JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
17 March 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark THE TIME – Earlier EU word mark TIMEHOUSE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑186/20,
Chatwal Hotels & Resorts LLC, established in New York, New York (United States), represented by N. Hine, solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Timehouse Capital GmbH, established in Grasbrunn (Germany), represented by T. Farkas, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 28 January 2020 (Case R 2264/2018-1), relating to opposition proceedings between Timehouse Capital and Chatwal Hotels & Resorts,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 April 2020,
having regard to the response of EUIPO lodged at the Court Registry on 8 July 2020,
having regard to the response of the intervener lodged at the Court Registry on 10 July 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 18 April 2017, the applicant, Chatwal Hotels & Resorts LLC, 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 word sign THE TIME.
3        The services in respect of which registration was sought are in Classes 36 and 43 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 36: ‘Real estate services, namely, management, financing, brokerage, leasing, rental, and marketing of residential and vacation properties; real estate equity sharing, namely, managing and arranging for ownership of condominiums and apartments’;
–        Class 43: ‘Hotel, motel, resort, and extended-stay hotel services; restaurant services; food and drink catering; bar and cocktail lounge services; provision of general-purpose facilities for meetings, conferences, and exhibitions; provision of banquet and social function facilities for special occasions; hotel reservations’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin
No 2017/108 of 9 June 2017.
5        On 11 August 2017, the intervener, Timehouse Capital GmbH, 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 services referred to in paragraph 3 above.
6        The opposition was based on the earlier EU word mark TIMEHOUSE, registered on 14 October 2016 under the number 15575401 in respect of the following services:
–        Class 36: ‘Real estate agency; rent collection; financing and funding services; rental of offices; arranging letting of real estate; rental of apartments; apartment house management; real estate management; accommodation bureaux [apartments]; real estate management’;
–        Class 43: ‘Tourist homes; bar services; catering for the provision of food and beverages; hotel services; motels; rental of temporary accommodation; rental of meeting rooms; cafés; cafés; canteens; restaurants; snack-bars; room reservation services; hotel reservations; boarding houses; self-service restaurants; accommodation bureaux [hotels, boarding houses]’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 8 November 2018, the Opposition Division allowed the opposition and refused the registration of the trade mark applied for in respect of all the services in question on the ground that there was a likelihood of confusion.
9        On 20 November 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 28 January 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, taking into account,  inter alia, (i) the average degree of similarity between the marks at issue and, (ii) the identity of the services in question.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and reject the opposition;
–        allow registration of the mark applied for;
–        order EUIPO or the other party to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in so far as the Board of Appeal found in the contested decision that there was a likelihood of confusion in respect of the services in question. In this respect, it alleges that the Board of Appeal found that the marks at issue were conceptually similar and erred in failing to apply the counteraction theory.
14      EUIPO disputes the applicant’s arguments.
15      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
16      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easy Group IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public and the comparison of the services in question
18      First, the Board of Appeal found that the relevant public comprised, having regard to the nature of the services concerned, mainly the general public but also business consumers with specific professional expertise or knowledge. It also found that the relevant territory was the whole European Union. Second, with regard to the level of attention of the relevant public, the Board of Appeal found that the level of attention may vary from average to high, depending on the price or financial consequences, specialised nature, or terms and conditions of the services purchased.
19      Concerning the services in question, the Board of Appeal concurred with the finding of the Opposition Division that the services applied for are identically contained in the broader category of services under the earlier trade mark.
20      The applicant does not dispute those assessments of the Board of Appeal.
The comparison of the signs at issue
21      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43).
22      In addition, 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).
23      In this case, the Board of Appeal found that the signs at issue had an average degree of visual similarity. With regard to the degree of phonetic similarity, the Board of Appeal found that that degree was average given the common pronunciation ‘time’ which is one of the two syllables of the trade marks at issue. It further found that the marks at issue were conceptually similar to an average degree given that the common word element ‘time’ referred to the concept of ‘time.’ With regard to the term ‘the’ included in the mark applied for, it found that that element, which is a definite article, would be perceived as having limited importance for the conceptual comparison.
24      The applicant claims that the marks at issue are conceptually dissimilar. In the first place, it argues that the two elements ‘the’ and ‘time’ of the mark applied for are perceived as a whole, which produces a substantial effect and refers to a clear and distinct concept, easily understood by the relevant public. In the second place, it takes the view that the combination of the terms ‘house’ and ‘time’ in the earlier mark will be perceived as even more incoherent by the French-speaking public, or as having an allusive meaning. In the third place, it argues that the term ‘house’ is not descriptive of the services in question.
25      EUIPO disputes the applicant’s arguments.
26      The applicant does not dispute the assessment of the Board of Appeal that the signs at issue are visually and phonetically similar to an average degree.
27      With regard to the conceptual comparison of the signs, it should be noted that, contrary to what the applicant claims, the word element ‘the’ does not have any impact on the overall conceptual impression created by the mark applied for. According to the case-law, the definite article has no effect on the perception of a trade mark by the relevant public. First, the word ‘time’ will be clearly perceived by the relevant public as having a clear meaning and, second, it is not necessary for the word ‘time’ to be preceded by the article ‘the’ for it to be perceived as a noun (see, to that effect, judgments of 5 December 2013, Olive Line International v OHIM – Carapelli Firenze (Maestro de Oliva), T‑4/12, not published, EU:T:2013:668, paragraph 37, and of 24 June 2014, 1872 Holdings v OHIM – Havana Club International (THE SPIRIT OF CUBA), T‑207/13, not published, EU:T:2014:570, paragraph 28).
28      In addition, with regard to the earlier mark, the Board of Appeal rightly found that the relevant public will break it down into word elements which have a concrete meaning for them (judgment of 12 November 2008, ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 35), namely ‘time’ and ‘house.’
29      The Board of Appeal rightly held in paragraph 44 of the contested decision that the signs at issue were conceptually similar in so far as they refer to the concept of ‘time,’ from an abstract point of view, with regard to the mark applied for, and to the idea of sharing a house for periods of time, commonly referred to as ‘time sharing,’ with regard to the earlier mark.
30      The addition of the article ‘the’ in the mark applied for is not sufficient to remove that conceptual similarity since it has no impact on the overall impression created by the mark applied for, the meaning of which is clearly perceived by the relevant public as referring to the concept of time, as is apparent from paragraph 29 above.
31      In the light of the foregoing considerations, it must be held that the degree of conceptual similarity of the signs at issue is average.
The distinctiveness of the earlier mark
32      It must be borne in mind that, according to the case-law, for the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case‑law cited).
33      In this case, the Board of Appeal found that the relevant public at issue will break the earlier mark down into word elements which, for them, have a concrete meaning, namely ‘time’, being what is measured in minutes, hours, days and years, and ‘house’ having many possible meanings. With regard to the element ‘time, the Board of Appeal found that it had an average distinctive character in respect of all the services in question. With regard to the element ‘house,’ it found that it was of a weak distinctive character in respect of the services in Class 36 and some of the Class 43 services which are specifically provided in houses. Accordingly, the Board of Appeal found that the term ‘timehouse,’ which has no particular meaning, had an average distinctive character in respect of the services in question.
34      The applicant, without calling into question the average distinctive character of the earlier mark, claims that the Board of Appeal erred by failing to specify in respect of which services in Class 43 the earlier mark had that average distinctiveness. Thus, it takes the view that the services in question, in Classes 36 and 43, are not designated by the meaning of the term ‘house.’
35      EUIPO disputes the applicant’s arguments.
36      In this case, as is apparent from paragraph 36 of the contested decision, the Board of Appeal found that the earlier mark had average distinctiveness in respect of all of the services in question.
37      In addition, assuming that the arguments of the applicant are to be understood as meaning that it also claims that the Board of Appeal erred in finding that the earlier mark had average distinctiveness, those arguments cannot succeed. Even though the term ‘timehouse’ can be broken down into two words, each having a clear meaning, as noted in paragraph 28 above, the fact remains that that term, taken as a whole, does not exist as such in English and thus appears to be an invented word, even though the relevant public may see it as an allusion to the practice of sharing a house for defined periods of time. Accordingly, the Board of Appeal did not err in finding that the earlier mark had average distinctiveness.
The likelihood of confusion
38      A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity between these 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).
39      Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
40      In this case, the Board of Appeal rightly found that the likelihood of confusion was established having regard, in particular, to the similarity of the signs at issue to an average visual, phonetic and conceptual degree, the identity of the services in question and the average distinctiveness of the earlier mark. It found that the relevant public may reasonably regard the services designated by the mark applied for as a line of services falling within the scope of the earlier mark, inducing it to believe that those services have the same commercial origin. The relatively high level of attention of the relevant public in relation to some of the services in question does not alter that finding. In that regard, the fact that the level of attention of the relevant public is high where that public is made up of professionals who are the final consumers of the services in question does not suffice to rule out the possibility that that public may believe that the services in question originate from the same undertaking or, where appropriate, from economically linked undertakings (see, to that effect, judgments of 16 December 2010, Longevity Health Products v OHIM – Gruppo Lepetit (RESVEROL), T‑363/09, not published, EU:T:2010:538, paragraph 33 and the case-law cited, and of 30 March 2017, Apax Partners UK v EUIPO – Apax Partners Midmarket (APAX PARTNERS), T‑209/16, not published, EU:T:2017:240, paragraph 44).
41      The applicant alleges that the Board of Appeal erred in finding that the marks at issue were conceptually similar and consequently erred in failing to apply the principle of counteraction theory, under which conceptual differences between the mark applied for and the earlier mark may counteract any visual and phonetic similarity between those marks.
42      EUIPO disputes the applicant’s arguments.
43      In the circumstances, in order to apply the principle of ‘counteraction theory’, the marks at issue must have conceptual differences. That doctrine covers the situation where a particularly pronounced and obvious conceptual difference between the signs at issue may counteract any visual and phonetic similarity found between them (judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 23). Since the Board of Appeal was fully entitled to find, as noted in paragraph 31 above, that the marks at issue were conceptually similar to an average degree, there is no need to apply the principle of ‘counteraction theory.’
44      Thus, it should be noted that the circumstances of the present case are markedly different from those of the case which gave rise to the judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25) in which the principle of counteraction theory was applied. In the abovementioned case, it was found that the visual and phonetic similarities between the signs PICARO and PICASSO were counteracted by the conceptual differences between those signs, the sign PICASSO being immediately recognised by the relevant public as the name of the famous painter Pablo Picasso and therefore having a clear and specific semantic content. By contrast, in this case, the signs at issue are conceptually similar to an average degree.
45      In those circumstances, it must be held that the Board of Appeal was correct to find that the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 was established in this case concerning the services in question.
46      Consequently, the first plea in law raised by the applicant, alleging an infringement of Article 8(1)(b) of Regulation No 2017/1001, must be dismissed.
47      In light of all of the foregoing, the action should be dismissed in its entirety, without it being necessary to rule on the admissibility of the heads of claim seeking to reject the opposition and to authorise registration of the trade mark applied for.
Costs
48      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Chatwal Hotels & Resorts LLC to pay the costs.
Kornezov
Buttigieg
Hesse
Delivered in open court in Luxembourg on 17 March 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.