JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
20 February 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark BEPOST — Earlier EU figurative mark ePost and earlier national word mark POST — Non-registered mark or sign used in the course of trade POST — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — No detriment to reputation and no dilution — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) — Evidence presented for the first time before the General Court)
In Case T‑118/16,
Deutsche Post AG, established in Bonn (Germany), represented by K. Hamacher and G. Müllejans, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, G. Sakalaite-Orlovskiene and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
bpost NV, established in Brussels (Belgium), represented initially by L. Hubert and K. Ongena, and subsequently by H. Dhondt and J. Cassiman, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 18 January 2016 (Case R 3107/2014-1) relating to opposition proceedings between Deutsche Post and bpost,
THE GENERAL COURT (Fourth Chamber)
composed of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 23 March 2016,
having regard to the response of EUIPO lodged at the Court Registry on 26 July 2016,
having regard to the response of the intervener lodged at the Court Registry on 23 August 2016,
further to the hearing on 6 October 2017,
gives the following
Judgment
I.      Background to the dispute
1        On 19 February 2010, the intervener, bpost NV, 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 BEPOST.
3        The goods and services for which registration was sought are in Classes 16, 35, 38 and 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter, including commercial printed matter, writing paper, envelopes; postage stamps, leaflets and magazines; greeting cards and picture postcards; photographs; pamphlets, catalogues, user manuals, forms; printed advertising material; stickers, posters, cards, greeting cards, invitation and announcement cards, pictures, writing paper, jotters, pads, note pads, diaries, albums, photograph albums, calendars, sketch books, drawing books, colouring books, books, periodicals and magazines; packaging materials of paper, cardboard or plastic not included in other classes; office requisites (except furniture), in particular stamps, ink pads and ink therefor, letter-openers, folders for papers, pads, office perforators, staplers, rulers, pencil-sharpeners, elastic bands, paper clips and staples’;
–        Class 35: ‘Advertising; business management; business administration; office functions; business consultancy relating to data processing, whether or not electronic; office functions, including the tracing and tracking of mail items; dissemination and processing of publicity printed matter and advertising and promotional materials; distribution of advertising materials; organising direct mail campaigns; management of databases; gathering, classifying, sorting and updating of data for databases; office functions, including the tracking and tracing of documents, whether or not electronic; administrative management and administrative processing of transactions and documentation, and order processing; all the aforesaid services also provided via electronic channels, including the internet; office functions, including mail handling (handling incoming and outgoing mail); compilation of sets of forms and/or documents within the framework of postal delivery; door-to-door distribution (selective, separate, addressed and by sampling), transport and distribution, and collection, sorting and storage in relation thereto, of printed matter, documents and goods, whether or not addressed; all the aforesaid services also, where possible, to be provided via electronic channels, including the internet’;
–        Class 38: ‘Telecommunication; communications and telecommunications services; telecommunications, including providing telephone communications via computer networks, conversation services and making available online facilities for direct interaction with other computer users; computer aided transmission and distribution of information, data, images, documents and messages; email services and electronic transmission of information, data, images, documents and messages through computer terminals and networks; consultancy in the field of the above mentioned services’;
–        Class 39: ‘Transport; packaging and storage of goods; travel arrangement; mail delivery; placing in envelopes, airtight packing and other prepostal processing of documents and parcels as part of dispatch services; courier services (messages or merchandise); providing data relating to the location of means of transport and postal items in connection with tracking and tracing, freight forwarding; transport and delivery of postal items and parcels and the gathering, sorting, storing, conveying and delivery thereof; transportation information; all the aforesaid services also, where possible, to be provided via electronic channels, including the internet’.
4        The trade mark application was published in Community Trade Marks Bulletin No 74/2010 of 26 April 2010.
5        On 5 July 2010, the applicant, Deutsche Post AG, 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 all the goods and services referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        the German word mark POST, registered on 3 November 2003 under No 30012966 and renewed until 20 February 2020, covering services falling within Classes 35 and 39 and corresponding, for each of those classes, to the following description:
–        Class 35: ‘Postal, freight, express, parcel and courier services’;
–        Class 39: ‘Transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, direct and indirect mail advertising, books, Braille literature, newspapers, periodicals and brochures’.
–        the EU word mark Deutsche Post, registered on 29 July 2002 under No 1798701 and renewed until 8 August 2020, covering goods and services falling within Classes 9, 12, 14, 16, 25, 28, 35, 36, 38, 39 and 42 and corresponding, for Classes 16, 35, 38 and 39, to the following description:
–        Class 16: ‘Paper, cardboard and goods made from these materials, printed matter; software and computer programs in printed form; bookbinding material, photographs, stationery, adhesives for stationery or household purposes; artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus); plastic materials for packaging, playing cards, printers’ type, printing blocks; philatelic products (included in Class 16), namely postage stamps, magnifying glasses, tongs, albums and other containers of metal or plastic for storing postage stamps and stamp collection accessories’;
–        Class 35: ‘Advertising; sponsorship services; business management services; marketing communications, in particular press liaison, public relations, product advertising, image campaigns, for others; arranging and concluding commercial transactions for others; business, personnel and economic consultancy; consultancy in the field of direct marketing’;
–        Class 38: ‘Telecommunications; internet and online services, namely electronic sending of messages and images, and the gathering, providing and supplying of information and data, and other internet and online services’;
–        Class 39: ‘Transport, packaging and storage of goods, travel arrangement; consignment follow-up services involving the electronic tracking of goods and items, and further logistical support services, including the systematic cross-linking of the flow of goods and information; postal, freight and courier services; transport of goods, parcels, items of post, packages, written communications and other messages, in particular letters, postcards, printed matter, trade samples, circulars, direct and indirect mail advertising, books, Braille literature, newspapers, periodicals and pamphlets, by bicycle, car, mechanical vehicle, ship and aeroplane; collection, forwarding and delivery of the aforesaid items’;
–        the EU figurative mark
registered on 1 April 2008 under No 5850193, covering goods and services in Classes 9, 35, 36, 38, 39, 40, 41 and 42 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Magnetic data carriers; data processing equipment and computers; software and data processing programs; computer software for accessing information directories that may be downloaded from the global computer network; downloadable electronic files; mail management tools (software); computer programmes for document management; electronically stored printed matter, in particular for postal services, including postage stamps which can be acquired electronically or via online/internet services and printed out for dispatch purposes using computer devices; devices for the recording, transmission and playback of sound and images; downloadable publications’;
–        Class 35: ‘Computer database management; computerised database management services; brokerage of addresses and address files; providing of addresses; collecting, addressing, enveloping, folding and franking of goods, in particular letters, parcels and packages; advertising; marketing; direct marketing; business management services; business administration; business consultancy; office functions;updating of advertising material; computerised file management; publication of publicity texts; commercial information services; arranging and concluding of commercial transactions, including within the framework of e-commerce; arranging, and handling of contracts for the purchase and sale of goods and the use of services; distribution of samples; dispatch of advertisements; document reproduction; collating, systematic ordering, updating and storage of data in a computer database; order placement and invoice management, including within the framework of e-commerce; electronic commerce systems, namely the receiving and handling of electronically transmitted order transactions; electronic data processing, for others; systematisation and collating of data in computer databases, in particular management, updating, selection, formatting, analysing, renting and providing addresses or address files; electronic capture and electronic archiving of addresses or address files in computer databases; electronic data exchange for commercial transactions, in particular order transactions, invoicing, fund transfers, descriptions of goods; electronic processing; electronic archiving; commercial and organisational consultancy, in particular in the field of e-commerce; call centre services, namely the receiving of telephone orders and complaints, and information services in the field of advertising, marketing; storage of electronically-stored data or documents; data management on servers; digital image processing; digital data processing; technical consultancy in the field of e-commerce’;
–        Class 36: ‘Electronic payment services; electronic processing and transmission of bill payment data’;
–        Class 38: ‘Telecommunications; uploading and downloading of documents, music, games, images, voice, ring tones and news via global communication networks and electronically accessible websites, including mobile communications devices; electronic data, image and document transmission via computer networks and terminals; computer-aided transmission of messages and images; sending of messages; wireless telephone communications and telephone communications via computer networks; telephone services; radio paging, mobile telephony, fax and telex services, providing access to information and global communications computer networks; providing access to a telecommunications network portal, including by means of a computer, telephone or television; electronic mail services; communication facilities that enable voting via mobile or fixed communication devices; leasing of access time on a computer and on computer networks for data processing and leasing of access time on a computer database; fax reception and sending services; establishing and providing of communications protocols to facilitate data exchange or data transmission between two or more communications partners; data transmission; electronic transmission via multi-channel sending; electronic transmission of every kind of electronic files, in particular documents and video files; providing internet access, in particular enabling third parties to award contracts online or via the internet; providing portals on the internet; forwarding of messages of all kinds to internet addresses (web-messaging); address data transfer, providingaccess to a computer network and/or in a database; wireless digital data transfer services; services of an electronic exchange between computer networks (clearing centre), in particular adding and converting data into a receiver-independent form/structure and/or data matching; consultancy in the field of data transmission; call centre services, namely the receiving of the telephone orders and complaints, and information services in the field of telecommunication; technical consultancy in particular in the field of data transmission, data exchange and data conversion; electronic transmission of mails, namely conversion of recorded (electronic) messages into visually readable and physical documents, which can then be transported in paper form as letter post’;
–        Class 39: ‘Transport, in particular transport of goods by motor vehicle, lorry, rail, ship and aeroplane; packaging and storage of goods; transportation information; storage information; courier services; logistics in the transport sector; collection, transport and delivery of goods, in particular documents, packages, parcels, letters and pallets; freighting by ship, aeroplane, rail, motor vehicle and lorry; tracking by means of the electronic tracking of goods, in particular documents, packages, parcels, letters and pallets, included in class 39; letter, freight and express delivery services; providing information relating to handling, transport and logistics, in particular the handling of documents, letters, packages, parcels and pallets; providing information in databases in the field of the transport, packaging and storage of goods; consultancy in the fields of transportation and logistics; call centre services, namely the receiving of the telephone orders and complaints, and information services in the field of transport and storage of goods’.
–        Class 40: ‘Printing; printing services’;
–        Class 41: ‘Providing of training; education’;
–        Class 42: ‘Providing computer software that may be downloaded from a global computer network; programming, design, maintenance and updating of software; computer consultancy; programming, development and hosting of web pages for communications via global computer networks; constructing an internet platform for electronic commerce; professional and technical services in relation to computers; computer services; computer rental services; computer consultancy services; advisory services for online user via a telephone or computer hotline; providing electronic verification of online orders of digital content and generating electronic permission codes which then allow users to access said digital content; provision of online support services for computer program users; conception, updating and design of computer software; rental of computer programs on data networks; data security services; recovery of computer data; provision of webspace (webhosting) and of memory spaces on the internet; computer systems analysis; conversion of computer programs and data (other than physical alteration); implementation of computer programs on networks; providing platforms on the internet; rental and/or leasing of software and hardware for online access to a name and address directory with a treelike structure with e-directory service functions, which enable it to administer complex networks in the system on the basis of address data only; services of a certification body (trust centre), namely issuing and management of digital codes and/or digital certificates, testing and confirmation of the validity of entered codes, secure protection of secret codes, management of restriction lists and authentication of legal conditions, digitalisation of analogue information and/or the reproduction thereof’;
–        the EU figurative mark
registered on 21 January 2010 under No 8408056, covering goods in Classes 9, 16, 35, 38, 39 and 42 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer peripheral devices; optical and magnetic data media; data-processing equipment and computers; computer operating programs recorded; computer software (recorded); computer programs (downloadable); computer peripheral devices; electronic publications (downloadable); letter scales; DVDs, compact discs; magnetic identity cards’;
–        Class 16: ‘Paper, cardboard and goods made from these materials, included in this class; postage stamps; envelopes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office machines (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging, included in Class 16; printers’ type; printing blocks; shipping containers of cardboard or paper; bags, envelopes, pouches of paper or plastics, for packaging; cardboard articles; foils from plastic for packaging purposes’;
–        Class 35: ‘Advertising; market research; direct marketing; business management services; business administration; business consultancy; office functions; updating of advertising material; advertising agency services; cost-price analysis; bookkeeping; auditing; computerised file managing; relocation services for businesses; invoicing services (office functions); drawing up of statistics; market research; opinion polling; publication and writing of publicity texts; sponsoring in the form of advertising; planning and monitoring of business developments with regard to organisational matters; commercial information services; business investigations; drawing up of business expert reports; procurement services, for others (purchasing of goods and services for other businesses); personnel management consultancy; arranging of commercial transactions, including within the framework of e-commerce; arranging of contracts, for others, for the buying and selling of goods; arranging of contracts, for others, for the providing of services; arranging of trading and economical contacts, also over the internet; distribution of samples; direct mail advertising; dissemination of advertising matter; display services for merchandising; attracting customers and customer care by means of mail advertising (mailings); layout design for advertising purposes; document reproduction services; public relations; searches in computer data files (for others); business research; organisation and arranging of advertising events; organisation of fairs and exhibitions for commercial or advertising purposes; collating, systematic ordering, updating and storage of data in a computer database; Professional business and organisational consultancy; collecting, binding, addressing and enveloping of goods, in particular letters, parcels and packages (office functions); marketing consulting; planning of advertising and marketing initiatives; administrative order processing; presentation of companies on the internet and other media; presentation of goods on communications media for retail purposes; publication of printed matter (including in electronic form), for advertising purposes; direct marketing consultancy; Consumer consultancy; sales promotion (for others); providing of addresses for advertising purposes; good and service presentations; assortment of goods, for others, namely in the field of printed matter, stationery, the transport of letters, and philately, for presentation and sales purposes; electronic data processing consultancy; electronic data storage’;
–        Class 38: ‘Telecommunications, in particular by means of platforms and portals on the internet; providing access to a global computer network; providing access to computer programs on data networks; providing access to information on the internet; electronic mail services; communication by computer terminals; computer-aided transmission of messages and images; telecommunication routing and junction services; rental of telecommunication equipment; rental of message sending apparatus; rental of telecommunications apparatus; leasing of access time to global computer networks; procuring access to databases; web messaging’;
–        Class 39: ‘Transport, in particular transport of goods by motor vehicle, lorry, rail, ship and aeroplane; packaging and storage of goods; transportation information; freight brokerage, unloading of freight; storage information; courier services (messages or merchandise); logistics in the transport sector; collection, transport and delivery of goods, in particular documents, packages, parcels, letters and pallets; tracking by means of the electronic tracking of goods, in particular documents, packages, parcels, letters and pallets, included in class 39; rental of storage containers; rental of warehouses; franking of goods, in particular letters, parcels and packages, including online; freight forwarding; transport brokerage; physical storage of electronically stored data and documents; Delivery of mail-order goods’;
–        Class 42: ‘Design and development of computer hardware and software; computer software (updating of-); Updating of internet pages; user management and authorisation on computer networks; consultancy with regard to the design of homepages and internet pages; Telecommunications engineering consultancy; provision of search engines for the internet; computer hardware and software consultancy; consultancy in the field of computers; computer systems analyses; designing and creating homepages and internet pages; software design services; computer programming; virus protection; editing, formatting and transfer of data on to blank CDs (premastering); electronic data security; computer programming; design and maintenance of websites for third parties; installation and maintenance of software; installation and maintenance of software for internet access; installation of computer programs; configuring computer networks by means of software; conversion of computer programs and data (other than physical alteration); conversion of data or documents from physical to electronic media; server administration; quality control; security services for protection against illegal network access; certification services; technical consultancy; technical project studies; technical project management in the field of electronic data processing; rental and maintenance of memory space for websites, for others (hosting); computer rental; rental of computer software; Computer rental; rental of webservers; restoration of computer dates; recovery of computer data; providing or rental of electronic memory space on the internet (webspace)’;
–        the non-registered mark or sign used in the course of trade Deutsche Post AG for the following services: ‘Transport, in particular transport of goods by motor vehicle, lorry, rail, ship and aeroplane; packaging and storage of goods; transportation information; storage information; courier services; logistics in the transport sector; collection, transport and delivery of goods, in particular documents, packages, parcels, letters and pallets; freighting by ship, aeroplane, rail, motor vehicle and lorry; tracking by means of the electronic tracking of goods, in particular documents, packages, parcels, letters and pallets, included in class 39; letter, freight and express delivery services; providing information relating to handling, transport and logistics, in particular the handling of documents, letters, packages, parcels and pallets; providing information in databases in the field of the transport, packaging and storage of goods; consultancy in the fields of transportation and logistics; call centre services, namely the receiving of the telephone orders and complaints, and information services in the field of transport and storage of goods’;
–        the non-registered mark or sign used in the course of trade POST for the following services: ‘Transport, in particular transport of goods by motor vehicle, lorry, rail, ship and aeroplane; packaging and storage of goods; transportation information; storage information; courier services; logistics in the transport sector; collection, transport and delivery of goods, in particular documents, packages, parcels, letters and pallets; freighting by ship, aeroplane, rail, motor vehicle and lorry; tracking by means of the electronic tracking of goods, in particular documents, packages, parcels, letters and pallets, included in class 39; letter, freight and express delivery services; providing information relating to handling, transport and logistics, in particular the handling of documents, letters, packages, parcels and pallets; providing information in databases in the field of the transport, packaging and storage of goods; consultancy in the fields of transportation and logistics; call centre services, namely the receiving of the telephone orders and complaints, and information services in the field of transport and storage of goods’.
7        The grounds invoked in support of the opposition were based on infringement of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) in relation to the earlier registered trade mark rights and of Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001) in relation to the non-registered marks or signs used in the course of trade. In addition, in respect of the earlier national word mark POST, the opposition was also based on Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
8        On 13 November 2014, the Opposition Division rejected the opposition.
9        On 4 December 2014, 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.
10      By decision of 18 January 2016 (Case R 3107/2014-1) (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it considered that, although the signs at issue shared the word element ‘post’, they showed significant visual, aural and conceptual differences which were sufficient to rule out a likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009 and a likelihood of confusion required by national law as the protection standard for non-registered marks or signs used in the course of trade in Germany within the meaning of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 15(2) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (Law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, ‘MarkenG’). In addition, the Board of Appeal found that, since the German word ‘post’ was a generic term widely used to refer to postal and related services, those visual, aural and conceptual differences were sufficient to rule out the possibility that the relevant public would establish an association or mental link for the purpose of Article 8(5) of Regulation No 207/2009.
II.    Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs;
13      The intervener contends that the Court should:
–        dismiss the application and confirm the contested decision in its entirety;
–        order the applicant to pay the costs.
III. Law
A.      Admissibility of the second part of the intervener’s first head of claim
14      By the second part of the first head of claim, the intervener asks the Court to confirm the contested decision in its entirety.
15      Given that confirming the contested decision amounts to rejecting the action, the intervener’s head of claim must be understood as seeking, in essence, that the action be dismissed (see, to that effect, judgments of 23 February 2010, Özdemir v OHIM — Aktieselskabet af 21. november 2001 (James Jones), T‑11/09, EU:T:2010:47, paragraph 14, and of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 19). The second part of the intervener’s first head of claim is therefore indissociable from the first part of that head of claim, seeking that the action be dismissed.
B.      Document presented for the first time before the Court
16      The applicant presented, for the first time before the Court, a document intended to show the enhanced distinctiveness of the earlier national word mark POST, namely a market survey carried out in October/November 2015 in Annex A.5 to the application.
17      EUIPO and the intervener challenge the admissibility of that document.
18      The survey at issue, produced for the first time before the Court, cannot be taken into account. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, that document must be excluded, without it being necessary to assess its probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
C.      Substance
19      The applicant relies on three pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009, secondly, infringement of Article 8(4) of that regulation and, thirdly, infringement of Article 8(5) thereof.
1.      First plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
20      In support of the present plea in law, the applicant raises two complaints which, in essence, concern the error allegedly made by EUIPO in assessing the likelihood of confusion, on the one hand, between the mark applied for and the earlier national word mark POST and, on the other, between the mark applied for and the earlier EU figurative mark ePOST, with regard to identical services. The applicant states that it has decided not to raise, in the present proceedings, an infringement of Article 8(1)(b) of Regulation No 207/2009 in respect of the earlier EU word mark Deutsche Post or the earlier EU figurative mark registered on 21 January 2010 under No 8408056. Consequently, those latter two marks are no longer at issue in the present proceedings.
21      In essence, the applicant submits that the Board of Appeal disregarded, first, the enhanced distinctiveness of the earlier national work mark POST and of the earlier EU figurative mark ePOST and, secondly, the similarity of the signs at issue due to the dominant character of the element ‘post’ in the mark applied for or, in the alternative, the independent distinctive role of that element in that mark and the weak distinctive character of the element ‘be’ in the mark applied for and of the element ‘e’ in the earlier EU figurative mark ePOST.
22      EUIPO and the intervener dispute the applicant’s arguments.
23      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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
24      According to settled case-law, the risk that the public might 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).
25      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).
26      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
27      The question whether the Board of Appeal was correct to conclude that there was no likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations. Moreover, it is appropriate to begin, as the Board of Appeal did, by assessing the likelihood of confusion as regards the earlier national word mark POST.
(a)    Likelihood of confusion between the mark applied for and the earlier national word mark POST
(1)    The statement of reasons for the contested decision
28      The applicant submits that the Board of Appeal addressed the issue of the distinctiveness of the earlier national word mark POST only in a single paragraph of the contested decision, in which it merely repeated the reasoning in the Opposition Division’s decision.
29      In that respect, despite the brevity of the Board of Appeal’s reasoning in relation to the distinctiveness of the earlier national word mark POST, as set out in paragraph 24 of the contested decision, according to which, ‘in the appeal proceedings, the [applicant] did not submit any new facts or arguments which could raise doubts in respect of [the] findings [that the word “post” had a low degree of distinctiveness, since] the German word “[post]” alludes to postal and related services’ and according to which ‘it is concluded that the earlier [national] mark “POST” possesses a low degree of distinctiveness (judgment of 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279)’, it is necessary to take into account the more detailed reasoning, in that respect, in the Opposition Division’s decision. Given that the Board of Appeal upheld that decision in its entirety and in view of the continuity in terms of functions between the Opposition Divisions and the Boards of Appeal, as demonstrated by Article 64(1) of Regulation No 207/2009 (now Article 71(1) of Regulation 2017/1001) (see, to that effect, judgment of 10 July 2006, La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraphs 57 and 58), the Opposition Division’s decision and its reasoning are part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise fully its judicial review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64).
(2)    The relevant public
30      It follows from the case-law that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
31      In that respect, first, it should be noted that the Board of Appeal rightly considered that the relevant public consisted, as regards the services in Classes 35 and 39, of a professional public and, as regards all of the goods and services in question in Classes 16, 35, 38 and 39, of consumers forming part of the general public. Secondly, the Board of Appeal’s assessment that the relevant public consists of consumers in Germany, since the earlier national word mark POST was registered in that Member State, must be confirmed. Thirdly, it must be noted that the Board of Appeal rightly considered that, for the purpose of the global assessment, the average consumer of the category of goods concerned was deemed to be reasonably well informed and reasonably observant and circumspect. Moreover, it must be pointed out that the Board of Appeal’s definition of the relevant public and the considerations relating to its degree of attention are, in any event, not contested by the parties.
(3)    The comparison of the goods and services
32      According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
33      In the present case, the Board of Appeal considered, like the Opposition Division, that the mark applied for covered, in Classes 35 and 39, services which were identical or similar to the services in Classes 35 and 39 in respect of which the earlier mark was protected. In addition, the mark applied for covered goods in Class 16 and services in Class 38 which were ‘remotely’ similar to services in respect of which the earlier national word mark POST is protected.
34      That conclusion should be confirmed, which, moreover, is not disputed by the applicant.
(4)    The comparison of the signs
35      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global 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).
36      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. 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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 42).
37      It should be added that, according to the case-law, two marks are similar where, 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 (see judgment of 1 October 2014, Lausitzer Früchteverarbeitung v OHIM — Rivella International (holzmichel), T‑263/13, not published, EU:T:2014:845, paragraph 25 and the case-law cited).
38      In the present case, the Board of Appeal held that the signs at issue were visually, aurally and conceptually similar to a certain extent, since they shared the word element ‘post’, but that they differed on account of the additional group of letters ‘be’ at the beginning of the mark applied for.
39      The applicant submits, however, that the earlier national word mark POST and the mark applied for have a high degree of similarity on account of the identical reproduction of the common element ‘post’. By contrast, the fact that the element ‘post’ is prefixed by the additional word element ‘be’ in the mark applied for does not lead to significant differences between the signs at issue. On the contrary, according to settled case-law, the very fact that a later mark consists exclusively of an earlier mark and a further word element is an indication that the two marks are similar.
40      EUIPO and the intervener dispute the applicant’s arguments.
41      It must be noted, as the Board of Appeal pointed out, that the two signs at issue are similar, in so far as they coincide in the group of letters ‘post’, which is the only element in the earlier national word mark, but that they differ in the word element ‘be’ at the beginning of the mark applied for. Thus, as the Board of Appeal noted, the mark applied for differs considerably as regards the length of the earlier national word mark POST and also has a different beginning.
42      Accordingly, the Board of Appeal rightly considered that the signs at issue were similar to a low degree, but had significant visual differences, despite the common element ‘post’.
43      That finding is not called into question by the applicant’s arguments. While it is true that the common element ‘post’, which represents four out of six letters, is the largest part of the word element ‘bepost’, the difference in the length of the word elements as well as their different beginnings lead to the conclusion that the signs are similar in so far as they both have the element ‘post’, but nevertheless have significant visual differences which contradict the applicant’s conclusion that the two signs show a high degree of visual similarity.
44      As regards, next, the aural comparison of the signs at issue, it must be found that the Board of Appeal rightly found that the pronunciation of the marks at issue coincided in the pronunciation of the term ‘post’ and differed in the pronunciation of the additional word element ‘be’ in the mark applied for. Thus, the Board of Appeal rightly considered that the two marks were similar to a low degree.
45      As regards, lastly, the conceptual comparison of the signs at issue, the Court confirms the Board of Appeal’s finding that the signs at issue are similar to a low degree, since they convey the meaning of the word ‘post’, but nevertheless have significant differences, in that the word element ‘be’ at the beginning of the mark applied for is of particular importance in the global assessment since, unlike the term ‘post’, it does not allude to the goods and services in question and, accordingly, helps considerably to distinguish the marks. In that respect, the Board of Appeal noted that the terms ‘be’ and ‘post’ were represented without a separation so as to form the compound word ‘bepost’. According to the Board of Appeal, the word element ‘post’ in the mark applied for, when combined with the element ‘be’, is understood by the relevant public as a reference to ‘postal services’. Unlike the term ‘post’, the word element ‘be’ does not allude to the goods and services in question.
46      The Board of Appeal’s findings in that respect cannot be called into question by the applicant’s arguments that the Board of Appeal made contradictory statements and should have found, in the absence of elements establishing conceptual differences, that there was a high degree of conceptual similarity between the signs at issue.
47      In that respect, in order to reject the argument alleging contradictory reasoning in the contested decision, it suffices to note that the Board of Appeal specified that, unlike the word ‘post’, the word element ‘be’ does not allude to the goods and services in question. In addition, it correctly added that the position of the element ‘be’ at the beginning of the word element ‘bepost’ of the mark applied for was such as to make it slightly dominant, in accordance with the case-law that the relevant public normally attaches more importance to the first part of words (judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 50). Furthermore, it is necessary to confirm the Board of Appeal’s finding that the word element ‘post’ in the mark applied for will not be perceived as a reference to the earlier national word mark POST, but rather, when combined with the word element ‘be’, merely as a reference to postal services (see, to that effect, judgment of 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279, paragraph 69). Although a significant percentage of the relevant public recognises the trade mark significance of the word ‘post’, that does not, by itself, demonstrate that that term can be perceived only as that mark when it is incorporated in marks which differ in overall appearance, pronunciation and concept.
48      In any event, as moreover the applicant itself rightly submits, the combination of the elements ‘be’ and ‘post’ has a rather abstract meaning, since it is grammatically unusual for the German consumer who might not necessarily perceive it as a meaningful expression.
49      In view of the foregoing, it must be concluded that the Board of Appeal rightly considered that the signs at issue had a low degree of similarity, but showed, despite the common element ‘post’, significant visual, aural and conceptual differences.
(5)    The likelihood of confusion
50      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
51      With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (see judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35 and the case-law cited).
52      The Board of Appeal considered that, even with regard to the identical services, there was no likelihood of confusion between the earlier national word mark POST and the mark applied for on the part of the relevant public, since the differences between the signs were sufficient to rule out any likelihood of confusion. According to the Board of Appeal, since the German word ‘post’ alludes to postal services and related services, the Opposition Division rightly concluded that the earlier national word mark POST possesses a low degree of distinctiveness. It maintains that, in the appeal proceedings, the applicant did not submit any new facts or arguments which could raise doubts in respect of those findings. By contrast, since the word element ‘be’ in the mark applied for does not refer to the services in question and is placed at the beginning of the word element of the mark applied for, it will be slightly dominant.
53      The applicant submits that a likelihood of confusion must be found between the marks at issue in view of, first, the identity or close similarity of the services and, secondly, the high degree of similarity between the signs by virtue of the enhanced distinctiveness of the element ‘post’ or, even if it is assumed that the earlier national word mark POST is of weak distinctive character, at least by virtue of the independent distinctive role of the element ‘post’. According to the applicant, that likelihood is all the more manifest given the enhanced or at least average distinctive character of the earlier national word mark POST. The present case differs from the case that gave rise to the judgment of 13 May 2015, TPG POST (T‑102/14, not published, EU:T:2015:279) — on which the Board of Appeal relied in order to justify the finding that the earlier national word mark POST had a low degree of distinctiveness — since the Board of Appeal had more evidence, and more up-to-date evidence, before it when it adopted the contested decision.
54      EUIPO and the intervener dispute the applicant’s arguments.
55      It must be borne in mind, first of all, that aside from the goods and services in Classes 16 and 38, which are covered by the mark applied for and which are similar to the services in respect of which the earlier national word mark POST is protected, a substantial part of the services in Classes 35 and 39 in respect of which the earlier mark is registered and those in the same classes covered by the mark applied for are identical or similar. In addition, the signs at issue are, from the perspective of the relevant public, similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences.
56      It must therefore be found that the Board of Appeal rightly concluded that there was no likelihood of confusion.
57      It must be borne in mind, in that respect, that despite certain resemblances between the signs at issue, the different overall impression produced by the marks at issue as a result of the additional word element in the mark applied for — which has no counterpart in the earlier mark and is more distinctive than the word element ‘post’ which, in the mark applied for, is not likely to bring to mind an association with the applicant — cannot be offset, in the context of the global assessment of the likelihood of confusion, by the fact that the services in question are largely identical or similar, since the identity of the services is not sufficient to support the finding that there is a likelihood of confusion (see, to that effect, judgment of 5 October 2005, Bunker & BKR v OHIM — Marine Stock (B.K.R.), T‑423/04, EU:T:2005:348, paragraph 76).
58      The conclusion that there is no likelihood of confusion cannot be called into question by the series of arguments put forward by the applicant.
59      As regards, in the first place, the argument that it should be found that there is a likelihood of confusion in the present case because of the enhanced distinctiveness of the earlier national word mark POST, the Board of Appeal’s conclusion that that mark has a low degree of distinctiveness, rather than enhanced distinctiveness, must be confirmed.
60      Although it must be acknowledged, in the light of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 47), that the element ‘post’ has some independent distinctive character because of the registration of the sign POST as an earlier national word mark, that does not mean however that that element has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that element (judgment of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 43). The mere fact that the earlier national word mark POST reached the threshold required to be registered as a trade mark at the national level does not mean that the element ‘post’ has acquired enhanced distinctiveness or a reputation in respect of the applicant’s services (see, to that effect, judgment of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 68).
61      As regards paragraph 40 of the judgment of the Bundesgerichtshof (Federal Court of Justice, Germany) of 22 April 2010 (I ZR 17/05, GRUR 2010, 1103, paragraph 40 — Pralinenform II), relied on by the applicant, according to which trade marks which have been registered by virtue of their acceptance by the relevant public are normally deemed to have average distinctiveness, it must be borne in mind that it follows from settled case-law of the General Court that registrations already made in the Member States are a factor which may only be taken into consideration, without being given decisive weight, for the purposes of registering an EU trade mark (judgment of 16 February 2000, Procter & Gamble v OHIM (Soap bar shape), T‑122/99, EU:T:2000:39, paragraph 61). The same considerations apply to cases decided by the courts of the Member States (judgment of 19 September 2001, Henkel v OHIM (Round red and white table), T‑337/99, EU:T:2001:221, paragraph 58).
62      As the Board of Appeal rightly submits, and contrary to the applicant’s assertions, the latter did not put forward, either in the opposition proceedings or in the appeal proceedings, any new facts or arguments capable of raising doubts in respect of the findings mentioned in paragraph 60 above. As regards the consumer surveys, it must be noted that those surveys were carried out in 2002 to 2005. In that context, it cannot be ruled out that a considerable number of consumers no longer associate the word ‘post’, without any additional element, exclusively with the applicant, given the significant liberalisation of the market for postal services in the European Union (see, to that effect, judgment of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 69).
63      However, as the intervener rightly submits, the applicant does not indicate precisely what new material, capable of raising doubts in respect of the findings mentioned in paragraph 60 above, was presented before the Board of Appeal. On the contrary, it bases its line of argument solely on the surveys carried out in 2002 to 2005 and on the market survey carried out in October/November 2015 set out in Annex A.5 to the application, which it submitted for the first time before the General Court and which, for the reasons mentioned in paragraph 18 above, cannot be taken into consideration.
64      As regards the applicant’s argument that the Board of Appeal did not refer to the additional evidence submitted before it as Annexes 13 to 56, it must be noted that the applicant itself does not specify how those annexes, as well as Annex 2 — which was referred to by the Board of Appeal in the contested decision as an extract from the dictionary Duden, even though it is actually a report on the market value of the earlier national word mark POST — could call into question the conclusion reached by the Board of Appeal.
65      In view of the foregoing, the Board of Appeal rightly found that the word element ‘be’ did not allude to the goods and services in question and that it was slightly dominant by virtue of its position at the beginning of the mark applied for. As regards the applicant’s argument that the mark applied for is a short sign, with the result that the final part of the mark, namely the element ‘post’ — which, moreover, represents three quarters of that mark — is just as capable of attracting the consumer’s attention as the beginning, it must be noted that, as EUIPO rightly submits, according to settled case-law, the shorter the signs are, the easier it is for the general public to perceive clearly the differences between them, especially where, as in the present case, the common elements are weak (see, to that effect, judgment of 3 December 2014, Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, not published, EU:T:2014:1020, paragraphs 46 to 50 and the case-law cited).
66      In any event, even if the earlier mark has enhanced distinctiveness, that cannot compensate for the fact that there is no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009, in view of the visual, aural and conceptual differences between the marks at issue (see, to that effect, judgment of 8 October 2014, Laboratoires Polive v OHIM — Arbora & Ausonia (dodie), T‑122/13 and T‑123/13, not published, EU:T:2014:863, paragraph 63 and the case-law cited). Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgments of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70, and of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 70).
67      In the second place, the Court cannot accept the applicant’s argument, based on the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), that even if the element ‘post’ were not dominant within the mark applied for, it nevertheless has an independent distinctive role which gives rise to a similarity between the signs at issue.
68      In that respect, it must be borne in mind that, in the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), the Court of Justice held that, where the goods or services are identical, there may be a likelihood of confusion on the part of the public if the sign at issue is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.
69      The principle thus established by the Court of Justice in the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), cannot be applied in the present case. Since the term ‘post’ is likely to be seen as a mere reference to ‘postal services’ in the mark applied for, it cannot be considered to be distinctive. The common element ‘post’, which is not separated from the word element ‘be’ by a space, does not play the same role in the two marks at issue. Because of the different overall impression given by the marks as a result of the additional word element ‘be’, which has no counterpart in the earlier mark and which is more distinctive that the word element ‘post’, that latter, entirely descriptive, element in the mark applied for is not likely to bring to mind an association with the applicant.
70      The same arguments apply as regards the applicant’s assertion that, even if it were considered that the term ‘post’ has a weak distinctive character, there would still be a likelihood of confusion.
71      Admittedly, a finding that the earlier mark has a weak distinctive character would not preclude a finding that there is a likelihood of confusion in this case.
72      However, in the present case, the Board of Appeal rightly found that the word element ‘post’ in the mark applied for, when combined with the element ‘be’, was understood by the relevant public as a reference to ‘postal services’. Unlike the word ‘post’, the word element ‘be’ does not allude to the goods and services in question. In addition, the position of the element ‘be’ at the beginning of the mark applied for is such as to make it slightly dominant, in accordance with the case-law that the relevant public normally attaches more importance to the first part of words (see, to that effect, judgments of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 10 December 2008, METRONIA, T‑290/07, not published, EU:T:2008:562, paragraph 50).
73      In view of the foregoing, it must be concluded that, as the Board of Appeal found, no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 may be established in the present case between the mark applied for and the earlier national word mark POST.
(b)    Likelihood of confusion between the mark applied for and the earlier EU figurative mark ePOST
(1)    The relevant public
74      The Board of Appeal’s assessment that the relevant public is composed of consumers in the European Union, since the earlier EU figurative mark ePOST is an EU trade mark, must be confirmed.
(2)    The comparison of the goods and services
75      In that respect, it should be noted that the Board of Appeal rightly considered that some goods covered by the mark applied for in Class 16, namely ‘printed matter, including commercial printed matter, writing paper, envelopes; postage stamps, leaflets and magazines; pamphlets, catalogues, user manuals, forms; printed advertising material; books, periodicals and magazines’ were different from the goods and services covered by the earlier EU figurative mark ePOST; the other goods and services covered by the mark applied for in Classes 16, 35, 38 and 39 being identical or at least somewhat similar to the goods and services covered by the earlier mark ePOST.
(3)    The comparison of the signs
76      The Board of Appeal considered, in paragraphs 35 to 46 of the contested decision, that the mark applied for and the earlier EU figurative mark ePOST were similar to a certain extent but that they showed significant visual, aural and conceptual differences, despite the fact that they both contained the element ‘post’, and that the aural similarity was not of overriding importance in this case. According to the Board of Appeal, those differences are even greater than those between the earlier national word mark POST and the mark applied for, since the word element ‘e’ at the beginning of the earlier EU figurative mark ePOST will be understood by the relevant public as meaning ‘electronic, indicating the involvement of the internet’, which thus creates a conceptual difference between it and the mark applied for.
77      The applicant argues, however, that the mark applied for and the earlier EU figurative mark ePOST are highly similar visually and aurally and are of at least average conceptual similarity.
78      EUIPO and the intervener dispute the applicant’s arguments.
79      In that respect, it is necessary to confirm the Board of Appeal’s conclusion that the mark applied for and the earlier EU figurative mark ePOST are similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences.
80      In the first place, with regard to the visual comparison, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since those two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
81      In the present case, although the marks at issue share the element ‘post’ and the letter ‘e’, the overall visual impression is different. The signs differ in that the first word element of the earlier EU figurative mark is ‘e’, whereas the first word element of the mark applied for is ‘be’. Furthermore, there are visual differences resulting from the different colours and typefaces used and the way in which those different elements are arranged. Contrary to the applicant’s assertions, the distinctive character of those elements is no weaker than that of the word element ‘post’.
82      As regards, in the second place, the aural comparison, it must be noted that the signs coincide in the pronunciation of the word elements ‘e’ and ‘post’ while differing in the pronunciation of the first letter ‘b’ of the mark applied for.
83      In the third place, it must be noted that, conceptually, the word element ‘e’ in the earlier EU figurative mark ePOST will be understood by the relevant public as meaning ‘electronic, indicating the involvement of the internet’, which represents a conceptual difference between it and the mark applied for. The word element ‘be’, placed before the element ‘post’ in the mark applied for, does not refer to a concept which could be associated with the expression ‘electronic, indicating the involvement of the internet’.
84      In the light of the foregoing, it must be concluded that the Board of Appeal rightly considered that the signs at issue were similar to a low degree, since, despite their common element ‘post’, they showed significant visual, aural and conceptual differences.
(4)    The likelihood of confusion
85      The Board of Appeal considered that, although the distinctive character of the two word elements ‘e’ and ‘post’ in the earlier mark was weak, since those elements alluded to the relevant goods and services in Classes 9, 35, 38 and 39, the earlier EU figurative mark ePOST nevertheless possessed a certain degree of distinctiveness in relation to the relevant goods and services, as a result of the way those elements were arranged. It nevertheless concluded that, even for identical services, the differences between the signs were enough to rule out any likelihood of confusion as regards the goods and services concerned.
86      The applicant submits however that, in view of the high degree of visual and aural similarity of the signs at issue, and their at least average conceptual similarity, the Board of Appeal should have found, with regard to identical services, a likelihood of confusion between the mark applied for and the earlier EU figurative mark ePOST. Both marks are dominated by the element ‘post’, which refers to the applicant’s trade marks of the same name that, for the relevant public, are associated exclusively with the applicant and enjoy a very high degree of recognition. By contrast, the distinctive character of the elements ‘be’ and ‘e’ is weak. Even if it were assumed that the common element ‘post’ has a low degree of distinctive character, that element would still have an independent distinctive role.
87      EUIPO and the intervener dispute the applicant’s arguments.
88      It is necessary, in the first place, to confirm the Board of Appeal’s assessment that the distinctive character of the two word elements ‘e’ and ‘post’ of the earlier EU figurative mark ePOST is weak, since they allude to the relevant goods and services in Classes 9, 35, 38 and 39 in respect of which the earlier EU figurative mark is registered. The distinctive character of the earlier EU figurative mark ePOST lies in the specific combination of individually non-distinctive elements. Consequently, and contrary to the applicant’s assertion, the element ‘post’ is not the foremost element which the German public, or the EU public, will retain conceptually in their memory. On the contrary, the word elements ‘e’ and ‘be’ at the beginning of the signs at issue particularly need to be taken into account, since the relevant public normally attaches more importance to the first part of words (judgments of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 10 December 2008, METRONIA, T‑290/07, not published, EU:T:2008:562, paragraph 50).
89      As regards, in the second place, the likelihood of confusion with the earlier EU figurative mark ePOST, it must first of all be pointed out that a substantial part of the relevant goods and services in Classes 9, 35, 38 and 39 in respect of which the earlier EU figurative mark ePOST is registered and those in Classes 16, 35, 38 and 39 covered by the mark applied for are identical or highly similar. Moreover, the signs at issue are similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences and the Board of Appeal’s finding that the aural similarity is not of overriding importance in the present case by comparison with the visual and conceptual similarities has not been disputed.
90      The Board of Appeal correctly concluded that there was no likelihood of confusion. In view of the different overall impression given by the marks at issue because of the differences between the word elements at the beginning of the signs in different graphic styles, the common element ‘post’, which has a weak distinctive character, is not enough to support the conclusion that there is a likelihood of confusion.
91      In that respect, the conclusion that there is no likelihood of confusion cannot be called into question by the applicant’s argument that the mark applied for as well as the earlier EU figurative mark ePOST are dominated by the element ‘post’, since it refers to the applicant’s marks of the same name which, for the German public, are exclusively associated with the applicant’s company and have a high degree of recognition. As already demonstrated in paragraph 69 above, the common element ‘post’ in the two marks does not play the same role in the marks at issue. Because of the different overall impression given by those marks, that entirely descriptive element in the mark applied for is not likely to bring to mind an association with the applicant. Although it must be acknowledged, in the light of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 47), that the element ‘post’ has some independent distinctive character because of the registration of the sign POST as an earlier national word mark, that does not mean, however, that that element has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that element (judgments of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 43, and of 27 June 2017, Deutsche Post v EUIPO — Media Logistik (PostModern), T‑13/15, not published, EU:T:2017:434, paragraph 45).
92      For the same reasons, since the term ‘post’ is likely to be seen as a mere reference to postal services in the mark applied for, that entirely descriptive element does not have an independent distinctive role within the meaning of the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594).
93      It follows from all of the foregoing that the first plea in law must be rejected.
2.      The second plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009
94      The Board of Appeal considered, in paragraphs 53 to 58 of the contested decision, that the non-registered marks or signs used in the course of trade POST and Deutsche Post AG did not confer on the applicant the right to prohibit the use of the mark applied for within the meaning of Article 8(4) of Regulation No 207/2009, read in conjunction with the national law applicable to that sign, since the differences between the signs at issue were sufficient to rule out the likelihood of confusion required by national law, even if the services in question were identical.
95      The applicant asserts that the contested decision infringes Article 8(4) of Regulation No 207/2009, since it states that there is no likelihood of confusion between the mark applied for and the non-registered mark or sign used in the course of trade POST. In that respect, it refers to its arguments relating to Article 8(1)(b) of Regulation No 207/2009. The applicant states that it has decided not to raise an infringement of Article 8(4) of Regulation No 207/2009 in respect of the non-registered mark or sign used in the course of trade Deutsche Post AG in the present proceedings. Consequently, the non-registered mark or sign used in the course of trade Deutsche Post AG is no longer at issue in the present proceedings.
96      EUIPO and the intervener dispute the applicant’s arguments.
97      Under Article 8(4) of Regulation No 207/2009, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign, rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark, and that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
98      In that respect, it must be borne in mind that the question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law (see judgment of 10 July 2014, Peek & Cloppenburg v OHIM, C‑325/13 P and C‑326/13 P, not published, EU:C:2014:2059, paragraph 47 and the case-law cited). To that end, regard must be had, in particular, to the national rules invoked and to the judicial decisions delivered in the Member State concerned (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 190) as well as to academic writings (see, by analogy, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 53).
99      Paragraph 5 of the MarkenG provides:
‘1.      Company identifiers and titles of works shall be protected as commercial designations.
2. Business signs are signs used in the course of trade as a name, company name or special designation of a business operation or an enterprise. Business signs and other signs intended to distinguish the business operation from other business operations which are regarded as symbols of the business operation within involved trade circles shall be deemed equivalent to the special designation of a business operation.
…’
100    Under Paragraph 15 of the MarkenG:
‘1.      Acquisition of protection of a commercial designation shall grant its proprietor an exclusive right.
2. Third parties shall be prohibited from using the commercial designation or a similar sign in the course of trade without authorisation in a manner liable to cause confusion with the protected designation.
…
4. Anyone who uses a commercial designation or a similar sign in contravention of subparagraphs 2 or 3 may be required to refrain therefrom by the proprietor of the commercial designation ...
…’
101    Paragraph 15(2) of the MarkenG establishes the likelihood of confusion as an essential criterion for evaluating the extent of the protection of ‘commercial designations’. The concept of a ‘likelihood of confusion’ within the meaning of Paragraph 15(2) of the MarkenG is structured in a manner similar to that of the harmonised trade mark law of Paragraph 14(2)(2) of the MarkenG and, consequently, the concept of ‘likelihood of confusion’ within the meaning of Article 8(1) of Regulation No 207/2009. It must be noted that the applicant does not submit to what extent the concept of a ‘likelihood of confusion’ under Paragraph 15(2) of the MarkenG must be interpreted differently from the concept of a ‘likelihood of confusion’ within the meaning of Paragraph 8(1) of Regulation No 207/2009, but merely asserts that, because of the arguments already developed concerning Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal wrongly rejected the existence of a likelihood of confusion between the mark applied for and the non-registered mark or sign used in the course of trade POST.
102    In that respect, it must be found that the Board of Appeal rightly considered that, in view of the fact that the earlier national word mark POST alluded to postal and related services, the non-registered mark or sign used in the course of trade POST, as well as the earlier national word mark POST, had a weak distinctive character and that, consequently, the differences between the signs at issue were enough to rule out a likelihood of confusion, even if the services in question were identical. In that respect, reference is made to paragraphs 35 to 72 above, concerning the opposition based on Article 8(1)(b) of Regulation No 207/2009 in relation to the earlier national word mark POST.
103    It follows from all of the foregoing that the second plea in law must be rejected.
3.      The third plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
104    The applicant submits that the Board of Appeal wrongly concluded that the relevant public would not establish any link between the mark applied for and the earlier national word mark POST.
105    EUIPO and the intervener dispute the applicant’s arguments.
106    Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2 of that article, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are 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 European Union and, 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.
107    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, it 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 (judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).
108    More specifically, the fourth of the conditions for the application of Article 8(5) of Regulation No 207/2009 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
109    The existence of a link between the mark applied for and the earlier mark is an essential condition for the application of Article 8(5) of Regulation No 207/2009. The harm referred to in that provision, where it occurs, is the consequence of a certain degree of similarity between the mark applied for and the earlier mark, by virtue of which the public concerned makes a connection between them, that is, establishes a link between them. The existence of that link must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 47 and the case-law cited).
110    In that respect, in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655, paragraph 42), the Court of Justice stated, as regards Article 4(4)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which is essentially identical to Article 8(5) of Regulation No 207/2009, that the factors mentioned in paragraph 109 above included:
–        the degree of similarity between the marks at issue;
–        the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
–        the strength of the earlier mark’s reputation;
–        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
–        the existence of a likelihood of confusion on the part of the public.
111    In the judgment of 10 December 2015, El Corte Inglés v OHIM (C‑603/14 P, EU:C:2015:807, paragraph 43), the Court of Justice stated that, if the examination of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 shows that there is some similarity between the signs at issue, the General Court must, in order to ascertain whether the conditions for the application of paragraph 5 of that article are satisfied, examine whether, on account of the presence of other relevant factors such as the renown or reputation of the earlier mark, the relevant public is capable of establishing a link between those signs.
112    The Board of Appeal considered that the relevant public would not establish any link between the mark applied for and the earlier national word mark POST, given that the German word ‘post’ was a generic term widely used to denote postal services and related services. It then referred, in that respect, to the finding that there was no likelihood of confusion between the mark applied for and the earlier national word mark POST.
113    The applicant argues that the Board of Appeal did not assess globally, in the sense indicated in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), the issue of the link between the earlier national word mark POST and the mark applied for. Repeating, in that respect, its line of argument concerning the likelihood of confusion between the mark applied for and the earlier national word mark POST, the applicant submits that it is hardly conceivable that the relevant public will not make any link between those marks. The finding that the term ‘post’ is a generic term overlooks the fact that the earlier national word mark POST is a mark which was registered by virtue of the distinctive character that it acquired through use, the long duration of which also gave that mark at least average or even enhanced distinctive character.
114    EUIPO and the intervener dispute the applicant’s arguments.
115    In the present case, it must first of all be noted that the comparison of the signs at issue shows that there is some similarity between them. As stated in paragraph 49 above, the mark applied for and the earlier national word mark POST are similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences. In view of those significant differences and in view of the weak distinctive character of the common element ‘post’, it is necessary to confirm the Board of Appeal’s conclusion that the relevant public will not make any link between the mark applied for and the earlier national word mark POST, since the term ‘post’, in the context of the mark applied for, is likely to be perceived merely as a reference to postal services.
116    The applicant’s complaint, according to which the Board of Appeal, by describing the term ‘post’ as a generic term, did not take account of the trade mark value of the applicant’s earlier national word mark POST, overlooks the fact that the Board of Appeal rightly made a distinction between the German term ‘post’ and the earlier national word mark POST. It has already been pointed out that the registration of that mark at the national level does not mean that that term, which, moreover, is also used as a prefix meaning ‘after’, has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that term (see paragraph 60 above). The applicant’s argument is intended, wrongly, to limit the use of the term ‘post’ to only those postal services covered by the earlier national word mark POST. Furthermore, EUIPO submits, without being contradicted by the other parties, that that intention is incompatible with the aims of national or EU legislation in the field of trade marks.
117    Since the applicant criticises the Board of Appeal for not carrying out the global assessment required by the case-law, it should be pointed out that all of the other factors which had to be evaluated as regards the link between the mark applied for and the earlier national word mark POST were examined in the context of the examination of the likelihood of confusion between those marks, namely the degree of similarity between the marks and the goods and services as well as the degree of distinctive character of the earlier mark, which was considered to be weak. In addition, the question of an encroachment upon the reputation of the earlier national word mark POST was assessed by the Opposition Division, which found that it had not been established that that mark had a reputation, and that reasoning was affirmed by the Board of Appeal and included in the contested decision, in particular in paragraph 24.
118    It follows from all of the foregoing that the third plea in law must be rejected.
119    Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.
IV.    Costs
120    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.
121    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Deutsche Post AG to pay the costs.
Kanninen
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 20 February 2018.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.