ORDER OF THE GENERAL COURT (Eighth Chamber)
9 September 2019 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark The Inner Circle — Earlier EU word mark InnerCircle — Relative ground for refusal — No similarity between the services — Article 8(1)(b) of Regulation (EU) 2017/1001 — Action manifestly lacking any foundation in law)
In Case T‑575/18,
Shore Capital International Ltd, established in Berlin (Germany), represented by O. Spieker, A. Schönfleisch and N. Willich, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Circle Imperium BV, established in Amsterdam (Netherlands),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 7 June 2018 (Case R 1402/2017‑1), relating to opposition proceedings between Shore Capital International and Circle Imperium,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva (Rapporteur) and G. De Baere, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 September 2018,
having regard to the response lodged at the Court Registry on 28 January 2019,
makes the following
Order
Background to the dispute
1        On 3 April 2015, Circle Imperium BV obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration designating the European Union under number 1266666 of the following figurative mark:
2        On 1 October 2015, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of the mark at issue, 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)).
3        The services in respect of which protection of the mark was sought in the European Union are in, inter alia, Class 41 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, following the restriction made in the course of the proceedings before EUIPO, correspond to the following description: ‘Arranging and organisation of leisure events and meetups at high-end venues, in order to bring people together for the sole purpose of matchmaking and dating’.
4        On 1 July 2016, the applicant, Shore Capital International Ltd, 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, inter alia, the services referred to in paragraph 3 above.
5        The opposition was based on the earlier European Union word mark InnerCircle, filed on 25 April 2014 and registered on 11 November 2014 under number 12829073 in respect of services in Classes 35 to 38 and 42, and comprising, inter alia, in relation to Class 35, the following services:
–        ‘Professional business analysis, research and information, in particular compilation and systemisation of business data, compilation of statistics (for business or commercial use), providing of statistical economic information, professional business evaluations and analyses, professional business assessment of business opportunities, sales analysis, economic forecasting and analysis for business purposes, business efficiency expert services; publicity, marketing and sales promotion, in particular distribution of advertising, marketing and promotional materials, providing of advertising space, time and media, consultancy and support in the field of advertising, marketing and sales promotion, conducting of marketing campaigns, direct marketing, online marketing, online advertising on computer networks, telephone advertising; television advertising, development of marketing strategies and concepts, creation of advertising material, publicity texts and adverts for others, computer-based advertising, press advertising, placement of advertisements, advertising of real estate, financial products and investment funds; business management and company structure, in particular business management and organisation consultancy, business management consultancy, personnel management consultancy, professional business consultancy, commercial or industrial management assistance, business management assistance, arranging of contracts, for others, in relation to the buying and selling of goods and services, presentation of companies on the internet and via other media, arranging commercial transactions for others (including within the framework of e-commerce), procurement services for others (purchasing goods and services for other businesses).’
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
7        By decision of 26 April 2017, the EUIPO Opposition Division partially rejected the opposition in relation to the services referred to in paragraph 3 above on the ground that the services at issue were dissimilar.
8        On 26 June 2017, 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.
9        By decision of 7 June 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the services at issue were dissimilar as they had a different purpose and intended use, used different distribution channels and could not be considered as complementary or in competition with each other. It therefore concluded that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and Circle Imperium to pay the costs, including those incurred in the proceedings before the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
13      In the present case, the Court, considering that it has sufficient information from the documents before it, has decided to give a decision without taking further steps in the proceedings, even though one of the parties, in this case the applicant, has requested a hearing (see, to that effect, orders of 24 May 2016, Actega Terra v EUIPO, C‑63/16 P, not published, EU:C:2016:348, paragraph 5, and of 3 December 2018, Classic Media v EUIPO — Pirelli Tyre (CLASSIC DRIVER), T‑811/17, not published, EU:T:2018:894, paragraph 15 and the case-law cited).
14      In support of the action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it claims that, since the services at issue are very similar and the marks at issue ‘almost identical’, there is a likelihood of confusion.
15      EUIPO disputes those arguments and claims that, since the services at issue are dissimilar, there is no likelihood of confusion, notwithstanding that the signs are almost identical.
16      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17      According to settled case-law, the risk that the public may believe that the goods or services at issue come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that 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 at issue 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 (judgments 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 of 25 September 2018, Grendene v EUIPO — Hipanema (HIPANEMA), T‑435/17, not published, EU:T:2018:596, paragraph 27).
18      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (judgments of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42, and of 25 September 2018, HIPANEMA, T‑435/17, not published, EU:T:2018:596, paragraph 85).
19      In the present case, it should be noted at the outset that the services covered by the mark applied for were restricted in the proceedings before EUIPO (see paragraph 3 above), so that the present dispute concerns only services relating to ‘arranging and organisation of leisure events and meetups at high-end venues, in order to bring people together for the sole purpose of matchmaking and dating’ covered by that mark and falling within Class 41. In that regard, it should be made clear that other services also covered by the mark applied for, in Class 38 or Class 45, such as ‘provision of internet forums’ or ‘dating agencies’ and ‘matchmaking (“dating”) over the internet’, are not the subject of the present action. Further, the applicant’s arguments regarding the similarity of the services are based solely on the services covered by the earlier mark in Class 35, in particular ‘publicity, marketing and sales promotion’ as well as consultancy and support in that field, and not on services covered by that mark in Classes 36 to 38 and 42. Those are therefore the ‘services at issue’ relevant for the purposes of comparison.
The relevant public
20      The applicant challenges the finding of the Board of Appeal in paragraph 21 et seq. of the contested decision that the services covered by the mark applied for were aimed at the general public in the European Union with a level of attention that is higher than average, whereas those covered by the earlier mark were aimed at a professional business public with a high level of attention. First, it claims that the services covered by the mark applied for relating to the organisation of ‘leisure events and meetups at high-end venues’ are aimed at people with substantial resources who enjoy a special status within society, possess certain knowledge of business and professional affairs, and therefore have a high level of attention. Second, it claims that, since the degree of attention is high both for the services covered by the mark applied for and for those covered by the earlier mark, the two marks target the same relevant public, who will be inclined to assume that they are owned by the same entity or connected entities.
21      According to settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the point of view of the average consumer of the category of goods or services 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).
22      In the present case, as regards the definition of the relevant public, the Board of Appeal was correct to find that the services covered by the mark applied for in Class 41 are aimed at the general public in the European Union. As EUIPO has pointed out, since those services are available on an internet site accessible to the general public and are aimed at all consumers wishing to meet people, they are not reserved to a restricted group of people ‘enjoying a special status within society’ or having certain resources or knowledge, even though events may be organised at ‘high-end venues’.
23      Regarding the relevant public’s level of attention, it should be borne in mind that it is not sufficient for an applicant to state that, in a given sector, consumers are particularly attentive to marks, and that it must substantiate that claim with facts or evidence (judgments of 13 April 2005, Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport), T‑286/03, not published, EU:T:2005:126, paragraph 21, and of 16 October 2013, Zoo Sport v OHIM — K-2 (zoo sport), T‑455/12, not published, EU:T:2013:531, paragraph 35). In the present case, the claim that the relevant public has an especially high level of attention, greater even than ‘higher than average’ as the Board of Appeal had determined, was not substantiated by facts or evidence.
24      In any event, it should be found, as EUIPO did, that the issue of whether the public’s level of attention is higher or lower has no effect on the outcome of the contested decision, for three independent reasons.
25      First, there is no significant difference between the Board of Appeal’s finding that the contested services are aimed at people whose attention is ‘higher than average’, and the applicant’s claim that the contested services are aimed at people possessing a ‘high’ level of attention.
26      Second, according to the case-law, the existence of a high level of attention can lead to the conclusion that the relevant public will not confuse the marks at issue despite the lack of direct comparison between the different marks (see judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO — Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 86 and the case-law cited), and not the reverse. The applicant is therefore wrong to assume that a high level of attention on the part of the relevant public increases the likelihood of confusion.
27      Third, the fact that consumers of dissimilar services possess a level of attention that is just as high in relation to the services covered by the mark applied for as in relation to those covered by the earlier mark would not lead to a likelihood of confusion between the two marks where the services in question remain dissimilar. As found in paragraph 45 below, that is the case here.
28      It follows that the Board of Appeal did not commit an error in finding in paragraph 23 of the contested decision that the services covered by the mark applied for were aimed at the general public in the European Union with a higher than average level of attention.
The comparison of the services
29      The applicant contests the Board of Appeal’s finding that there is no similarity between the services covered by the mark applied for in Class 41 and those covered by the earlier mark in Class 35. Instead, it claims that there is a high degree of similarity between those services and submits three arguments in that regard.
30      First, the applicant claims that the services at issue have the same purpose, namely to promote to the target public the services offered by the marks. The services covered by the earlier mark in Class 35 offer, inter alia, marketing activities, which would be perceived by the relevant public as promotional events and not as educational activities. The services covered by the mark applied for in Class 41 relate to the organisation of events. According to the applicant, it must be the case that Circle Imperium also provides marketing services for those events as well as for other services it offers such as ‘online dating’ and ‘matchmaking’. The applicant adds that the Board of Appeal was wrong to find that the services under comparison had different purposes by reference to the explanatory notes for the different classes in the Nice Classification, because it is the services actually protected in each class, and not the explanatory notes, which are essential in determining whether there is a similarity between the services under comparison.
31      Second, the applicant asserts that the services at issue are complementary. It submits that, without marketing, advertising and sales promotion services, the services offered by Circle Imperium would not be known by the relevant public, which, in the applicant’s view, is sufficient to establish at least a functional complementarity between the services at issue. That functional complementarity is all the more marked because the services at issue target the same type of consumer, namely the professional business public.
32      Third, the applicant claims that the services at issue use the same distribution channels since they are all online services offered on the internet or via online databases, and are therefore accessible by all internet users.
33      According to settled case-law, in assessing the similarity between 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 or services concerned (judgments 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 of 25 September 2018, HIPANEMA, T‑435/17, not published, EU:T:2018:596, paragraph 43).
34      As regards the complementary nature of the goods and services at issue, goods or services are complementary where there is a close connection between them, in the sense that one is indispensable to, or important for, the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. It follows that it must be possible for complementary goods or services to be used together, which presupposes that they are intended for the same public (judgments of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58; of 18 February 2011, PPTV v OHIM — Rentrak (PPT), T‑118/07, not published, EU:T:2011:58, paragraphs 29 and 30; and of 25 September 2018, HIPANEMA, T‑435/17, not published, EU:T:2018:596, paragraph 52).
35      In the present case, the Board of Appeal found that the services covered by the mark applied for were dissimilar to the services covered by the earlier mark, especially those in Class 35. In particular, it found that, having regard to the explanatory notes on Classes 35 and 41, the services under comparison were of a different nature and purpose as the services covered by the earlier mark were principally consultancy services in the field of advertising or commercial strategies aimed at other business entities, whereas the services covered by the mark applied for had the sole purpose of ‘dating and matchmaking’ and the very concrete aim of bringing people together. It added that the services at issue could not be considered complementary or in competition with each other, since they involved different market segments, were provided by different undertakings and used different distribution channels.
36      It must be held that the applicant’s arguments are not capable of calling into question the Board of Appeal’s assessment that the services at issue are dissimilar.
37      In the first instance, as EUIPO correctly submitted, the services covered by the mark applied for clearly differ in their nature and purpose from the services covered by the earlier mark.
38      First, it is clear from the case-law that, contrary to what the applicant submits, notwithstanding the fact that the Nice Classification was adopted for exclusively administrative purposes, the explanatory notes on the different classes of that classification are relevant in determining the nature and purpose of the goods and services under comparison (see, to that effect, judgments of 23 January 2014, Sunrider v OHIM — Nannerl (SUN FRESH), T‑221/12, not published, EU:T:2014:25, paragraph 31; of 10 September 2014, DTM Ricambi v OHIM — STAR (STAR), T‑199/13, not published, EU:T:2014:761, paragraph 36; and of 8 June 2017, Bundesverband Deutsche Tafel v EUIPO — Tiertafel Deutschland (Tafel), T‑326/16, not published, EU:T:2017:380, paragraph 45). In particular, where the description of goods or services for which a mark is registered is so general that it may cover very different goods or services, it is possible to take into account, for the purposes of interpretation or as a precise indication of the designation of the goods or services, the classes in the classification that the applicant has chosen (judgment of 19 June 2018, Erwin Müller v EUIPO — Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 33; see also, to that effect, judgment of 25 January 2018, Brunner v EUIPO — CBM (H HOLY HAFERL HAFERL SHOE COUTURE), T‑367/16, not published, EU:T:2018:28, paragraph 50). As the Board of Appeal was correct to find, it is clear from the explanatory notes referred to above that the main purpose of the services in Class 41 is to entertain people or engage their attention, while the main aim of the services in Class 35 is to help in the operation or management of businesses or the commercial functions of an undertaking.
39      Further, it is clear from the description of the services at issue that they have a different nature and purpose. The services covered by the earlier mark in Class 35 are principally consultancy services in the field of advertising and are aimed, therefore, at other undertakings. As for the services covered by the mark applied for, their specific aim is to bring people together ‘for the sole purpose of matchmaking and dating’, and not, as the applicant submits, to promote underlying goods or services. Moreover, contrary to what the applicant claims, there is nothing to indicate that an undertaking which offers services relating to the organisation of events for the purposes of matchmaking and dating also provides marketing services in its own name.
40      Second, as regards the alleged complementarity between the services at issue, it should be pointed out that, as stated in paragraph 34 above, complementarity implies that it is possible for the services in question to be used together, which presupposes that they are intended for the same public. However, in the present case, as already pointed out in paragraph 22 above, consultancy services in the field of advertising covered by the earlier mark are aimed at business entities, and therefore at the professional public, whereas services relating to the organisation of leisure events and meetups are aimed at the general public. Accordingly, there can be no link of complementarity between the services at issue. Moreover, since such services are intended for different publics, they cannot be regarded as substitutable the one for the other; nor, therefore, can they be regarded as being in competition with each other (see, to that effect, judgment of 18 February 2011, PPT, T‑118/07, not published, EU:T:2011:58, paragraphs 39 and 40 and the case-law cited).
41      Furthermore, the applicant cannot claim that there is a link of functional complementarity between the services under comparison since it is entirely possible for services relating to the organisation of leisure events and meetups to exist without specific consultancy services in the field of advertising.
42      Third, in relation to the argument that the services under comparison use the same distribution channels since they are offered on the internet or via online databases, as stated, inter alia, in Class 45 covered by the mark applied for, it should be borne in mind that the services covered in Class 45, such as ‘dating agencies and matchmaking (“dating”) over the internet’, are not the subject of the present action (see paragraph 19 above) and that, as the Board of Appeal noted in paragraphs 6, 16 and 17 of the contested decision, the Opposition Division’s decision dismissing the appeal has become final so far as those services are concerned.
43      Furthermore, it should be pointed out again that the services covered by the mark applied for were restricted in the course of the proceedings before EUIPO, so that the present dispute concerns only services relating to ‘arranging and organisation of leisure events and meetups at high-end venues, in order to bring people together for the sole purpose of matchmaking and dating’, which fall within Class 41. However, no part of the case file makes it possible to reach a finding that those services are provided exclusively on the internet.
44      In any event, while the fact that services are offered on the internet is capable of strengthening the similarity between them (judgments of 29 September 2011, Telefónica O2 Germany v OHIM — Loopia (LOOPIA),
T‑150/10, not published, EU:T:2011:552, paragraph 38, and of 4 June 2014, Free v OHIM — Conradi + Kaiser (FreeLounge), T‑161/12, not published, EU:T:2014:350, paragraph 29), that fact is not sufficient of itself to lead to a finding of similarity between the services at issue where, as in the present case, those services are not aimed at the same public, are offered by different undertakings and do not fall within the same field (see, to that effect, judgment of 27 September 2016, Satkirit Holdings v EUIPO — Advanced Mailing Solutions (luvoworld), T‑450/15, not published, EU:T:2016:543, paragraph 46).
45      Consequently, it must be concluded that the Board of Appeal did not commit an error in finding that the services covered by the mark applied for in Class 41 and the services covered by the earlier mark in Class 35 are dissimilar as they have a different purpose and intended use, cannot be considered as complementary or in competition with each other, and use different distribution channels.
The likelihood of confusion
46      The applicant claims that, having regard to the high degree of similarity between the services at issue and the fact that the signs at issue are almost identical, there is undeniably a high likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
47      In that regard, it is sufficient to point out that, as noted in paragraph 45 above, the services at issue are dissimilar. In the absence of similarity between those services, one of the cumulative conditions (see paragraph 18 above) required by Article 8(1)(b) of Regulation 2017/1001 in order to refuse registration of the mark applied for in respect of the services covered is therefore lacking. Accordingly, the Board of Appeal was correct to find that there was no likelihood of confusion within the meaning of that article.
48      It results from all of the foregoing that the arguments in support of the applicant’s single plea in law are manifestly unfounded. It follows that the single plea in law must be rejected and the action must therefore be dismissed as manifestly lacking any foundation in law.
Costs
49      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
Hereby orders:
1.      The action is dismissed.
2.      Shore Capital International Ltd shall pay the costs.
Luxembourg, 9 September 2019.
E. Coulon
A.M. Collins
Registrar
President
*      Language of the case: English.