JUDGMENT OF THE GENERAL COURT (Seventh Chamber, Extended Composition)
22 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark flyPersia – Earlier EU figurative mark flydubai – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑30/23,
Fly Persia IKE, established in Athens (Greece),
Ali Barmodeh, residing in Athens,
represented by R. Marano, lawyer,
applicants,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Dubai Aviation Corp., established in Dubai (United Arab Emirates),
THE GENERAL COURT (Seventh Chamber, Extended Composition),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg, G. Hesse, I. Dimitrakopoulos and B. Ricziová (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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
1        By their action under Article 263 TFEU, the applicants, Fly Persia IKE and Mr Ali Barmodeh, seek the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 November 2022 (Case R 1723/2021-4) (‘the contested decision’).
I.      Background to the dispute
2        On 13 February 2019, the applicants filed an application for registration of an EU trade mark with EUIPO for the following figurative mark:
3        The mark applied for covered services in, inter alia, Class 39 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, corresponding inter alia to the following description: ‘Air transport; airline transport; airline bookings; airline services; airport services; aircraft handling; aircraft rental; airplane rental; aircraft parking; aircraft chartering; airplane chartering; aircraft charter brokerage; aircraft chartering services; aircraft (rental of -); airline ticket services; airline ticket reservation services; air ticket booking services; arranging airline tickets, cruise tickets and train tickets; ticket booking services for travel; booking of tickets for travel; ticketing services for travel; booking of rail tickets; booking of air tickets; travel ticket reservation services; ticket reservation services (travel -); supplying tickets to enable holders to travel; arrangement of travel to and from hotels; transport; transportation; transit services; transport reservation; car transport; transport services; reservation (transport -); ship transport; transshipment services; air transportation; information (transportation -); cargo transportation; freight transportation; airport transfer services; air cargo transport; transport of travellers; freight train transport; information on transport; transport by boat; chartering of transport; ferry transport services; transport of goods; hired car transport; transport by rail; transport by road; rail transport services; ship transport services; cargo ship transport; freight ship transport; food transportation services; arranging of air transport; air cargo transport services; air passenger transport services; arrangement of taxi transport; hire of transport vehicles; rental of transport vehicles; cruise ship transport services; hire of rail transport; hire of road transport; freight transportation by air; air transportation of freight; travel and passenger transportation; transportation check-in services; reservation of air transportation; air transportation of passengers; transport of cargo by air; transport of passengers by boat; transport of passengers by bus; transport of passengers by coach; transport of freight by air; arranging of transport and travel; transport of travellers by land; transport of travellers by air; transport of passengers by car; rental of vehicles for transport; contract hire of transport vehicles; transportation of passengers by omnibus; transportation of passengers by bus; arranging the transportation of goods; services for arranging transportation by air; services for arranging transportation by water; reservation services for transportation by boat; reservation services for transportation by sea; reservation and booking services for transportation; arrangement of transportation of passengers by cars; arranging the transportation of passengers by sea; services for arranging the transportation of travellers; airline services for the transportation of passengers; arrangement of transportation of passengers by ships; arranging transport services by land, sea and air; agency services for arranging the transportation of persons; travel agency services, namely arranging transportation for travellers; arranging transport of passengers by air, rail and sea; agency services for arranging the transportation of travellers’ luggage; air transportation services featuring a frequent flyer bonus program; travel agency services, namely, making reservations and bookings for transportation; airline transportation services; airline check-in services; airline and shipping services; scheduled passenger airline services; reservation services for airline travel; booking agency services for airline travel; planning and booking of airline travel, via electronic means; providing information relating to the planning and booking of airline travel, via electronic means; provision of information relating to airline scheduling; provision of information relating to airline departures; arranging the emergency replacement of airline tickets’.
4        On 4 June 2019, the other party to the proceedings before the Board of Appeal, Dubai Aviation Corp., filed a notice of opposition to registration of the mark applied for in respect of the services in Class 39 covered by the mark applied for.
5        The opposition was based on the earlier EU mark, filed on 23 September 2008, registered on 17 June 2009 under number 7 253 123 and duly renewed for several services in Class 39, in relation to which genuine use has been established for ‘airline services, air transportation services, aircraft chartering services; courier services; cargo handling services; delivery of goods by air; escorting of travellers; freight brokerage and freight forwarding services; airport ground handling services; packing and storage of goods; booking and reservation agencies for travel; travel agency services; provision of assistance in flight check-in and travel arrangements; information and advisory services relating to all the aforesaid services being services in Class 39’, as reproduced below:
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of 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).
7        On 13 August 2021, the Opposition Division upheld the opposition in respect of all the services in Class 39 referred to in paragraph 3 above.
8        On 6 October 2021, the applicants filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal. It held in particular, first, that the relevant public for the purposes of its analysis was the Slovak, Slovenian, Hungarian and Czech non-English-speaking general public and professionals whose level of attention was either average or high, second, that the services in question were partly identical, partly similar to an average degree and partly similar to a low degree, third, that the marks at issue were visually similar to at least an average degree and phonetically similar to a high degree and, fourth, that the inherent distinctiveness of the earlier mark was normal. Lastly, it concluded that there was a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001.
II.    Forms of order sought
10      The applicants claim that the Court should:
–        annul the contested decision;
–        refer the case back to the Board of Appeal;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicants to pay the costs in the event that an oral hearing is convened.
III. Law
A.      The head of claim seeking the annulment of the contested decision
12      The applicants rely on a single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 in that the Board of Appeal erred in finding that there was a likelihood of confusion under that provision in respect of the services covered by the mark applied for from the perspective of at least part of the non-English-speaking part of the relevant public, namely the Slovak, Slovenian, Hungarian and Czech public, regardless of the level of attention.
13      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 two 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.
14      The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. 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).
15      In the present case, in paragraphs 42 to 45 of the contested decision, the Board of Appeal found, first, that the relevant public was made up of the general public and professionals, whose level of attention varied from average to high, and that, for those services which address both the general public and professionals, whose levels of attention differed, account had to be taken of the level of attention of the part of the relevant public whose level of attention was lowest. Second, it stated that the relevant territory was that of the whole of the European Union and that it would examine the opposition from the perspective of the non-English-speaking part of the relevant public, focusing in particular on the Slovak, Slovenian, Hungarian and Czech public (‘the relevant public in question’).
16      As regards the comparison of the services covered by the marks at issue, the Board of Appeal held, in paragraphs 50 to 55 of the contested decision, that the services in question were partly identical and partly similar to an average or low degree.
17      The findings of the Board of Appeal summarised in paragraphs 15 and 16 above are not disputed by the applicants.
1.      Comparison of the marks at issue
18      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, 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 appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
19      In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, the Board of Appeal’s assessment of the distinctive and dominant elements of those marks must be examined.
(a)    The distinctive and dominant elements of the marks at issue
20      The Board of Appeal found, first, that the word element ‘fly’, common to the marks at issue, was an English word that was meaningless and distinctive at least for the relevant public in question. The word ‘fly’ was not a basic English word simply because it is used with frequency.
21      Second, according to the Board of Appeal, since the word element ‘dubai’ of the earlier mark resembles its equivalent ‘dubaj’ in Slovak, Slovenian, Hungarian and Czech, in the context of transport and travel-related services, it will be perceived as a non-distinctive reference to a city or place. Similarly, the word element ‘persia’ of the mark applied for resembles its equivalent in Czech, Slovak, Hungarian and Slovenian (Persie/Perzia/Perzsa/Perzija) and, therefore, in the same context, it will be perceived as a non-distinctive reference to a territory, probably on the Persian Gulf.
22      Third, the Board of Appeal found that, in the marks at issue, the colour scheme and font stylisation were decorative. In the earlier mark, none of the elements of that mark is dominant. As regards the mark applied for, the loop of the letter ‘a’ in the word ‘persia’, which takes the form an aeroplane, is descriptive in the context of travel-related services. Neither of the two elements ‘fly’ and ‘persia’ is more dominant than the other. The script of the Persian expression below the element ‘flypersia’ is diminutive and undecipherable for the relevant public in question and therefore has no impact. The element ‘flypersia’ is therefore dominant.
23      It should be borne in mind that, with regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition, and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
24      Moreover, the weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 32). Furthermore, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name of the trade mark than by describing its figurative element (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
25      In the present case, it should be noted that the Board of Appeal’s findings that the colour scheme and font stylisation in the two marks at issue are merely decorative, that the loop of the letter ‘a’ in the word ‘persia’, which takes the form of an aeroplane, is descriptive in the context of travel-related services and that the element ‘flypersia’ is dominant, are not disputed by the applicants.
(1)    The distinctive character of the term ‘fly’
26      The applicants claim that the relevant public in question either knows the exact meaning of ‘fly’ as moving through the air or travelling by aeroplane or associate that term with the concepts of flight, aeroplane, airport, airlines or air travel in general. According to the applicants, there are no grounds for assuming that the English word ‘fly’ is meaningless and distinctive for those services and that relevant public.
27      In support of that claim, the applicants maintain that English is frequently used in the airline services sector, including in promotional slogans targeting non-English-speaking EU consumers, and that the term ‘fly’ forms part of the basic vocabulary of English. They add that Slovakia, Slovenia, Hungary and the Czech Republic have no domestic commercial routes and that, therefore, consumers from those countries are always passengers on international flights, except in the case of private flights. Consequently, they would be more exposed to the use of English so as better to understand the descriptive meaning of the word ‘fly’.
28      EUIPO contends that the applicants have failed to establish that the Board of Appeal erred in its finding that the word element ‘fly’ was perceived by the relevant public in question as meaningless and distinctive. In that regard, it observes in particular that the argument that the word ‘fly’ forms part of the basic vocabulary of English, because it is used with a certain frequency, is not supported by any admissible evidence and that none of the evidence submitted by the applicants to the Board of Appeal, aimed at proving that ‘fly’ is very recurrent in advertising in the aviation industry targeting non-English-speaking EU customers, concerns either Slovakia or Slovenia. It also notes that the evidence filed in relation to the Czech Republic and Hungary, being limited to one promotional video for each of those countries, is insufficient to demonstrate that the relevant public concerned has been widely exposed to the word ‘fly’ and will therefore understand its meaning. Moreover, it notes that several airlines mentioned by the applicants as using the term ‘fly’ ceased operations long before the date of the application for registration of the mark applied for or are based outside the E uropean Union.
29      Furthermore, according to EUIPO, the argument that consumers of air travel services from the countries concerned are more exposed to the use of English for the provision of airline services than consumers coming from other EU countries is unconvincing and, in any event, unproven.
30      It should be noted, first of all, that the Board of Appeal did not deny that, in the airline sector, English was used as a vehicular language in the countries of the European Union, including in non-English-speaking countries such as Slovakia, Slovenia, Hungary and the Czech Republic.
31      It should also be emphasised that the Board of Appeal has also not denied the fact that the term ‘fly’ was currently used in relation to airline services. However, contrary to the position taken by the Board of Appeal in paragraph 61 of the contested decision, it must be held that the frequency with which that term is used in the context of airline transport must necessarily also have an impact on the capacity to understand of the relevant public in question which does not speak English but which frequently sees that term in relation to airline services. Its use in that context is even frequent enough to permit a finding that that public is capable of discerning its meaning in the context of air transport, including as a reference to air travel or, simply, flight.
32      It should be noted that the term ‘fly’ often forms part of airline names and that therefore it regularly appears on aircraft and in all forms of advertising offering the services of those airlines. Thus, the relevant public in question is frequently exposed to that term, in particular in an airport, even in cases where it is not travelling with an airline whose name contains that term. In that regard, the frequency with which that term is used in airline names is shown by the evidence submitted by the applicants to the Board of Appeal, from which it follows that, on the date of the application for registration of the mark applied for, there were at least nine airlines other than those belonging to the other party to the proceedings before the Board of Appeal whose names contained the word ‘fly’ that operate flights to EU countries. That evidence also shows that at least one of those airlines operates flights in all of the four countries concerned, namely Slovakia, Slovenia, Hungary and the Czech Republic.
33      Moreover, the relevant public in question is repeatedly exposed to the term ‘fly’, not only in promotional slogans, as shown in the screenshots and printed versions of the websites and promotional videos of various airlines submitted to the Board of Appeal, but also in the flight information, airport installations and in-flight magazines of the airlines.
34      Furthermore, in so far as the Board of Appeal took into account, in paragraph 75 of the contested decision, the judgment of 30 November 2017, FTI Touristik v EUIPO – Prantner and Giersch (Fl) (T‑475/16, not published, EU:T:2017:856), it is sufficient to note that the applicant’s argument in that case did not relate, as in the present case, to the non-English-speaking part of the relevant public, and therefore the General Court did not rule, in an explicit and reasoned manner, on that part of the relevant public’s understanding of the word ‘fly’.
35      In those circumstances, it must be held that the word element ‘fly’ does not have distinctive character in the context of the air-transport-related services in question, since the relevant public in question will understand the word ‘fly’ as a reference to air travel or a flight. Only a negligible part of the relevant public in question will not understand that term in that context. Therefore, the Board of Appeal committed an error of assessment in finding that that word had distinctive character for the relevant public in question.
36      On the other hand, it must be held that the element ‘fly’ has a weak distinctive character in relation to the services covered by the mark applied for connected with car, ship and rail transport. Nonetheless, that word, which does not describe inland or maritime modes of transport, evokes the concept of travel to which those services can be related.
(2)    The distinctive and dominant character of the terms ‘dubai’ and ‘persia’
37      The applicants complain that the Board of Appeal incorrectly assessed that the terms ‘dubai’ and ‘persia’, in the context of transport and travel-related services, will be perceived by the relevant public in question as a non-distinctive reference to a territory. The applicants allege, on the other hand, that those terms are the distinctive and dominant elements of the marks at issue. They submit, inter alia, that a significant part of the public will perceive the term ‘persia’ as a reference to an ancient or imaginary kingdom, or that it is possible that part of the public would not would not perceive it as a place, but as a meaningless component.
38      EUIPO maintains in particular that it is undisputed that the word elements ‘dubai’ and ‘persia’ will be perceived as references to places or territories, owing to their close resemblance to their linguistic equivalent in Czech, Slovak, Hungarian and Slovenian. They have a direct and specific relationship with the relevant transport services covered by the marks at issue, as they may describe the destination or the origin of such services and are therefore non-distinctive and unsuitable to indicate the commercial origin of the services in question. The fact that airlines can also provide services between locations outside their home countryis ineffective since it cannot change those findings.
39      In the first place, it should be noted, as the Board of Appeal pointed out, that, first, the word element ‘persia’ of the mark applied for resembles its equivalent in Czech, Slovak, Hungarian and Slovenian, that is to say, respectively,’ persie’, ‘perzia’, ‘perzsia’, and ‘perzija’, and would be perceived, by the relevant public in question, in the context of transport and travel services, as a reference to an existing territory, namely the Persian Gulf or, possibly, Iran, or a historic territory, that is to say, an ancient and currently non-existent empire.
40      Second, the word element ‘dubai’ of the earlier mark resembles its equivalent ‘dubaj’ in Slovak, Slovenian, Hungarian and Czech. In the context of transport and travel services, it would be perceived as a reference to a city or place.
41      Accordingly, it must be held that, although the term ‘persia’ would be perceived by a part of the relevant public in question as descriptive in the context of transport and travel services covered by the mark applied for, since that public would understand that the destination or origin of those services is linked to an existing territory, it is undeniable that a non-negligible part of the relevant public in question would perceive that term as a reference to a currently non-existent, if not imaginary, ancient empire. Therefore, for the part of the relevant public concerned, that term has either a descriptive character or a distinctive, but rather weak, character.
42      On the other hand, the word element ‘dubai’ is directly connected, in the perception of the relevant public in question, with the transport and travel services covered by the earlier mark, in so far as it states the destination or geographical origin of those services. It therefore lacks distinctive character.
43      Those considerations, in so far as they concern the lack of distinctive character, cannot be called into question by the argument put forward by the applicants that around 60% of the airline companies’ names contain geographical terms and that the relevant public in question associates such terms with different commercial origins because of the monopoly of national carriers on intercontinental and intra-EU routes for more than 5 0 years. On the contrary, the fact that many airlines now use geographical terms in the marketing of their services makes it more difficult, for the relevant public in question, to associate such terms with a specific undertaking. Therefore, that fact, even if it were established, is not capable of demonstrating that those terms have a distinctive character. Also, the fact that marks containing such terms have acquired a distinctive character through use cannot demonstrate that the geographical terms of the marks at issue have an inherent distinctive character.
44      Moreover, the fact, raised by the applicants, that airlines can provide services between locations situated outside their country of origin is not such as to confer a distinctive character on the term ‘dubai’, given that it is sufficient for that term to be able to indicate the geographical origin of the services covered by the earlier mark. The same applies as regards the term ‘persia’ for the part of the relevant public in question which perceives that term as being descriptive.
45      Therefore, it must be considered that the Board of Appeal did not commit an error of assessment in concluding that the word element ‘dubai’ lacked distinctive character. On the other hand, it committed an error of assessment in holding that the term ‘persia’ had no distinctive character for at least a non-negligible part of the relevant public in question.
46      In the second place, it should be noted that, in each of the marks at issue, the word elements ‘persia’ and ‘dubai’ are clearly and notably different from the common word element ‘fly’, especially in their length, colour and stylisation.
47      In particular, in the mark applied for, the word ‘persia’, which has six letters, is twice as long as the word ‘fly’. Although the two word elements ‘fly’ and ‘persia’ are represented in a fine font, the word ‘fly’ is slightly golden, whereas the word ‘persia’ is mainly grey. The combination of the greater length and the darker colour, and the capital letter’ p’ and the presence of an aeroplane in the word ‘persia’, result s in that word attracting more attention than the word ‘fly’ in the perception of the mark applied for by the relevant public in question. In the earlier mark, the word ‘dubai’, comprising two letters more than the word ‘fly’, because of its greater length, the loop of the letter ‘a’ extending beyond that letter and, in particular, its thicker and blacker font, attracts the attention of the relevant public in question more than the word ‘fly’, which is represented in a fine and grey font.
48      Therefore, the Board of Appeal committed an error of assessment in finding, in essence, that, in the marks at issue, the word elements ‘persia’ and ‘dubai’ were not, for the purposes of the comparison of those marks, more important elements than the element ‘fly’.
(b)    The visual similarity of the marks at issue
49      The Board of Appeal held, in paragraph 65 of the contested decision, that, visually, the marks at issue were similar at least to an average degree, because, first, they coincided in the sole distinctive element ‘fly’, which was stylised in an almost identical font, second, they differed in their remaining word elements, which were non-distinctive, and their stylisation and the colour scheme in which they were depicted, which were purely decorative, third, the simple image of the aeroplane in the mark applied for was descriptive and, fourth, since consumers generally pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally had a greater impact than the final part.
50      The applicants claim that the marks differ in the word elements ‘persia’ and ‘dubai’, their stylisation, their colour scheme and the presence in the mark applied for of the Persian wording below the element ‘flypersia’, which has the same length and is depicted in a noticeable size. The second word elements ‘persia’ and ‘dubai’ will attract the most attention of the relevant public in question because of their dominance and distinctiveness, whereas the common element ‘fly’ will be neglected in the perception of the relevant public because of its non-distinctive character. Therefore, the marks at issue are visually dissimilar.
51      EUIPO disputes the applicants’ arguments, maintaining that the marks at issue are visually similar to an average degree. It states that the marks at issue coincide in the distinctive element ‘fly’, which is meaningless and stylised in an almost identical font. It adds that the loop of the letter ‘a’ in those marks extends beyond that letter, conveying a similar visual impression. It also asserts that the initial part of a mark, which coincides and is depicted in an almost identical way in the two marks at issue, normally has a greater impact than the final part. The differences between those marks, namely the Persian wording, the depiction of an aeroplane in the mark applied for and the word elements ‘persia’ and ‘dubai’, are not, according to EUIPO, capable of neutralising the similarities in the overall impression of those marks.
52      In the present case, the marks at issue coincide in the element ‘fly’, which is descriptive in the context of the air-transport-related services in question covered by those marks or distinctive to a low degree in relation to services covered by the mark applied for which are connected with car, ship and rail transport. That element is placed at the beginning of those marks and is stylised in a very similar font. Those marks differ in their other word elements ‘persia’ and ‘dubai’, their stylisation, including in the presence of the image of an aeroplane in the mark applied for, the colour scheme in which they are depicted and the presence of the Persian wording in the mark applied for.
53      In the present case, the different elements, namely the word elements ‘persia’ and ‘dubai’, the clear difference of which is emphasised by the distinct stylisation of the letters, are dominant in the perception of the marks at issue by the relevant public in question. In so far as the Board of Appeal has held that consumers generally pay greater attention to the beginning of a sign than to its end, it should be recalled that that consideration cannot apply in all cases and cannot, in any event, undermine the principle that the examination of the similarity between the marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not examine its individual details ( see, to that effect, judgments of 10 October 2006, Armacell v OHIM – nmc (ARMAFOAM), T‑172/05, EU:T:2006:300, paragraph 65 and the case-law cited, and of 27 February 2014, Advance Magazine Publishers v OHIM – Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraph 40 and the case-law cited). In that regard, the elements ‘persia’ and ‘dubai’ prevail, in the perception of the marks at issue, over the common element ‘fly’, in spite of its position at the beginning of those marks and its low distinctive character in the context of certain services, for the reasons set out in paragraphs 46 and 47 above.
54      Moreover, although, in the mark applied for, the Persian wording is undecipherable for the relevant public and is depicted in a smaller font than that of the element ‘flypersia’, the fact remains that that wording reinforces that element placed above it, as the Board of Appeal held in paragraph 63 of the contested decision. Therefore, that element plays a not-insignificant role in the overall impression of the mark applied for and helps to differentiate it visually from the earlier mark.
55      In those circumstances, it must be held that there is a low degree of visual similarity between the marks at issue and that, therefore, the Board of Appeal committed an error of assessment in finding that they were visually similar to an average degree.
(c)    The phonetic similarity of the marks at issue
56      The Board of Appeal held, in paragraph 66 of the contested decision, that, phonetically, the marks at issue were similar to an above-average degree, since they coincided in the sound of the sole distinctive element ‘fly’ and differed in their remaining word elements which were non-distinctive.
57      According to the applicants, the marks at issue are phonetically different, since the term ‘fly’ will not produce any ‘lasting’ phonetic impression on the relevant public in question on account of its weak distinctive character. The consumers’ attention will be caught mainly by the sound of the elements ‘persia’ and ‘dubai’.
58      EUIPO disputes the applicants’ arguments, contending that the marks at issue are phonetically similar to an above-average degree. It lays emphasis on the initial position and distinctive character of the word element ‘fly’ and the fact that the relevant public in question will not pronounce the words written in Persian . It adds that, since the word elements ‘persia’ and ‘dubai’ are devoid of distinctive character, they cannot constitute a relevant difference for the purposes of the comparison of those marks.
59      It must be held that, phonetically, the marks at issue coincide in the sound of the word element ‘fly’ and differ in the sound of the word elements ‘persia’ and ‘dubai’. The Persian wording is incomprehensible for the relevant public in question which will not pronounce it. Since the first word ‘fly’ is short and non-distinctive in respect of the air-transport-related services in question covered by those marks and is only weakly distinctive in respect of the other services covered by the mark applied for, it cannot significantly diminish the phonetic similarity of the marks at issue, in spite of its initial position. The word elements ‘persia’ and ‘dubai’ are more important phonetically because they are longer. The attention of the relevant public in question will thus be mainly caught by the sound of the elements ‘persia’ and ‘dubai’, which constitute different elements. Therefore, phonetically, there is only a low degree of similarity between the marks at issue.
60      Consequently, the Board of Appeal committed an error of assessment in finding that the marks at issue were phonetically similar to an above -average degree.
(d)    The conceptual similarity of the marks at issue
61      The Board of Appeal held, in paragraph 67 of the contested decision, that the elements ‘persia’ and ‘dubai’ cannot give rise to any ‘relevant conceptual difference’. In the context of transport and travel-related services, those elements will be perceived as a non-distinctive reference to a territory by the relevant public in question, whereas the additional concept of an aeroplane in the mark applied for is descriptive in the context of those services. It inferred from this that the conceptual comparison of the marks at issue does not influence the assessment of the similarity of the marks.
62      The applicants claim that, conceptually, the marks at issue are different. For the relevant public in question, the common element ‘fly’ is non-distinctive and the terms ‘persia’ and ‘dubai’ are the distinctive and dominant elements of those marks, which refer to two completely different territories, namely Iran and a city in the United Arab Emirates. Moreover, it cannot be ruled out that a significant part of the public will not relate the term ‘persia’ to any existing country, but will perceive it as a reference to an ancient or imaginary kingdom, or that term will even be understood as a meaningless element.
63      EUIPO disputes the applicants’ arguments, contending that the conceptual aspect does not influence the assessment of the similarity of the marks at issue. It states that the depiction of an aeroplane in the mark applied for and the word elements ‘persia’ and ‘dubai’ are devoid of distinctive character and therefore cannot constitute a relevant differencefor the purposes of the comparison of those marks, including conceptually.
64      It must be held that the applicants’ arguments are not well founded. The element ‘fly’ may evoke travel in each of the marks at issue. Also, the elements ‘persia’ and ‘dubai’ may evoke a destination or a geographical origin of a journey in the context of transport and travel-related services for at least part of the relevant public in question. Therefore, the applicants’ arguments are not such as to establish that those marks are conceptually different.
2.      The likelihood of confusion
65      The 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).
66      With regard to a trade mark with a weak distinctive character, and which thus has a lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking, the degree of similarity between the signs should be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor. That excessive protection could therefore adversely affect the attainment of the objectives pursued by trade mark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case (see judgment of 13 September 2023, Korres v EUIPO – Naos (EST. KORRES 1996 HYDRA-BIOME), T‑328/22, not published, EU:T:2023:533, paragraph 95 and the case-law cited).
67      In order to consider that a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001 was established in the present case, the Board of Appeal took into account, in particular, the fact that, first, the services covered by the marks at issue were either identical or similar to various degrees, second, the marks were visually similar at least to an average degree and phonetically similar to an above-average degree and, third, the earlier mark was inherently distinctive to a normal degree and had no clearly discernible meaning vis-à-vis the services in question for at least part of the relevant public in question. According to the Board of Appeal, the fact that the marks at issue are structurally similar contributes to the likelihood of confusion.
68      The applicants dispute the Board of Appeal’s finding, maintaining that only a high degree of similarity would permit the finding of a likelihood of confusion between the marks at issue. However, in the present case, the degree of similarity between those marks is minimal and their similar structure would not contribute to the likelihood of confusion, because, consisting of a generic term ‘fly’ and a geographical term, that structure is extremely common in the civil aviation industry and therefore is not capable of calling the attention of the relevant public in question. Moreover, the Board of Appeal also erred in finding that the earlier mark had a normal and not low degree of distinctiveness. Lastly, the public’s enhanced degree of attention with regard to at least some of the services covered by the mark applied for will weigh against a finding of a likelihood of confusion between the marks at issue.
69      EUIPO contends that, since the applicants’ argument relating to the likelihood of confusion is dependent on the previous findings made in respect of the similarity of the signs, it must be rejected as unfounded. It also disputes the applicants’ line of argument that the earlier mark has a low degree of distinctiveness. It states that, even assuming that the word ‘fly’ were to lack distinctiveness, the distinctiveness of the earlier mark would then stem exclusively from its particular structure and the particular configuration of its figurative elements, notably the stylisation of the element ‘fly’ and the loop of the letter ‘a’.
70      Lastly, EUIPO emphasises that a likelihood of confusion may still arise in the mind of the part of the relevant public with a high level of attention.
71      First, it should be noted (i) that the relevant public in question is made up of the general public and professionals, whose level of attention varies from average to high, and (ii) that the services applied for were partly identical, partly similar to an average degree and partly similar to a low degree to the services covered by the earlier mark.
72      Second, it follows from the analysis contained in paragraphs 52 to 55 and 59 and 60 above that the marks at issue have a low degree of visual and phonetic similarity. In so far as the Board of Appeal held, in paragraph 78 of the contested decision, that the structural similarity of the marks at issue contributed to the likelihood of confusion, it should be noted that the fact that the two marks are composed of the word element ‘fly’ to which words referring to an ancient or existing geographical area are attached without a space in between, cannot offset the differences between those marks set out in paragraphs 52 to 54 and 59 above.
73      Third, it must be held that the earlier mark has, at most, only a weak distinctive character, because, as is clear from the analysis in paragraphs 30 to 35, 40 and 42 to 44 above, the two word elements ‘fly’ and ‘dubai’ are descriptive.
74      In so far as EUIPO submits that the distinctiveness of the earlier mark also stems from its particular structure and from the particular configuration of its figurative elements, notably the stylisation of the element ‘fly’ and the loop of the letter ‘a’, it should be noted, first, that the Board of Appeal did not consider that the font stylisation and the colour scheme in which that mark is depicted contributed to its distinctiveness. On the contrary, it held, rightly, in paragraphs 60 and 65 of the contested decision, that those features were purely decorative. Second, the Board of Appeal also did not consider that the distinctive character of the earlier mark stemmed from its structure or from the particular configuration of its figurative elements.
75      Therefore, the Board of Appeal committed an error of assessment in finding that the earlier mark had a normal distinctive character.
76      Taking account of all the relevant factors referred to in paragraphs 71 to75 above, and in particular the low similarity of the marks at issue and the weak distinctive character of the earlier mark, it must be concluded that the Board of Appeal erred in finding that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, was established in the present case.
77      In those circumstances, the applicants’ single plea in law must be upheld.
78      The contested decision must therefore be annulled, without there being any need to rule on the admissibility, disputed by EUIPO, of Annexes  A.2 to A.9 to the application, since they are not used to support the grounds of the present judgment.
B.      The head of claim seeking the referral of the case back to the Board of Appeal
79      By their second head of claim, the applicants expressly request that the case be referred back to the Board of Appeal. EUIPO submits that that head of claim is inadmissible by referring to the settled case-law of the Court of Justice of the European Union that it is not for the General Court to issue orders to EUIPO.
80      It must be borne in mind that, in an action before the EU judicature against a 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 that judicature. It is therefore for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see, to that effect, judgment of 31 January 2019, Pear Technologies v EUIPO – Apple (PEAR), T‑215/17, not published, EU:T:2019:45, paragraphs 12 and 81). Moreover, the measures necessary to comply with a judgment annulling all or part of a decision of a Board of Appeal include re-examination by the Boards of Appeal of the case to which that decision relates (see, to that effect, judgment of 7 November 2017, Frame v EUIPO – Bianca-Moden (BiancalunA), T‑628/15, not published, EU:T:2017:781, paragraphs 14 and 85).
81      In that regard, in so far as the applicants request, by their second head of claim, that the Court refer the case back to the Board of Appeal, it must be held that such a head of claim has no specific purpose, in that it is merely a consequence of the first head of claim, seeking the annulment of the contested decision. Therefore, the applicants’ second head of claim must be rejected as inadmissible (see, to that effect, judgment of 6 November 2024, Consejo Regulador ‘Aceite de Jaén’ v EUIPO – Agrícola La Loma (VEGA DEL OBISPO BIO Jaén PRODUCTOS ECOLÓGICOS), T‑425/23, not published, EU:T:2024:768, paragraph 13 and the case-law cited).
IV.    Costs
82      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 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.
83      In the present case, since EUIPO has been unsuccessful, it must be ordered to pay the costs, including those regarded as being necessarily incurred before the Board of Appeal, in accordance with the form of order sought by the applicants.
On those grounds,
THE GENERAL COURT (Seventh Chamber, Extended Composition)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 November 2022 (Case R 1723/2021-4);
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to pay the costs, including the costs necessarily incurred by Fly Persia IKE and Mr Ali Barmodeh for the purposes of the proceedings before the Board of Appeal of EUIPO.
Kowalik-Bańczyk
Buttigieg
Hesse
Dimitrakopoulos
Ricziová
Delivered in open court in Luxembourg on 22 January 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.