPO authorities and the Court can carry out a comparison of the signs at issue by taking into consideration a situation which is fictitious but close to reality, determining a hypothetical relevant public having regard to the goods and services in respect of which the earlier mark can be deemed to be registered (see, to that effect, judgments of 15 February 2005, LINDENHOF, T‑296/02, EU:T:2005:49, paragraphs 49 to 68; of 26 September 2014, Koscher + Würtz v OHIM – Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraphs 44 to 68; and of 4 February 2016, STICK MiniMINI Beretta, T‑247/14, EU:T:2016:64, paragraphs 42 to 64).
27      In the present case, paragraphs 26 to 45 and 49 to 57 of the contested decision allow the applicant and the Court to understand that the comparison of the signs at issue is based on a fictitious definition of the relevant public regarded as the recipient of the goods covered by those signs. As correctly noted by EUIPO, it is implicitly apparent from the contested decision that the Board of Appeal found that it was appropriate to assess the similarity of the signs at issue from the point of view of the average consumer, whose level of attention with regard to the various types of goods in question, all of which are drinks, was average.
28      It was not therefore contradictory for the Board of Appeal to recognise that the relevant public and its level of attention were dependent on the nature and characteristics of the goods in question, as those factors can be established with certainty only after an examination of the proof of use of the earlier mark. In the context of the analysis of the similarity of the signs at issue, the Board of Appeal could also take into account a fictitious relevant public, having regard to the type of goods in question in respect of which the earlier mark could be deemed to be registered.
29      In addition, in so far as the applicant complains that the Board of Appeal failed to fulfil its duty to state reasons by failing to rule on the question of the obligatory examination of proof of use of the earlier mark as a preliminary step before the analysis of the similarity of the signs at issue, it must be noted that the applicant’s complaint stems from a misreading of the contested decision. In paragraph 19 of that decision, the Board of Appeal stated that it assessed whether the Opposition Division’s approach was correct, that is to say, whether ‘the likelihood of confusion [could] be ruled out without assessing the evidence of use’.
30      However, it is apparent from paragraphs 61 to 67 of the contested decision that the Board of Appeal considered that, as the differences between the marks at issue were not sufficient to rule out the existence of a likelihood of confusion on the part of the relevant public, the preliminary examination of genuine use of the earlier mark had to be carried out. The statement of reasons in the contested decision therefore complies in that regard with Article 94 of Regulation 2017/1001.
31      As a result, the applicant’s first complaint must be rejected.
The comparison of the signs at issue
32      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).
33      In the present case, the Court will examine whether the Board of Appeal correctly found that the signs at issue were visually and phonetically similar to an average degree and the conceptual aspect had no notable influence on the overall comparison of those signs.
–       The distinctive and dominant elements of the signs at issue
34      The applicant submits, in essence, that the signs at issue are marks made up of a single word that do not necessarily contain a dominant or distinctive element.
35      In the present case, it is not apparent from the contested decision that the Board of Appeal ruled on whether the signs at issue contain a distinctive or dominant element. It did, by contrast, find that the signs at issue had an average degree of distinctiveness, which the parties do not dispute.
36      As the mark applied for is made up of the single word element ‘accusì’ and the earlier mark is made up of the word element ‘acústic’, the signs at issue consist of a single word that will not be broken down by the relevant public, but will be perceived as a whole by that public.
–       The visual, phonetic and conceptual comparison
37      The applicant claims that the Board of Appeal incorrectly found that the signs at issue were visually and phonetically similar to an average degree. In essence, from a visual standpoint, it submits that the Board of Appeal arbitrarily and artificially dissected the signs at issue by concentrating on the number of matching letters. The Board of Appeal therefore failed to carry out a global assessment of those signs considered as a whole and failed to attribute the required significance to the differences between those signs, as they should be regarded as having a low degree of similarity. For the same reasons, the applicant submits that the signs at issue must be regarded as phonetically different. From a conceptual standpoint, it submits that, in so far as the relevant public will always be capable of attributing a meaning to the word element ‘acústic’ of the earlier mark, the signs at issue are either different or dissimilar, according to whether the relevant public attributes a meaning to the word element ‘accusì’ of the mark applied for.
38      EUIPO disputes the applicant’s arguments.
39      In the first place, regarding the visual comparison, it must be stated that the words making up the signs at issue have a similar length of six and seven letters, respectively, and have the letters ‘a’, ‘c’, ‘u’, ‘s’ and ‘i’ in common, with the letters ‘a’ and ‘c’ placed at the beginning of the sign.
40      Although it has previously been held that the first part of the mark tended to have a greater visual impact that the final part, so that the consumer, in general, pays greater attention to the first part of a mark than to the end, such a consideration cannot be valid in all cases (see judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 51 and the case-law cited).
41      Moreover, the mere presence of the common letters does not in itself justify the conclusion that the signs at issue are visually similar (see, to that effect, judgments of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 51, and of 20 September 2018, UROAKUT, T‑266/17, EU:T:2018:569, paragraph 52).
42      It is also apparent from case-law that the similar number of letters which make up two word marks does not have, in itself, any particular importance for the public targeted by those marks. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have a similar number of letters (see, to that effect, judgments of 13 June 2019, Pet King Brands v EUIPO – Virbac (SUIMOX), T‑366/18, not published, EU:T:2019:410, paragraph 96 and the case-law cited, and of 26 March 2020, Conlance v EUIPO – LG Electronics (SONANCE), T‑343/19, not published, EU:T:2020:124, paragraph 41).
43      In the present case, it should be noted that the signs at issue also have a certain number of differences from a visual standpoint such as, for the mark applied for, a double letter ‘cc’ and an accent on the letter ‘i’ and, for the earlier mark, an accent on the letter ‘u’, the letter ‘t’ after the letter ‘s’ and the letter ‘c’ at the end of the sign. The additional letters and the different position of certain common letters and accents placed on different vowels on each of the signs at issue are not insignificant for the purposes of the visual comparison and are likely to attract the attention of the public and offset, in the context of an overall impression, the effect produced by the elements of similarity.
44      Therefore, although it is appropriate to find that the signs at issue are similar in part due to the fact that the initial letters ‘a’ and ‘c’ are identical and the letters ‘u’, ‘s’ and ‘i’ are shared, their differences, on account of the presence of additional letters, the different order of some of the letters and the accents placed on different vowels, contribute in large part to the global impression which they give.
45      In the light of the foregoing, contrary to the Board of Appeal’s finding in paragraph 41 of the contested decision, it must be found that the signs at issue, taken as a whole, have a low, not average, degree of visual similarity.
46      In the second place, regarding the phonetic comparison, it must be noted that the earlier mark is made up of the three syllables ‘a’, ‘cú’ and ‘stic’ and the mark applied for is made up, for its part, of the three syllables ‘ac’, ‘cu’ and ‘sì’. However, the presence in the earlier mark of an accent on the letter ‘u’ and a third syllable ‘stic’, made up of the sibilant consonant ‘s’ and the occlusive consonants ‘t’ and ‘c’, results in a specific intonation. In addition, the double consonant ‘cc’, the accent placed on the last letter ‘i’ and the resulting potential pronunciation of the letter ‘s’ of the syllable ‘sì’ of the mark applied for as a fricative consonant accentuate the phonetic difference between those signs.
47      The signs at issue must therefore be found to have a low degree of phonetic similarity, even though the Board of Appeal found in paragraph 43 of the contested decision that they have an average degree of similarity in that regard.
48      In the third place, as regards the conceptual comparison, it must be stated that the parties do not dispute that the word element ‘accusì’ of the mark applied for can refer, for part of the relevant public, to the verb ‘accuse’ and will have no meaning for the rest of that public.
49      By contrast, as regards the earlier mark, it must be noted that, as the applicant correctly submits, the relevant public will understand the word element ‘acústic’ as relating to sound, more specifically, the sounds made by an acoustic musical instrument, that is to say, without electronic amplification. The Spanish word ‘acústic’ is close to the English word ‘acoustic’, so that the part of the relevant public with some knowledge of English will understand the meaning of that word. Moreover, contrary to EUIPO’s submissions, the word element ‘acústic’ in Spanish is close to possible translations thereof in other languages of the European Union, such as, inter alia, ‘akustisch’ in German, ‘акустичен’ in Bulgarian (pronounced ‘akustichen’), ‘akustična’ in Croatian, ‘akustisk’ in Danish and Swedish, ‘akustiline’ in Estonian, ‘akustinen’ in Finnish, ‘acoustique’ in French, ‘aκουστικός’ in Greek (pronounced ‘akoustikós’), ‘akusztikus’ in Hungarian, ‘acustico’ in Italian, ‘akustiskā’ in Latvian, ‘akustinis’ in Lithuanian, ‘akustiku’ in Maltese, ‘akoestisch’ in Dutch, ‘akustyczny’ in Polish, ‘acústico’ in Portuguese, ‘acustic’ in Romanian, ‘akustický’ in Slovak, ‘akustična’ in Slovenian and ‘akustický’ in Czech. The part of the relevant public less familiar with the English language will therefore nevertheless be likely to attribute a meaning to the word element ‘acústic’ of the earlier mark.
50      The signs at issue are therefore conceptually different for the part of the relevant public that will attribute a meaning to the concept ‘accusì’ of the mark applied for. By contrast, they are not similar for the part of that public for which the term ‘accusì’ does not have any meaning (see, by analogy, judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 55, and of 19 December 2019, Vins el Cep v EUIPO – Rotkäppchen-Mumm Sektkellereien (MIM NATURA), T‑589/18, not published, EU:T:2019:887, paragraph 56 and the case-law cited).
51      Therefore, the signs at issue must be regarded as conceptually different or dissimilar, according to whether the relevant public attributes a meaning to the word element ‘accusì’ of the mark applied for, and the Board of Appeal incorrectly found, in paragraph 44 of the contested decision, that the conceptual comparison was neutral for part of the relevant public.
52      In addition, the Board of Appeal, in its analysis of the similarity of the signs at issue, incorrectly found that the conceptual comparison did not have a notable influence on the visual and phonetic similarities or differences of those signs.
53      It is settled case-law that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and the extent of the similarity or difference between those signs may depend on their inherent qualities (see, to that effect, judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49 and the case-law cited).
54      It also follows from the case-law of the Court of Justice that the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract phonetic and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 74 and the case-law cited).
55      It is apparent from the case-law cited in paragraphs 53 and 54 above that the extent of the similarity or difference between the signs at issue and the potential counteraction of the similarities must be examined at the stage of the global assessment of the likelihood of confusion.
56      In the present case, the Board of Appeal stated expressly that it would not carry out such an assessment of the likelihood of confusion, as that assessment would only be possible, according to the Board of Appeal, after an examination of genuine use of the earlier mark in respect of all the goods covered. It could not, therefore, at the stage of the comparison of the signs at issue, find that the conceptual standpoint had no influence.
57      Nevertheless, the errors committed by the Board of Appeal in the context of the analysis of the similarity of the signs at issue are not such as to result in the annulment of the contested decision.
58      Those errors cannot in themselves weaken the significance of the Board of Appeal’s finding that, in the light of the similarities between the signs at issue, it was not possible to take a decision on whether there was a likelihood of confusion without carrying out, as a preliminary step, the examination – which can be carried out by the Opposition Division – of proof of genuine use of the earlier mark.
59      In that regard, first, as is apparent from the case-law cited in paragraph 24 above, it is only where there is no likelihood of confusion between the signs at issue that it is not necessary to examine proof of use of the earlier mark.
60      However, the differences between the signs at issue stated in paragraphs 43, 46 and 50 above are not necessarily such as to rule out, on their own, the possibility of a likelihood of confusion, in particular on the assumption that the earlier mark is highly distinctive and the dissimilarities between the signs at issue do not outweigh the similarity or potential identity of the goods in question, so that the relevant public might believe that the goods in question come from the same undertaking or from economically linked undertakings.
61      Therefore, the Board of Appeal did not err in finding that a likelihood of confusion between the signs at issue on the part of the relevant public could not be ruled out.
62      Second, pursuant to Article 71(1) of Regulation 2017/1001, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution, so that, in the present case, it did not err in deciding to remit the case to the Opposition Division.
63      It follows from all the foregoing that the applicant’s second complaint must be rejected and, as a result, the action in its entirety must be dismissed, without there being any need to rule on the admissibility of the form of order sought by the applicant.
64      It should be specified that it will be for EUIPO, as a result of the present judgment, to make a new decision on the likelihood of confusion between the two signs at issue, if applicable. It will thus be for EUIPO, when comparing those signs, to draw the inferences of a potential lack of genuine use of the earlier mark for some of the goods covered.
Costs
65      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. Moreover, under Article 134(3) of the Rules of Procedure, the Court may order that the costs be shared if it appears justified in the circumstances of the case.
66      In the present case, having regard to the errors that vitiated the contested decision, even though that decision has not been annulled, the Court orders each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Spielmann
Öberg
Mastroianni
Delivered in open court in Luxembourg on 28 April 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.