JUDGMENT OF THE GENERAL COURT (Second Chamber)
14 March 2017 (*)
(EU trade mark — Opposition proceedings — Application for an EU figurative mark — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑276/15,
Edison SpA, established in Milan (Italy), represented by D. Martucci, F. Boscariol de Roberto and I. Gatto, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf and A. Folliard-Monguiral, acting as agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Eolus Vind AB (publ), established in Hässleholm (Sweden),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 24 February 2015 (Case R 2358/2013-1), relating to opposition proceedings between Edison and Eolus Vind,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 26 May 2015,
having regard to the response lodged at the Court Registry on 8 September 2015,
having regard to the reply lodged at the Court Registry on 23 December 2015,
further to the hearing on 29 November 2016,
gives the following
Judgment
Background to the dispute
1        On 16 November 2011, Eolus Vind AB (publ) 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).
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 4, 11, 36, 37, 39, 40, 42 and 45 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 4: ‘Electric energy emanating from wind power’;
–        Class 11: ‘Plants for the production of renewable energy’;
–        Class 36: ‘Insurance; financial affairs; monetary affairs; real estate management; financial management of wind power plants’;
–        Class 37: ‘Construction of wind power plants and other buildings; repair of wind power plants and other buildings; installation services regarding wind power plants and other buildings’;
–        Class 39: ‘Electricity distribution of wind power energy’;
–        Class 40: ‘Energy production of wind power energy; leasing of wind power energy generating facilities’;
–        Class 42: ‘Scientific and technological services; industrial analysis and research services; technical planning and project management relating to the construction and use of wind power; technological engineering analysis in the field of wind power exploitation’;
–        Class 45: ‘Legal services’.
4        The trade mark application was published in Community Trade Marks Bulletin No 8/2012 of 12 January 2012.
5        On 29 February 2012, the applicant, Edison SpA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6        The opposition was based on the earlier figurative mark, reproduced below, which was filed on 31 October 2003, registered as an EU trade mark on 14 July 2005 under the number 3490851 and covers, inter alia, the goods ‘fuel, gas’ in Class 4, the services ‘distribution of electrical energy and fuel’ in Class 39 and the services ‘generation of electrical energy’ in Class 40:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009.
8        On 1 October 2013, the Opposition Division rejected the opposition.
9        On 28 November 2013 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 24 February 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision in part, dismissed the appeal as to the remainder and ordered each party to bear the costs which that party had itself incurred in the course of the opposition and appeal proceedings. According to the Board of Appeal:
–        the relevant public consists of the general public as well as of professionals with specific professional experience and knowledge. Its level of attention is high, in the case of the former group, on account of the fact that the goods and services in question are not acquired on an everyday basis and, in the case of the latter group, on account of its professional responsibilities;
–        the signs at issue are, ‘at most, similar overall to a low extent’;
–        the services ‘electricity distribution of wind power energy’ in Class 39 covered by the mark applied for and the services ‘distribution of electrical energy and fuel’ in Class 39 covered by the earlier mark are identical. Likewise, the services ‘energy production of wind power energy’ in Class 40 covered by the mark applied for and the services ‘generation of electrical energy’ in Class 40 covered by the earlier mark are identical;
–        the other goods and services at issue are, in part, similar, in part, similar to a low degree and, in part, dissimilar;
–        the earlier mark has a normal degree of inherent distinctiveness.
11      The Board of Appeal deduced from those findings that there was a likelihood of confusion between the marks at issue in respect of the services referred to in the third indent of paragraph 10 above and that there was no likelihood of confusion in respect of the other goods and services.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision in part, in so far as it rejected the opposition in respect of the goods and services in Classes 4, 11, 37, 40 and 42 covered by the mark applied for;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of the action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and consisting of three parts.
15      In the context of the first part of the plea, the applicant submits that the Board of Appeal made errors of assessment at the stage of the comparison of the signs and the comparison of the goods and services concerned. In the context of the second part, the applicant alleges, in essence, that the Board of Appeal erred in finding that it had failed to provide suitable evidence to prove that the earlier mark had acquired enhanced distinctiveness through use. Lastly, in the context of the third part, the applicant alleges that the Board of Appeal made an error of assessment inasmuch as it found that there was no likelihood of confusion between the marks at issue.
The first part
16      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an 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.
17      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).
18      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
19      The Board of Appeal found, in paragraphs 13 to 16 of the contested decision, that, since the earlier mark was an EU trade mark, the perception of consumers within the European Union was relevant. As regards the level of attention, it made a distinction between the goods and services concerned and took the view that the goods and services in Classes 4, 36 and 45 were aimed at the general public as well as at professionals. According to the Board of Appeal, those consumers are regarded as having, on average, a high level of attention, due to the fact that the goods and services in question are not acquired on an everyday basis. By contrast, it found that the goods and services in Classes 11, 37, 39, 40 and 42 are mainly specialised goods and services aimed at business customers with specific professional experience and knowledge. According to the Board of Appeal, those consumers are regarded as having a high level of attention due to their professional responsibilities. The applicant does not dispute those findings. They must, in any event, be accepted, since they are correct.
The comparison of the signs
20      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
21      According to settled 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 (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46).
22      The Board of Appeal made the following findings:
–        visually, the graphic representations of the marks at issue, even though in very different typefaces and colours, could not be considered to be devoid of any similarity;
–        phonetically, the relevant consumer would tend to describe the marks at issue and not pronounce them, but if the marks were pronounced, they would be pronounced in an identical way;
–        conceptually, if both signs were perceived as a stylised letter ‘e’, the marks at issue would be identical for the relevant public, which would perceive them as a reference to ‘energy’ or ‘electricity’, but that conceptual identity was of limited importance on account of the descriptive character of the single letter ‘e’.
23      The applicant submits that the Board of Appeal overstated the differences between the signs at issue at the expense of the similarities between them. The signs at issue are therefore, according to the applicant, similar, and not merely similar to a low degree.
24      In the present case, the sign applied for, which has been reproduced in paragraph two above, consists of a stylised letter ‘e’. That letter is written in blue, bold typeface and the horizontal line of the letter is extended to the left-hand side, calling to mind an easterly wind blowing out of the back of the letter. The earlier sign, which has been reproduced in paragraph 6 above, consists of two incomplete, crescent-shaped circles which overlap in the centre of the sign, the upper circle being larger than the lower circle. The sign as a whole is drawn in a fine grey and italic typeface. A swirl whirling upwards emerges from the right-hand side of the sign. Upon closer analysis, the way in which both circles in the earlier sign are linked to each other creates the impression of the letter ‘e’.
25      From a visual standpoint, the signs at issue may be regarded as similar to the extent that they each contain a circle. However, as was correctly pointed out by the Board of Appeal, the visual differences between them, due to their stylisation, prevail over the similarity between them, which is linked to the fact that they both represent the letter ‘e’. Accordingly, the marks differ in their respective colours (grey with regard to the earlier mark and blue with regard to the mark applied for), their typefaces (fine and italic with regard to the earlier mark and bold with regard to the mark applied for) and the overall impressions they convey (an impression of two circles linked to each other with regard to the earlier mark and an impression of being in motion with regard to the mark applied for).
26      From a phonetic standpoint, the Board of Appeal was right in finding that, on account of their stylisation, the relevant consumer would tend to describe the marks and not pronounce them, with the result that the phonetic comparison serves no purpose. However, the Board of Appeal correctly pointed out that, to the extent that the relevant consumer associated the two marks with the letter ‘e’ and the marks were pronounced, there would be phonetic identity.
27      From a conceptual standpoint, in so far as the two signs are perceived as a stylised letter ‘e’, it should be borne in mind that a single letter can have a conceptual content if it has a meaning with regard to the goods or services. In the present case, the letter ‘e’, associated with the relevant goods and services in Classes 4, 11, 37, 39, 40 and 42, informs the relevant public of the fact that those goods and services are connected with energy or electricity, given that the letter ‘e’ is often used as an abbreviation for the terms ‘energy’ or ‘electricity’ (see, to that effect, judgment of 21 May 2008, Enercon v OHIM (E), T‑329/06, not published, EU:T:2008:161, paragraphs 24 to 30). Consequently, the signs are conceptually identical for the relevant public which will perceive the marks at issue as a reference to ‘energy’ or ‘electricity’.
28      However, as the Board of Appeal correctly pointed out, the letter ‘e’ is descriptive of the goods and services at issue, with the result that the conceptual identity is of limited importance in the comparison of the marks.
29      It must therefore be held, in view of the foregoing considerations, that the Board of Appeal was right in finding that the signs at issue are ‘at most, similar overall to a low extent’.
30      That analysis is not called into question by the arguments put forward by the applicant.
31      In the first place, as regards the argument that an alphanumerical trade mark is immediately recognised by the consumer as such and, consequently, that that consumer will recognise immediately, without any analysis, the letter ‘e’ in the earlier sign, it must be pointed out that, even in such a case, the Board of Appeal’s assessment as regards the low degree of similarity between the signs remains valid. As is apparent from paragraph 21 of the contested decision, the Board of Appeal did not rule out the possibility that a part of the relevant public might perceive the earlier sign as the letter ‘e’, particularly because the goods and services covered by the earlier mark all relate to the energy sector or because the name of the proprietor of that mark begins with an ‘e’.
32      In the second place, according to the applicant, the mark applied for cannot be perceived as being ‘in motion’, since the left-hand side of the sign is purely ornamental, and, alternatively, if the Board of Appeal’s assessment were to be accepted, that would also apply to the earlier mark, which has a swirl whirling upwards emerging from the right-hand side of the sign and therefore conveys a strong sense of motion. In that regard, it must be held that, even if the marks at issue both conveyed the concept of motion or alluded to the wind, that similarity would not substantially lessen the significant visual differences that exist between their respective stylised representations, as described in paragraph 24 above.
33      Lastly, the applicant’s argument that the letter ‘e’ does not, in the field of energy and/or electricity, have a direct and unambiguous link with the goods or services covered by the sign can also not succeed. As has already been pointed out in paragraph 27 above, the letter ‘e’ is often used as an abbreviation for the terms ‘energy’ or ‘electricity’. Furthermore, it is apparent from the findings in paragraph 35 of the contested decision, which the applicant has not disputed, that the letter ‘e’ is used in that sense in the trade marks of a number of its competitors.
The comparison of the goods
34      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
35      The applicant submits that, contrary to what the Board of Appeal found in the contested decision, the goods and services at issue are identical, highly similar or, at the very least, closely connected.
36      The Board of Appeal found that some of the goods and services at issue were identical, some of them were similar and others were similar to a low degree or not similar.
37      More specifically, it found, as regards the goods and services which it did not consider to be identical, that the goods ‘electric energy emanating from wind power’ in Class 4 covered by the mark applied for were similar to the goods ‘fuel, gas’ in that class covered by the earlier mark, but that the applicant had not established that they were capable of being produced by the same undertakings. It likewise found that the goods ‘electric energy emanating from wind power’ in Class 4 covered by the mark applied for were similar to the services ‘generation of electrical energy’ in Class 40 covered by the earlier mark. The Board of Appeal found that the goods ‘plants for the production of renewable energy’ in Class 11 covered by the mark applied for were similar to a low degree to the goods and services ‘fuel, gas’, ‘distribution of electrical energy and fuel’ and ‘generation of electrical energy’ in Classes 4, 39 and 40 respectively, covered by the earlier mark. However, the Board of Appeal concluded that the applicant had not demonstrated that those goods and services were offered by the same undertakings and found that, in the field of the production of renewable energy, that was by no means a fact which was considered to be well known. Likewise, according to the Board of Appeal, the services ‘leasing of wind power energy generating facilities’ in Class 40 covered by the mark applied for are similar to a low degree to the services ‘generation of electrical energy’ in that class covered by the earlier mark. By contrast, it found that the services ‘construction of wind power plants and other buildings; repair of wind power plants and other buildings; installation services regarding wind power plants and other buildings’ in Class 37 covered by the mark applied for and the services ‘distribution of electrical energy and fuel’ and ‘generation of electrical energy’ in Classes 39 and 40 respectively, covered by the earlier mark, were not similar. It also found that the services in Classes 36, 42 and 45 covered by the mark applied for and the goods and services covered by the earlier mark were not similar.
38      The applicant submits, in essence, that the product ‘electric energy emanating from wind power’ in Class 4 covered by the mark applied for is not merely similar but identical to the goods ‘fuel, gas’ in Class 4 covered by the earlier mark. In addition, the applicant takes the view that it is well known that the goods at issue are as a matter of principle produced by the same undertakings. Furthermore, the applicant maintains that there are decisions of EUIPO which confirm that principle. The applicant also disputes the Board of Appeal’s finding that the goods ‘plants for the production of renewable energy’ in Class 11 covered by the mark applied for are similar only to a low degree to the service ‘generation of electrical energy’ in Class 40 covered by the earlier mark and that the services ‘construction of wind power plants and other buildings; repair of wind power plants and other buildings; installation services regarding wind power plants and other buildings’ in Class 37 covered by the mark applied for are not similar to the service ‘generation of electrical energy’ in Class 40 covered by the earlier mark.
39      The applicant also submits that it is well known — which is, moreover, confirmed by the evidence it submitted before the Opposition Division — that those goods and services are often provided by the same companies. It maintains that the same is true of the service ‘leasing of wind power energy generating facilities’ covered by the mark applied for and the service ‘generation of electrical energy’ covered by the earlier mark, both of which services are in Class 40. Lastly, the applicant submits that the goods and services covered by the earlier mark are similar to the ‘scientific and technological services; industrial analysis and research services; technical planning and project management relating to the construction and use of wind power; technological engineering analysis in the field of wind power exploitation’ in Class 42 covered by the mark applied for. It maintains that researching, designing and technically planning energy plants is complementary to generating and distributing electrical energy.
40      The applicant’s arguments cannot succeed.
41      In that regard, as far as the goods in Class 4 covered by the marks at issue are concerned, it must be pointed out, in the first place, that it is apparent from the file relating to the proceedings before EUIPO that the applicant did not put forward any arguments in the course of the opposition proceedings to support its claim that the goods at issue in Class 4 could be produced by the same undertakings. Furthermore, it must be stated that that is not a well-known fact.
42      As is apparent from the case-law, in inter partes proceedings, the Board of Appeal cannot take into account facts which have not been put forward by the parties (see, to that effect, judgments of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraph 52, and of 27 October 2005, Editions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraphs 32 and 33).
43      In the second place, even if the goods at issue were produced by the same undertakings, the effect of that would not be that those goods would be identical, but that they would be similar. As EUIPO correctly submits, electrical energy, which is an intangible product, does not have the same nature, composition or properties as gasolines and fuels, which are tangible goods. Furthermore, electrical energy does not fall within a broader category of ‘fuel’ since the latter is combustible matter (in solid, liquid or gaseous form) which can be used to produce the former. Accordingly, the applicant’s reference to the Board of Appeal’s reasoning that the ‘electricity distribution of wind power energy’ in Class 39 covered by the mark applied for and the ‘distribution of electrical energy and fuel’ in that class covered by the earlier mark are identical is irrelevant.
44      Next, as regards the applicant’s arguments relating to the goods and services in Classes 11, 37, 40 and 42 covered by the mark applied for, it must be pointed out that the Board of Appeal was entitled, without committing any error, to conclude that they were similar to a low degree or not similar to the goods and services covered by the earlier mark.
45      As regards the goods ‘plants for the production of renewable energy’ in Class 11 covered by the mark applied for, the Board of Appeal correctly found that those goods were similar to a low degree to the goods or services in Classes 4, 39 and 40 covered by the earlier mark. More specifically, it found that the goods in Class 11 and the services in Class 40 were complementary because electrical energy may not be generated without production plants. However, the fact remains that the applicant did not demonstrate, in accordance with its obligation deriving from Article 76(1), in fine, of Regulation No 207/2009, that an undertaking which sells fuel or gas or generates electrical energy also manufactures plants for the production of renewable energy which it then offers to third parties. The fact also remains that the situation regarding the production and sale of plants for the production of renewable energy cannot be considered to be well known.
46      Likewise, as regards the services in Class 37 covered by the mark applied for and those in Classes 39 and 40 covered by the earlier mark, the Board of Appeal was right in finding that the applicant’s argument that the majority of the undertakings which distribute and generate electrical energy use, as a matter of principle, their own plants, have, therefore, their own technical repair departments and consequently have their own specialist staff to repair their generating plants does not mean that they provide those repair services to third parties. Furthermore, the claim that those repair services by specialist technicians are provided to third parties, or even to competitors, was in no way substantiated by the applicant during the proceedings before EUIPO. The examples referred to in that regard in the application are also not capable of substantiating that claim.
47      As regards the services ‘leasing of wind power energy generating facilities’ in Class 40 covered by the mark applied for and those of ‘generation of electrical energy’ in the same class covered by the earlier mark, which the Board of Appeal found to be similar to a low degree, it must held that in this respect the applicant has also not demonstrated that an undertaking which generates electrical energy also produces plants for the production of renewable energy which it then offers to third parties. Furthermore, contrary to what the applicant claims, it is in no way a well-known fact that major companies that produce energy also manufacture plants to produce energy.
48      Lastly, the Board of Appeal was right in finding, as regards the services in Class 42 covered by the mark applied for and the services in Classes 39 and 40 covered by the earlier mark, that, despite the fact that researching, designing and technically planning energy plants are just the preliminary phase to generating and distributing electrical energy, both the services providers and manufacturers and the public addressed differ and that those services cannot, for that reason, be complementary.
49      It is true that, as the applicant submits, complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, it must be possible for complementary goods or services to be used together, with the result that goods and services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
50      However, as is apparent from paragraph 48 above, that is not the case here. Consequently, the applicant’s claim that the services in Class 42 covered by the mark applied for are similar to the services covered by the earlier mark must be rejected.
51      Furthermore, the example given by the applicant that in the case of a malfunction in the generation of the energy the consumer could reasonably suppose that the malfunction is attributable, without distinction, to the owner of the plant or to the owner of the distribution system or to an error by the person responsible for the technical design of the plant is hardly convincing. Furthermore, it is not obligatory for the running of the plant always to be carried out by its technical designer.
52      It follows from the foregoing that the first part of the single plea in law must be rejected.
The second part
53      In the context of the second part of the plea, the applicant disputes the Board of Appeal’s finding that it failed to provide suitable evidence to prove that the earlier mark had acquired enhanced distinctiveness through use.
54      The assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the earlier mark on the market in question. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
55      The existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that, the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 34 and the case-law cited).
56      In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, VITACOAT, T‑277/04, EU:T:2006:202, paragraph 35 and the case-law cited).
57      In the present case, it must be stated that the applicant’s claim that the Board of Appeal did not analyse the documents providing during the proceedings before EUIPO must be rejected. On the contrary, it is apparent from paragraph 70 of the contested decision that the Board of Appeal took those documents (such as the annual reports for 2008 to 2011 referring to the applicant’s turnover, a declaration regarding that turnover by the applicant’s general counsel and press releases) into consideration, but found that they did not prove that the earlier mark was well recognised by the relevant public. The applicant provided only documents which relate to the general economic success of its company. The evidence aimed at proving that the applicant sponsored an Italian team during the Olympic Games does not in itself prove that the public recognised the earlier mark. Furthermore, it must be held that the abovementioned documents, even taken together, are not on their own sufficient to prove that the earlier mark has enhanced distinctiveness.
58      In addition, as regards the applicant’s reference to a previous decision of EUIPO in which the earlier mark was found to have a high degree of distinctiveness, it must be pointed out that that decision is irrelevant, since it concerned another of the applicant’s marks and covered services that are different from those at issue in the present case. Consequently, it must be held that the Board of Appeal was right in finding, in paragraph 71 of the contested decision, that the applicant had not proved that the earlier mark had acquired enhanced distinctiveness through use.
59      It follows from the foregoing that the Board of Appeal did not err in finding that the earlier mark had a normal degree of inherent distinctiveness.
The third part
60      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
61      The Board of Appeal found that, having regard to the lack of identity between the contested goods and services in Classes 4, 11, 37, 40 and 42 covered by the mark applied for and the goods and services covered by the earlier mark, the low degree of similarity between the signs at issue and the normal degree of inherent distinctiveness of the earlier mark, there was no likelihood of confusion between the marks at issue.
62      The applicant, on the contrary, submits that, in view of the similarities between the goods and services at issue, on the one hand, and between the signs at issue, on the other hand, consumers will easily be able to confuse one mark with the other. It concludes that there is a likelihood of confusion.
63      The Board of Appeal’s assessment must be upheld. In particular, in the context of a global assessment of the likelihood of confusion, it must be pointed out that it is apparent from the foregoing considerations that the applicant’s arguments calling into question the assessment of the likelihood of confusion must be rejected. Contrary to what the applicant has claimed, the signs at issue are not similar and the earlier mark does not have enhanced distinctiveness. Furthermore, it must be held, as has been submitted by EUIPO, that the applicant does not put forward any convincing argument which would call into question the Board of Appeal’s findings that the particularly attentive relevant public will not base its purchasing decision exclusively on a commonly used, and therefore descriptive, abbreviation in the relevant energy market, but rather on the specific stylisation given to the letter ‘e’. Even if phonetic or conceptual similarities were found to exist between the signs, the relevant public would be capable of perceiving the visual differences and would not be led to believe that the goods or services in question come from the same undertaking or from economically-linked undertakings.
64      It follows from all of the foregoing that the third part of the single plea must be rejected and consequently the action must be dismissed in its entirety.
Costs
65      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
66      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Edison SpA to pay the costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 14 March 2017.
E.  Coulon
I.Pelikánová
Registrar
President
* Language of the case: English.