JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
31 January 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative trade mark PEAR — Earlier EU figurative trade mark depicting an apple — Relative ground for refusal — No similarity between the signs — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))
In Case T‑215/17,
Pear Technologies Ltd, established in Macao (China), represented by J. Coldham, Solicitor, and E. Himsworth QC,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Apple Inc., established in Cupertino, California (United States), represented by J. Olsen and P. Andreottola, Solicitors, and by G. Tritton, Barrister,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 18 January 2017 (Case R 860/2016-5), relating to opposition proceedings between Apple and Pear Technologies,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: P. Cullen, Administrator,
having regard to the application lodged at the Court Registry on 7 April 2017,
having regard to the response of EUIPO lodged at the Court Registry on 28 June 2017,
having regard to the response of the intervener lodged at the Court Registry on 7 July 2017,
further to the hearing on 25 September 2018,
gives the following
Judgment
Background to the dispute
1        On 25 July 2014, the applicant, Pear Technologies Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 9, 35 and 42 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: ‘Personal computers; laptop computers; handset and tablet mobile digital electronic devices for the sending and receiving of telephone calls and/or any digital data and for use as a handheld computer; apparatus for recording, transmission or reproduction of sound or images; videophones, video-tablets, pre-recorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, computer hardware, software and firmware, namely operating system programs, application development computer software programs for personal and handheld computers or handheld mobile digital electronic devices; computer, handheld and mobile handset device peripherals products; parts, fittings and accessories for all the aforesaid goods’;
–        Class 35: ‘Providing consultancy on digital marketing; providing CRM solution and business solution design services’;
–        Class 42: ‘Maintenance and updating of computer software; providing information concerning computer software via the internet and other computer and electronic communication networks; computer network services; providing consultancy on networking, webpage design; providing server hosting services; providing domain management services; provision of software applications for handheld, tablets, personal computer and laptop computer devices and data centre management; technical consultancy; all aforesaid services also as business to business and all aforesaid services also as business to consumer or consumers’.
4        The trade mark application was published in Community Trade Marks Bulletin No 193/2014 of 15 October 2014.
5        On 15 January 2015, the intervener, Apple Inc., 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, inter alia, on the EU figurative mark registered on 30 March 2012 under number 9784299, reproduced below:
7        The goods and services covered by that trade mark are in Classes 9, 35 and 42 and correspond, for each of those classes, inter alia, to the following description:
–        Class 9: ‘... Computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; ... digital music and/or video players; MP3 and other digital format audio players; ... handheld and mobile digital electronic devices for the sending and receiving of telephone calls; ... computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; ... computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server ...’;
–        Class 35: ‘... Retail store and online store services in the field of entertainment featuring music, video, ... musical works, pre-recorded audio and audio-visual works and related merchandise, and music related electronic products, via the Internet and other computer, electronic and communications networks ...’;
–        Class 42: ‘... Application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program, audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs ...’
8        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
9        On 16 March 2016, the Opposition Division upheld the opposition for all the goods and services designated by the mark applied for on the basis of Article 8(5) of Regulation No 207/2009.
10      On 10 May 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11      By decision of 18 January 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal based on an infringement of Article 8(5) of Regulation No 207/2009. In the first place, the Board of Appeal considered that there was an at most remote visual similarity and a weak conceptual similarity between the marks at issue. As regards the visual comparison, the Board of Appeal found, in essence, that there was a certain degree of similarity between the conflicting marks due to the fact that they depicted sleek rounded silhouettes of fruit, with the oblong shape leaning to the right on top of the main object. Conceptually, the Board of Appeal considered that, although apples and pears are two distinguishable fruits, they are fruits which are closely related in a biological sense (origin, size, colours, texture) and they are associated together in many ways throughout the relevant territory and are common alternatives to each other. In the second place, the Board of Appeal found, in essence, that the perception of the consumer admittedly involved making some mental steps, but that, because of the uniqueness and the high reputation of the earlier mark, the allusive and ‘somewhat mocking’ image of the pear depicted in the mark applied for would establish a mental link with the earlier mark. In the third place, the Board of Appeal considered that there was a risk that the use of the trade mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark. The Board of Appeal considered that the characteristics associated with the earlier mark were likely to be transferred to the trade mark applied for in so far as the goods and services marketed under the trade mark applied for are perceived as a comparable alternative. It based that conclusion, in essence, on the high reputation of the earlier mark in the market, on the link between the signs at issue, on the fact that the use of a piece of fruit is highly distinctive and unusual in the relevant sector, on the identity or similarity between the goods and services covered by the signs at issue and on the idea that the trade mark applied for ‘imitated and at the same time mocked and defied’ the earlier mark. In the fourth place, the Board of Appeal denied the existence of due cause for use of the trade mark applied for by the applicant.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        remit the matter for further consideration by the Board of Appeal;
–        order EUIPO to pay the costs, including those incurred by the applicant before the Board of Appeal;
–        order the intervener to pay the costs, including the costs incurred by the applicant before the Board of Appeal.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its first head of claim, seeking annulment of the contested decision, the applicant raises a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009.
15      As set out in Article 8(5) of Regulation No 207/2009, ‘[u]pon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.
16      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34).
17      In addition, Article 8(5) of Regulation No 207/2009 implies that the three types of injury referred to therein, should they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not confuse them. The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (DARJEELING collection de lingerie), T‑626/13, not published, EU:T:2015:741, paragraph 68 and the case-law cited).
18      In the present case, the applicant submits that the Board of Appeal erred in its analysis of Article 8(5) of Regulation No 207/2009. Thus, its single plea is divided into four parts, which relate, the first, to the alleged similarity of the conflicting marks, the second, to the possible link that may be established between them, the third, to the likelihood that unfair advantage would be taken of the distinctive character or the repute of the earlier trade mark and, lastly, the fourth, to the existence of due cause for use of the mark applied for.
19      Under the first part of its plea, the applicant complains that the Board of Appeal found that there was a certain degree of similarity between the conflicting marks at the visual and conceptual levels. According to the applicant, the signs at issue are dissimilar.
20      As a preliminary point, it must be borne in mind that, in order for Article 8(5) of Regulation No 207/2009 to be applicable, the conflicting marks must be identical or similar (order of 27 October 2010, Guedes — Indústria e Comércio v OHIM, C‑342/09 P, not published, EU:C:2010:639, paragraph 25).
21      That condition of similarity requires, in the context of Article 8(5) of Regulation No 207/2009, as in the context of Article 8(1)(b) of that regulation, the existence, in particular, of elements of visual, phonetic or conceptual similarity. It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the conflicting marks such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) of Regulation No 207/2009 may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it does not appear either from the wording of those provisions or from the case-law that the similarity between the conflicting marks must be assessed in a different way depending on whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) of Regulation No 207/2009 (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 52 to 54).
22      Next, it must be recalled that, in relation to the visual, phonetic and conceptual similarities of the signs at issue, the comparison of the signs must be based upon the overall impression produced by the signs, bearing in mind, in particular, their distinctive and dominant elements (judgment of 25 January 2012, Viaguara v OHIM — Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 32). Likewise, it must be observed that the similarity of the signs at issue must be assessed from the point of view of the average consumer, by reference to the intrinsic qualities of those signs, as they are registered or applied for (see, to that effect, judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT VODKA), T‑450/13, not published, EU:T:2015:841, paragraph 95).
23      Furthermore, it is necessary, at the outset, to uphold the finding made by the Board of Appeal in paragraphs 42 and 43 of the contested decision and, moreover, not disputed by the parties, that the relevant public consists both of the general public which demonstrates a high level of attention and professional consumers whose level of attention is generally higher than that of the general public.
The comparison of the conflicting marks visually
24      In paragraph 33 of the contested decision, the Board of Appeal concluded that there was at most a remote similarity between the conflicting marks on a visual level.
25      In that regard, the Board of Appeal found, in the first place, in paragraph 26 of the contested decision, that, visually, the conflicting marks both contained the depiction of a fruit with a stem or a leaf. The Board of Appeal also noted that the conflicting marks differed in that the mark applied for contained the word ‘pear’, did not represent a fruit which had a bite taken out of it and contained several black rectangular shapes inside the figurative element. In the second place, the Board of Appeal found, in paragraph 27 of the contested decision, that, despite their different shape, the stem and the leaf were positioned in a similar way, i.e. they were clearly detached from the fruit and inclined towards the right at the same 45 degree angle. In the third place, as regards the word element ‘pear’ in the mark applied for, the Board of Appeal found, in paragraph 28 of the contested decision, that, even if it were accepted that, in the case of a composite mark, the word elements were generally more prominent than the figurative elements, the word element ‘pear’ of the mark applied for was only of secondary importance in the present case, due to its size, its faded colour and its positioning at the bottom of the figurative representation of the pear which dominates the overall impression of the mark applied for. The Board of Appeal added that, where the meaning of the word element ‘pear’ was understood, this reinforced the concept of pear conveyed by the figurative elements. In the fourth place, the Board of Appeal considered, in paragraph 29 of the contested decision, that the conflicting marks, first, represented sleek rounded silhouettes of fruit, with the oblong shape leaning to the right on top of the main object, and, secondly, corresponded to stylised solid images of a fruit with its characteristic stem. Thirdly, the Board of Appeal held that, consequently, the abstract stylisations of the silhouettes were similar. Furthermore, the Board of Appeal found, in paragraph 31 of the contested decision, that the graphical features of the pear represented in the mark applied for would recall to the minds of the relevant public the earlier reputed mark.
26      The applicant disputes that assessment and submits, in the first place, that there are clear differences between the conflicting marks. As regards the mark applied for, the applicant submits that it is not composed of the solid image of a pear, but of an abstract representation without an outline, made up of numerous mosaic squares with rounded edges of different sizes together with a stem in the form of a rectangle with rounded edges and the word ‘pear’. According to the applicant, the earlier mark, by complete contrast, consists of the solid silhouette of an apple, with a bite taken out of it, including a leaf in the form of an ellipse with pointed ends. In the second place, as regards the figurative elements placed above depictions of pears and apples, the applicant claims that the Board of Appeal wrongly relied on the idea that the earlier mark included the representation of a stem. In the third place, as regards the form and graphic design of the marks at issue, the applicant claims, first, that the overall shape of the marks at issue is different, like the fruits that they represent. Secondly, the applicant submits that the conflicting marks are represented in very different ways, one consisting of a simple solid image whereas the other is made up of numerous squares with curved edges of different sizes. In the fourth place, the applicant claims that, in those circumstances, the Board of Appeal was wrong to find that the conflicting marks were made up of stylised solid images of a fruit with its characteristic stem. In the last place, the applicant asserts that, in any event, the ‘at most remote’ visual similarities noted by the Board of Appeal are commonalities that exist because of the nature of the fruit that is being depicted and would not be regarded by the average consumer, when considering the conflicting marks as a whole, as a ‘relevant aspect’ within the meaning of the judgment of 11 December 2014, Coca-Cola v OHIM — Mitico (Master) (T‑480/12, EU:T:2014:1062, paragraph 40).
27      EUIPO and the intervener dispute those arguments.
28      For its part, EUIPO submits, in the first place, that the conflicting marks coincide in that they include, on the one hand, the stylised depiction of a piece of fruit in a sleek rounded silhouette in black colour and centrally positioned, and, on the other hand, an oblong device reminiscent of a leaf or a stem, which is depicted on top of the respective fruit, clearly detached from the ‘body’ of the fruit and in the same 45 degree angle leaned to the right. In the second place, EUIPO claims that the depiction of the respective fruits is the central feature of the two marks at issue. In the third place, EUIPO submits, first, that, by failing to mention the ‘leaf’ of the earlier mark in paragraph 29 of the contested decision, the Board of Appeal made a simple error of carelessness. Secondly, EUIPO argues that the meaning of the figurative elements placed above the two objects is immaterial for the purposes of the visual comparison, since the Board of Appeal correctly described them as ‘oblong shapes leaning to the right on top of the main object’ and relied on that observation for the purposes of concluding that the abstract stylisations of the silhouettes of the respective fruits were similar.
29      The intervener also claims that the Board of Appeal’s assessment as to the visual similarity between the conflicting marks is based only on the observation that the ‘signs share the figurative elements of sleek rounded silhouettes of fruit represented in both signs, with the oblong shape leaning to the right on top of the main object’. Next, the intervener asserts that there is clearly some visual similarity between the conflicting marks. It adds that the question whether the oblong shape element represents a stem or a leaf is not relevant in the context of the visual comparison which does not take account of the semantic content of the elements concerned. In any event, according to the intervener, it is apparent from paragraphs 26 and 49 of the contested decision that the Board of Appeal was aware of that difference between the conflicting marks.
30      In the context of the examination of the existence of visual similarity between two conflicting marks, it is necessary to take account, in the first place, of the overall impression produced by the mark applied for on a visual level.
31      First, it must be observed that the mark applied for consists of several figurative elements forming a unit and the word element ‘pear’. Among the figurative elements, the following stand out: (i) a large number of squares with curved edges of black colour and of different sizes, which are positioned so that the public will perceive, on the whole, the shape of a pear and (ii) a rectangle with curved edges which is placed above the pear, inclined at an angle of approximately 45 degrees, which will be perceived as representing the stem of the pear. The word element ‘PEAR’ is written in grey capital letters, in a special type of font, and is placed below the pear.
32      Secondly, as regards the assessment made by the Board of Appeal in paragraph 28 of the contested decision that the overall impression created by the mark applied for is dominated by the figurative representation of the pear, it is appropriate to recall the case-law according to which the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41). 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
33      In the present case, it is, admittedly, true that the figurative representation of the pear occupies an important place in the mark applied for owing to its central position and its size. However, the word element ‘pear’ cannot be considered negligible in the sense that the assessment of the similarity may be made solely on the basis of the figurative elements. Although the word element ‘pear’ is smaller than the representation of the pear, placed above it, and is written in a special type of font, it cannot escape the attention of the relevant public. Its size is large enough for the relevant public to notice it at first sight, which is reinforced by the fact that that word element is written in capital letters. In addition, the grey colour and the font used do not call into question the fact that the word ‘pear’ will be clearly legible for the relevant public.
34      Furthermore, it must be observed that, contrary to what seems to have been stated by the Board of Appeal at the end of paragraph 28 of the contested decision, the fact that part of the relevant public understands the meaning of the English word ‘pear’ does not permit the conclusion that, visually, the word element ‘pear’ in the mark applied for is negligible in the overall impression produced by it. This applies particularly for the part of the relevant public which does not understand the meaning of that word.
35      As for the reference made by the Board of Appeal to paragraph 83 of the judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT) (T‑449/13, not published, EU:T:2015:839), it is important to note that the word element of a complex mark must not, admittedly, always be regarded as dominant. However, the fact that an element is not dominant in no way means that it is negligible. Moreover, paragraph 83 of that judgment merely stated that the word element and the figurative element of the sign examined in that case had a comparable impact on the overall impression produced by it.
36      In those circumstances, the Court finds that the word element of the mark applied for contributes significantly to determining the image of the mark which the relevant public will keep in mind, so that it cannot be considered to be negligible when comparing the marks at issue on a visual level.
37      As regards, in the second place, the overall impression produced by the earlier mark on a visual level, it should be noted, first, that it is a figurative mark consisting of two black figurative elements. The first element is in the shape of an apple, missing a part in the shape of a semicircle on the right side. From a visual point of view, it will be perceived as the representation of an apple with a bite taken out of it. The second element, placed above and at the centre of the first element, is in a pointed elliptical shape which inclines towards the right at an angle of approximately 45 degrees.
38      Secondly, it should be noted that the contested decision is ambivalent as regards the visual perception of the second figurative element of the earlier mark, since, on the one hand, paragraphs 25 and 29 refer to a ‘stem’ and, on the other hand, paragraphs 26 and 27 refer to a ‘leaf’.
39      First of all, it should be observed that, in so far as the question whether a figurative element will be perceived immediately as representing an object familiar to the relevant public is likely to have an impact on the image of the earlier mark that the public will keep in mind, that aspect is not, contrary to what EUIPO and the intervener contend, irrelevant in the visual comparison of the conflicting marks. Next, it should be recalled that the second figurative element of the earlier mark is in a pointed and elliptical shape. That shape is more reminiscent of one of the usual shapes of a leaf and not that of a stem. Moreover, it must be observed that all the parties to the present case share, in principle, that view.
40      Taken as a whole, the earlier mark will therefore be perceived by the relevant public as representing an apple, with a bite taken out of it, with a leaf sitting on top.
41      As regards, in the third place, the comparison of the conflicting marks on a visual level, it should be borne in mind that the Board of Appeal found, in paragraphs 26 to 29, 31 and 33 of the contested decision, that the conflicting marks displayed commonalities which conferred on them, despite the existing differences, a certain degree of similarity.
42      As a preliminary point, it should be noted that the Board of Appeal found, in paragraph 33 of the contested decision, that there was ‘at most a remote’ similarity between the conflicting marks on a visual level, which necessarily implies the possibility that, in actual fact, there is no visual similarity. However, it is apparent from the rest of the Board of Appeal’s analysis that the Board of Appeal in actual fact held that there was a low degree of similarity between the conflicting marks in that regard.
43      As regards, first, the Board of Appeal’s finding, in paragraph 26 of the contested decision, that, visually, the conflicting marks both contain a depiction of a piece of fruit with a stem or a leaf, it should be emphasised that it is based on an abstract and imprecise description of the conflicting marks. The Board of Appeal seems to underestimate the fact that, in actual fact, the marks at issue, as registered or applied for, are composed of the depiction of two different fruits, an apple and a pear, which, on a visual level, may be easily and clearly distinguished by the relevant public.
44      Secondly, as regards the Board of Appeal’s finding, in paragraph 27 of the contested decision, that the elements representing the stem or the leaf are positioned in a similar manner, namely that they are detached from the fruit and at the same 45 degree angle oriented right, it should be observed, as the applicant submits, that the concrete shape and size of those elements are very different and, moreover, that they will be perceived as representing different objects. Contrary to what is asserted by EUIPO and the intervener, those factors take precedence over the fact that such elements are oblong in shape and are positioned in a similar manner in the conflicting marks. It is therefore very likely that the relevant public does not take account of their similar positioning, especially as the elements representing the stem or the leaf will not particularly attract attention due to their small size. As regards the fact that those elements are detached from the fruit represented, it should also be noted that the mark applied for is almost exclusively composed of squares detached from each other and that that aspect will not therefore attract the attention of the relevant public either.
45      Thirdly, as regards the Board of Appeal’s assessment, in paragraph 28 of the contested decision, that the word element ‘pear’ would create a semantic unit with the depiction of the pear, it is necessary to bear in mind the considerations set out in paragraphs 32 to 36 above. It follows that a semantic unit will exist only for the part of the relevant public which understands the meaning of the English word ‘pear’. Moreover, the existence or otherwise of a semantic unit is not capable of calling into question the fact that, on a visual level, the presence of the word element in the mark applied for is a clear difference between the conflicting marks, given that the earlier mark does not contain the word element ‘pear’ or any element which would be similar from a visual point of view.
46      Fourthly, it is necessary to examine whether the applicant is right to dispute the Board of Appeal’s assessment, in paragraph 29 of the contested decision, that the conflicting marks have in common the fact of depicting sleek rounded silhouettes of a fruit.
47      It is, admittedly, true that, visually, the earlier mark can be described as being composed of the silhouette of an apple depicted in a rounded manner and having a smooth or sleek surface. However, this does not apply to the mark applied for. First of all, it must be observed, as the applicant submits, that the mark applied for is not composed of a figurative element depicting the silhouette of a fruit. It follows from the objective characteristics set out in paragraph 31 above that the mark applied for does not depict the solid silhouette of a pear, but that it is composed of a large number of squares of different sizes which combine only to form the image of a pear in the mind of the observer. The shape and the outline of the pear are mentioned only implicitly.
48      In this context, it should also be observed, as the applicant submits, that the overall shapes of the conflicting marks are visually very different, like the shapes of the fruits which they depict, especially as the earlier mark depicts a fruit with a bite taken out of it and having a ‘hollow’ inwards, whereas the mark applied for depicts a whole fruit, without a trace of a bite, the lower part of which has no comparable ‘hollow’.
49      As regards, fifthly, the Board of Appeal’s assessment, in paragraph 29 of the contested decision, that both conflicting marks are composed of stylised solid images of a fruit and its characteristic stem, it should be borne in mind, as the applicant claims, that the mark applied for is not composed of the solid image of a fruit but, as follows from the findings made in paragraph 31 above, is composed of a large number of squares with curved edges of black colour and of different sizes. Having regard to the considerations set out in paragraph 39 above, nor can the Court concur with the conclusion of the Board of Appeal in so far as it maintains that each of the marks at issue depicts a fruit ‘with its characteristic stem’. Even assuming that, as argued by EUIPO and the intervener, the Board of Appeal only inadvertently failed to mention in that context the ‘leaf’ depicted in the earlier mark, it must be observed that, in any event, the Board of Appeal did not explain why it should be considered that the fact that one of the marks depicted an apple with its ‘characteristic leaf’ and the other depicted a pear with its ‘characteristic stem’ conferred on those marks a certain degree of visual similarity.
50      As regards, sixthly, the Board of Appeal’s assessment, in paragraph 29 of the contested decision, that the abstract stylisations of the silhouettes are similar, it is sufficient to note that that assessment is incompatible with the objective characteristics of the conflicting marks, described in paragraphs 31 to 40 above, and with the considerations set out in paragraphs 41 to 49 above.
51      Seventhly, as regards the Board of Appeal’s finding, in paragraph 31 of the contested decision, that the graphical features of the pear depicted in the mark applied for would recall to the mind of the relevant public the earlier reputed mark, it must be pointed out that the Board of Appeal appears to have taken into account, in the context of the comparison of the signs at issue, the reputation of the earlier mark and to have taken inspiration from the idea that the relevant public would therefore be able to establish a link between the conflicting marks. If that is the case, it must be borne in mind that the reputation of the earlier mark is a relevant factor for the assessment not of the similarity of the conflicting marks, but of the existence of a link between them in the mind of the public concerned, and, moreover, that it is only in the event that the conflicting marks have a certain similarity that it is necessary to make an overall assessment in order to determine whether there is a link between those marks in the mind of the public concerned (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 58 and 66). In any event, that finding of the Board of Appeal is not such as to render the conflicting marks visually similar.
52      It follows from all the foregoing considerations that the Board of Appeal’s assessment that the conflicting marks displayed several commonalities on a visual level is vitiated by errors. Indeed, their only commonalities are the presence of black colour and the similar positioning of the figurative elements placed above the depictions of the apple and the pear, which will probably go unnoticed among the relevant public for the reasons set out in paragraph 44 above. In addition, in the context of the comparison of the conflicting marks, each considered as a whole, it is also necessary to take into account the clear differences between the marks at issue on a visual level.
53      In that regard, it should be borne in mind, first, that the marks at issue will immediately be perceived as depicting different fruits, secondly, that the shapes of the figurative elements and the fruits depicted are dissimilar overall, thirdly, that the pear is depicted in the mark applied for by a large number of squares of different sizes without an edge while the apple is depicted in the mark applied for by a solid image, fourthly, that the mark applied for contains no trace of a bite such as that present in the earlier mark and, finally, fifthly, that the word element ‘pear’ in the mark applied for has no equivalent in the earlier mark.
54      Therefore, having regard to those differences, it must be held that the conflicting marks, each considered as a whole, produce overall impressions which are dissimilar overall on a visual level. The Board of Appeal was therefore wrong to consider, in the contested decision, that there was a low degree of visual similarity between them.
The comparison of the conflicting marks on a conceptual level
55      In paragraphs 32 and 33 of the contested decision, the Board of Appeal found that there was a low degree of similarity between the conflicting marks on a conceptual level. The Board of Appeal observed that, although apples and pears are two different fruits, at issue were biologically very similar fruits (origin, size, colours, texture) which were associated in various ways throughout the relevant territory and commonly used as alternatives. According to the Board of Appeal, the concept of a ‘pear’ evoked by the mark applied for would be associated with the concept of an ‘apple’ evoked by the earlier mark.
56      The applicant disputes that assessment and submits that the conflicting marks are conceptually different. In the first place, it contends that those marks cannot be regarded as similar on the sole ground that the concepts conveyed by them may be described by the same generic term covering them both, namely the word ‘fruit’, and refers, in that regard, to EUIPO’s Guidelines for Examination of European Union Trade Marks. In the second place, the applicant submits that the semantic content of the conflicting marks is so different that the fact that both are fruit is irrelevant. In the third place, the applicant claims that the Board of Appeal’s assessment results in granting the intervener the protection of a ‘concept’ covering all fruit and, in particular, all fruit that might be regarded as an alternative to an apple, which would not be consistent with the principles identified by the Court of Justice in the judgment of 25 January 2007, Dyson (C‑321/03, EU:C:2007:51, paragraphs 27 to 40).
57      EUIPO and the intervener dispute those arguments.
58      EUIPO contends, in essence, that the Board of Appeal rightly pointed out that apples and pears were not only two random species of fruit, but that they had other commonalities which went beyond the fact of being fruits. In the first place, EUIPO states, in that regard, that apples and pears are grown and harvested under similar conditions and that those two fruits are very close from a biological and botanical point of view, in the sense that those fruits are pome fruits of similar size and colour and members of the plant family Rosaceae and the sub-family pomoideae, and, moreover, consist of a ‘core’ of several small seeds, surrounded by a tough membrane which is encased in an edible layer of flesh. In the second place, EUIPO submits that apples and pears are distributed via the same distribution channels and sold literally side-by-side in the same venues and that those fruits therefore share significant commercial links and overlaps. In the third place, EUIPO asserts that apples and pears are often considered to be alternatives and that there is a competitive relationship between the two fruits because of their origins, their textures and their nutritional values. In the fourth place, EUIPO submits that the concepts of ‘apple’ and ‘pear’ refer to a specific concept of antagonism because they are used in proverbs as symbols to illustrate that two things are genuinely different and cannot be compared.
59      As for the intervener, it contends, in the first place, that the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528), showed that two marks depicting different animals, namely a puma and a cheetah, could nevertheless be considered to be conceptually similar and that that case-law applies in the present case because, even though different fruits are at issue, apples and pears have many characteristics in common, like pumas and cheetahs. In the second place, the intervener maintains that the pear is the closest fruit to an apple for the reasons set out in paragraph 32 of the contested decision. In the third place, the intervener argues that the existence of similarity on a conceptual level depends on the relationship between the concepts evoked by the conflicting marks, on the one hand, and the goods and services in question, on the other, and that, due to the absence of such a relationship in the present case, the relevant public will be more inclined to establish a link between the conflicting marks, but will only be able to do so if there is some degree of similarity. In the fourth place, the intervener claims that the applicant’s reasoning would result in two marks being conceptually similar only where the concepts conveyed are identical and that such a conclusion would be illogical and inconsistent with EUIPO’s Guidelines for Examination of European Union Trade Marks. In the fifth place, the intervener contends that, contrary to what the applicant claims, the Board of Appeal’s reasoning is not contrary to the judgment of 25 January 2007, Dyson (C‑321/03, EU:C:2007:51, paragraphs 27 to 40), and does not result in granting it the protection of a ‘concept’ covering all fruit and, in particular, all fruit that might be regarded as an alternative to an ‘apple’, since the Board of Appeal merely pointed out that there was a low degree of similarity between the concepts of ‘pear’ and ‘apple’.
60      In the context of the examination of the conceptual similarity of the conflicting marks, the Court rejects, first of all, the intervener’s argument that account should be taken, in that context, of the fact that there is no relationship between pears and apples and the goods and services covered by the conflicting marks. As follows from the case-law, the distinctive character of the earlier mark is a relevant factor for the assessment not of the similarity of the conflicting marks, but of the existence of a link between them in the mind of the public concerned (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 58).
61      Next, it should be recalled that, according to the case-law, the existence of a conceptual similarity stems from the fact that both marks use images with a similar semantic content (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24). It is also appropriate to recall the case-law cited in paragraph 22 above, according to which the comparison of two conflicting marks must be based on the overall impression given by them, by reference to the intrinsic qualities of those marks.
62      As regards the mark applied for, it should be noted that, taken as a whole, the figurative elements evoke the concept of a pear with a stem. As for the word element ‘pear’, it also refers the relevant public with sufficient knowledge of English to the concept of a pear. For the part of the relevant public which does not understand English, the word element ‘pear’ will be meaningless and will therefore have no influence on the conceptual content of the mark applied for, considered as a whole. As regards the earlier mark, it must be observed that the relevant public will perceive it as referring to the concept of an apple with a leaf, with a bite taken out of it.
63      Next, as regards the comparison of the conflicting marks on a conceptual level and the issue of whether they use images with a similar semantic content, it should be observed, in the first place, that the applicant is right to underline clear differences between the concepts conveyed by the conflicting marks.
64      First, it should be pointed out that the conflicting marks use images which do not depict the same object, but two different objects, namely an apple and a pear. It is common ground that the relevant public will perceive, without difficulty, that difference in the semantic content of the images contained in the marks at issue. Secondly, it must be noted that the marks do not share the concept of a ‘fruit with a bite taken out of it’ either, since, despite its abstract stylisation, the mark applied for evokes the idea of a full pear. Thirdly, it should also be observed that, due to the fact that the figurative elements placed above the apple and the pear will be perceived as being different, namely (i) a leaf in the case of the apple and (ii) a stem in the case of the pear, nor are they capable of conferring on the marks in question a degree of conceptual similarity.
65      In the second place, it is necessary to examine whether the conflicting marks also display commonalities on a conceptual level.
66      At the outset, it should be noted, in that context, that, contrary to what the applicant appears to claim, the fact that both marks use images of different objects does not preclude, in itself, those marks from having, at least partially, due to other factors, a similar semantic content. As regards the reference made to EUIPO’s Guidelines for Examination of European Union Trade Marks, it must be observed, first, that the passage cited, i.e. point 3.4.4 of Part C of Section 2 of Chapter 4 of those guidelines, concerns only the question whether two signs may be regarded as being conceptually similar on the sole ground that a generic term covering both of them exists and, secondly, that those guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48).
67      Next, as regards the presence of other elements capable of conferring on the conflicting marks a certain degree of conceptual similarity, account should be taken, above all, of other commonalities in the depictions of the conflicting marks in the proper sense. However, as is apparent from the considerations set out in paragraphs 62 and 63 above, the characteristics of the earlier mark which differ from the mere representation of an apple have no equivalent in the mark applied for. The pear depicted in the mark applied for does not present any trace of a bite or any leaf, contrary to the apple of the earlier mark.
68      Finally, as regards the factors taken into account by the Board of Appeal in paragraph 32 of the contested decision, it should be borne in mind that the Board of Appeal relied, in essence, on the assessment, shared by EUIPO and the intervener, according to which the conflicting marks had in common not only the fact that they both used the image of a fruit, but also that they used images of two fruits which were, due to several factors, very similar in real life.
69      In that regard, it should be noted, first, that it is admittedly true that each of the conflicting marks may be described as using the image of a fruit. However, as all the parties to this action also argue, the mere fact that there is a generic term which includes the terms used to describe the semantic content of the marks at issue is not a relevant factor in the context of the conceptual comparison. In the same vein, it should be borne in mind that the examination of the similarity takes into consideration the conflicting marks as they have been registered or as they have been applied for. Accordingly, it should be observed that the conflicting marks evoke the concept of ‘fruit’ only in an indirect manner. It follows from the considerations set out in paragraphs 62 and 63 above that the conflicting marks will not be perceived as depicting two unidentifiable fruits, but rather as (i) an apple with a bite taken out of it, possessing a leaf, and (ii) a pear with a stem. In those circumstances, it is inconceivable that the relevant public displaying a high level of attention will use the term ‘fruit’ instead of ‘pear’ or ‘apple’ when referring to the conflicting marks.
70      Secondly, as regards the fact that, according to the Board of Appeal, pears and apples are fruits which share several features in real life, the question arises whether the Board of Appeal was right to give those elements decisive importance in the context of the conceptual comparison of the conflicting marks, given that they are not depicted in the conflicting marks themselves, but require an abstract analysis and prior knowledge on the part of the relevant public.
71      Contrary to what the intervener maintains, the relevance of those elements in the context of the conceptual comparison does not follow from the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528). In this respect, it should be observed that a principle according to which two signs which use, as was the case in this case, images of two different animals, namely a puma and a cheetah, are nevertheless conceptually similar if the animals in question share a number of characteristics in real life cannot be inferred from the case-law arising from that judgment. First of all, it is important to point out that, as is apparent from paragraphs 10 and 11 of the judgment cited above, the Court of Justice did not rule on that question or make a comparison of the signs concerned. The Court relied in this respect on the findings of the referring court that those signs were conceptually similar. In any event, it should be observed that the conceptual similarity between the signs concerned in the abovementioned case was based, according to the referring court, on the fact that both were using the image of a ‘bounding feline’ and therefore was not based on the fact that pumas and cheetahs shared several characteristics in real life.
72      Next, it should be borne in mind that, according to the case-law cited in paragraphs 22 and 61 above, the comparison of the conflicting marks must be based on the overall impression given by them, by reference to the intrinsic qualities of those marks, and, moreover, conceptual similarity arises from the fact that both marks use images with a similar semantic content. These considerations counter the taking into account of factors such as those mentioned in paragraph 32 of the contested decision, which are not based on the perception of the semantic content of the images used by the conflicting marks, as they have been registered or as they have been applied for, but which are distant from the actual depiction of them. The protection which is granted to an earlier figurative mark does not apply, in the absence of commonalities with the depiction of the mark cited in opposition, to the general category of phenomena that it depicts. The Board of Appeal was therefore wrong to take the view that the marks at issue could be regarded as being conceptually similar on the sole ground that the fruits which they depicted shared several characteristics in real life.
73      Thirdly, and in any event, it should be observed that, even assuming that, despite the lack of commonalities in the depiction of trade marks, other factors can also be taken into account, it must be held that the considerations set out by the Board of Appeal have, at most, only a very limited influence on the overall impression produced by the conflicting marks conceptually and, consequently, are not sufficient to confer on them a certain degree of similarity.
74      As regards the Board of Appeal’s finding, made in paragraph 32 of the contested decision, that apples and pears are associated together in many ways throughout the relevant territory and are common alternatives to each other, it is important to point out that that statement is not supported by any concrete evidence.
75      In so far as EUIPO refers, in that regard, to the existence of a ‘specific concept of antagonism’ between apples and pears, it should be noted that, indeed, in several European Union languages, apples and pears are used in proverbs to illustrate that two things are different and not comparable. However, the application of Article 8(5) of Regulation No 207/2009 is made subject to the existence of an identity or similarity between the signs at issue. Thus, even assuming that the conflicting marks evoke the idea that two things are incomparable, this does not indicate the existence of a similarity, but rather the absence of any conceptual similarity.
76      In so far as EUIPO refers to the existing commercial overlaps between apples and pears, it should be observed that its line of argument is based on criteria such as intended purpose, method of use, whether they are in competition with each other as well as the distribution channels of the actual ‘pear’ and ‘apple’ products, which prima facie are relevant factors not in the context of the comparison of the signs, but in the context of the comparison of the goods and services covered by the marks at issue (see, to that effect, judgment of 10 September 2008, Astex Therapeutics v OHIM — Protec Health International (astex TECHNOLOGY), T‑48/06, not published, EU:T:2008:329, paragraph 38). Nor are those criteria for assessing the existence of a similarity between two products easily transposable where it is a matter of establishing whether two marks which use images of different products are conceptually similar, since the range of products that may be regarded as being similar is very broad and includes products of different classes. In any event, it should be noted that the factors relied on by EUIPO, even if established, may apply to a wide variety of different fruits and that these are factors which, in view of their general and abstract nature, will be noticed by the relevant public only in the context of an abstract analysis of the commonalities presented by the actual ‘pear’ and ‘apple’ products.
77      As regards the Board of Appeal’s finding, set out in paragraph 32 of the contested decision, that pears and apples are two fruits which are closely related in a biological sense (origin, size, colours, texture), it must be observed, in respect of the origin of those fruits, that it cannot be assumed that the relevant public in the present case has knowledge about the fact that, as EUIPO submits, pears and apples belong to the same plant family Rosaceae and the same sub-family pomoideae, or that it knows about their growing and harvesting conditions. Moreover, it is admittedly true that pears and apples can have similar sizes, colours and textures. However, that finding has only a very limited influence on the overall impression produced by the conflicting marks. First of all, these are commonalities which will be noticed by the relevant public only within the context of a detailed analysis, since the concrete representations of the conflicting marks do not contain any indication in this regard. Next, it should be observed that pears and apples are not the only fruits which may be coloured red, yellow or green. The same applies to the comparable size and texture of apples and pears, elements which are, however, counterbalanced by the fact that the shape of apples is different from that of pears. In any event, the Court finds that those elements do not suffice to counterbalance the clear differences existing between the conflicting marks on a conceptual level.
78      It follows from the foregoing observations that, even assuming that, despite the lack of commonalities in the depiction of trade marks, other factors can also be taken into account, in the context of the assessment of their conceptual similarity, the considerations set out by the Board of Appeal are not capable of conferring on the conflicting marks a certain degree of conceptual similarity.
79      It should also be borne in mind that there are clear differences between the marks at issue on a conceptual level, as is apparent from the considerations set out in paragraphs 62 to 64 above. Therefore, it must be held that the conflicting marks, each considered as a whole, are conceptually different.
80      Consequently, the Board of Appeal was wrong to find that there was, visually and conceptually, a low degree of similarity between the conflicting marks and to confirm that Article 8(5) of Regulation No 207/2009 was applicable in the present case. Since the first part of the single plea is well founded, the contested decision must be annulled, without it being necessary to examine the other parts of that plea.
81      As regards the applicant’s second head of claim seeking that the case be remitted to the Board of Appeal, it is sufficient to observe that, in an action before the EU judicature against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009 (now 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 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 92).
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. Since EUIPO and the intervener have been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
83      In addition, since the applicant has also claimed that EUIPO and the intervener should be ordered to pay the costs it incurred in the proceedings before the Board of Appeal, it should be borne in mind that, 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. Accordingly, EUIPO and the intervener must also be ordered to pay those costs.
84      As to the division of the costs, it is a fair assessment of the circumstances of the case to order that EUIPO and the intervener should each bear, in addition to their own costs, half of those incurred by the applicant, both before the General Court and before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Fifth Chamber),
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 January 2017 (CaseR 860/2016-5);
2.      Orders EUIPO to pay, in addition to its own costs, half of the costs incurred by Pear Technologies Ltd;
3.      Orders Apple Inc. to pay, in addition to its own costs, half of the costs incurred by Pear Technologies.
Gratsias
Dittrich
Ulloa Rubio
Delivered in open court in Luxembourg on 31 January 2019.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.