JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
29 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU figurative mark SYC – International registration of the earlier word mark SYR – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑21/24,
Atusa Grupo Empresarial, SA, established in Salvatierra (Spain), represented by J. L. Rivas Zurdo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Hans Sasserath GmbH & Co. KG, established in Korschenbroich (Germany), represented by C. Onken and L. Bieber, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and I. Dimitrakopoulos (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Atusa Grupo Empresarial, SA, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 November 2023 (Case R 452/2023-4) (‘the contested decision’).
Background to the dispute
2        On 17 February 2021, the applicant filed with EUIPO an application for registration of an EU trade mark, published on 22 February 2021, in respect of the following figurative sign:
3        The mark applied for covered goods in Class 11 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, corresponding to the following description: ‘Heating apparatus; Refrigerating apparatus; Water supply installations; Sanitary installations’.
4        On 30 April 2021, the intervener, Hans Sasserath GmbH & Co. KG, filed a notice of opposition to registration of the trade mark applied for in respect of all the goods referred to in paragraph 3 above.
5        The opposition was based, in particular, on the international registration designating the European Union of the word mark SYR, filed and registered on 11 February 2015, covering, in particular, goods in Class 11 corresponding to the following description: ‘Backwashing systems for filters; connection flanges for fittings, pressure reducers, filters and water treatment devices; filters for drinking water, heating devices, drinking water distribution apparatus, water pipes and heating installations; devices for water treatment against limestone and for the control of water losses in domestic installations; ion exchange installations; thermostatic mixing valves for the control of the warm water temperature; safety valves for liquid systems, solar thermal collectors, drinking water heaters and heating installations comprised in this class; pressure relief and safety valves for liquid systems, solar thermal collectors, drinking water heaters and heating installations; boiler combination valve for removal of entrained air; water level cut-off switches; automatic air-vent systems; thermal safety valves; draft regulators for heating systems with solid fuel; filling assemblies for filling and re-filling hot water heating installations; system disconnectors; stop cocks for regulating water; stop cocks being safety apparatus for water apparatus; all aforementioned goods not for use in irrigation systems for horticulture and agriculture’.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).
7        On 21 February 2023, the Opposition Division upheld the opposition on the grounds that there was a likelihood of confusion for the Spanish-speaking part of the relevant public.
8        On 27 January 2023, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
9        By the contested decision, the Board of Appeal dismissed the appeal on the grounds that there was a likelihood of confusion for the Spanish-speaking part of the relevant public, finding that the goods covered by the mark applied for were identical or, at least, similar to an average degree to the goods covered by the earlier mark and that the marks at issue were visually and phonetically similar to an average degree.
Forms of order sought
10      The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 in so far as the Board of Appeal incorrectly found that there was a likelihood of confusion between the marks at issue.
14      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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. Furthermore, under Article 8(2)(a)(iv) of Regulation 2017/1001, ‘earlier trade marks’ means, inter alia, trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
15      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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).
16      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
17      As a preliminary point, it should be noted that the applicant does not dispute that the relevant public is the Spanish-speaking public of the European Union, which is made up of both the general public and professionals, whose level of attention varies from average to high. Nor does it dispute the comparison of the goods in question made by the Board of Appeal or its assessment of the distinctive character of the elements of the marks at issue. In that regard, first, the Board of Appeal found that the goods in question, included in Class 11, were identical, as regards the heating apparatus covered by the mark applied for, the heating installations and all the goods covered by the earlier mark not for use in irrigation systems for horticulture and agriculture, or that they were at least similar to an average degree, as regards the other goods in question. Secondly, the Board of Appeal found that the terms ‘syr’ and ‘syc’ were distinctive and were meaningless for the relevant public.
18      As regards the comparison of the marks at issue, it should be borne in mind that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of those marks, be based on the overall impression given by the marks, bearing in mind, in particular, 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 appreciation of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
19      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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
20      In the present case, it should be noted that the earlier mark SYR is a word mark. The mark applied for, for its part, is figurative. It is made up of the term ‘syc’, written in slightly stylised capital letters in dark blue. Above the letters ‘s’ and ‘c’, there are two light blue rectangular shapes, one edge of which is angled.
21      First, the Board of Appeal found that the marks at issue had an average degree of visual similarity, in that they coincided in their first two letters on which consumers would tend to focus their attention. They differed only in their final letter and in the figurative aspect of the mark applied for which is purely of a decorative nature.
22      Secondly, the Board of Appeal found that the marks at issue were phonetically similar to an average degree in that they coincided in the order and sound of their first two letters, which consumers pronounce first, and differed only in the sound of their final letter.
23      Thirdly, the Board of Appeal found that, conceptually, the marks at issue were meaningless for the relevant public.
24      The applicant, for its part, claims that, first, the earlier mark is conceptually, phonetically and visually lacking in complexity. The applicant notes that, in the case of marks of short length, small differences may be sufficient in order to conclude that those marks are not similar, at least visually and phonetically. Secondly, it states that, first of all, while the earlier mark is a word mark, the mark applied for is a figurative mark consisting of the term ‘syc’ written in stylised capital letters in navy blue, and two indigo trapezoidal geometric shapes. It infers from this that those marks are not visually similar. Next, it argues that, since the marks at issue consist of only one syllable, the fact that the letters ‘c’ and ‘r’ are pronounced differently in Spanish means that any phonetic similarity can be ruled out. Lastly, it maintains that those marks are not conceptually similar. It therefore concludes that there are important differences between those marks and, therefore, that they are not similar.
25      EUIPO and the intervener dispute the applicant’s arguments.
26      At the outset, it should be borne in mind that, according to case-law, even in circumstances where two conflicting marks are composed of word elements with a significant degree of similarity, that fact does not, by itself, support the conclusion that there is a visual similarity between the signs at issue. The presence, in one of the signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each sign is different (judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 48; see also, to that effect, judgment of 9 July 2003, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraphs 43 and 44).
27      In the first place, visually, the marks at issue, described in paragraph 20 above, coincide in the first two letters of their word element. However, they differ in their third letter and in the stylisation and the figurative elements of the mark applied for.
28      It should be noted that, first, as stated by the Board of Appeal in paragraphs 37 and 38 of the contested decision, the two light blue figurative elements of the mark applied for will be perceived as purely decorative, given that they are short and merely represent a basic geometric element. It follows that the relevant public will focus its attention on the word element of that mark.
29      Secondly, the marks coincide in the letters ‘s’ and ‘y’ which make up their word element, which has a distinctive character as stated in paragraph 17 above.
30      In the light of the findings above, the Board of Appeal was correct in so far as it found that those signs were visually similar to an average degree.
31      In the second place, phonetically, first of all, it should be recalled that, according to case-law, when consumers name composite signs consisting of word and figurative elements, they generally refer only to the word elements and consequently normally disregard the figurative elements, which cannot therefore play a part in the context of the phonetic assessment (see, to that effect, judgment of 14 February 2008, Orsay v OHIM – Jiménez Arellano (O orsay), T‑39/04, not published, EU:T:2008:36, paragraph 49). In the present case, as regards the mark applied for, as described in paragraph 20 above, consumers will only refer to it by its single word element, ‘syc’.
32      Thus, the marks at issue, both of which comprise one syllable, coincide in the order and pronunciation by the relevant Spanish-speaking public of their first two letters, ‘s’ and ‘y’, and differ in the pronunciation of their last letter, ‘c’ and ‘r’ respectively. Accordingly, it must be concluded, as the Board of Appeal did, that the marks at issue are phonetically similar to an average degree.
33      In the third place, as regards the conceptual assessment, it should be borne in mind that, where none of the signs at issue has meaning taken as a whole, it must be found that a conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96). In the present case, it should be noted that the applicant does not dispute that the marks at issue are meaningless for the relevant public. Consequently, it must be stated that the Board of Appeal correctly found that a conceptual comparison of those marks was not possible and that it therefore had no impact on the assessment of the similarity of those marks.
34      Consequently, it should be stated that there is no basis for the applicant’s argument that the marks at issue were not similar within the meaning of Article 8(1)(b) of Regulation 2017/1001.
35      Accordingly, to the extent that (i) the applicant does not provide any specific argument challenging the global assessment of the likelihood of confusion carried out by the Board of Appeal in the contested decision, (ii) its arguments on the visual, phonetic and conceptual comparison of the marks at issue, examined in the context of the present plea, have not called into question the merits of the Board of Appeal’s assessment and (iii) the definition of the relevant public, its level of attention, the comparison of the goods in question and the other factors relevant for the purposes of the assessment of the likelihood of confusion are not contested, it must be found that the applicant is incorrect in so far as it maintains that the likelihood of confusion has not been established in the present case.
36      In the light of all the findings above, since the single plea in law relied on by the applicant in support of its claims must be rejected, the action must be dismissed in its entirety.
Costs
37      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.
38      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must bear its own costs as no hearing was held.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Atusa Grupo Empresarial, SA to bear its own costs and pay those incurred by Hans Sasserath GmbH & Co. KG;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kowalik-Bańczyk
Buttigieg
Dimitrakopoulos
Delivered in open court in Luxembourg on 29 January 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.