JUDGMENT OF THE GENERAL COURT (Third Chamber)
13 November 2024 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark IServ – Earlier national word mark Info Serv – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EU) 2017/1001 – Legal authenticity of translations – Article 26 of Implementing Regulation (EU) 2018/626 )
In Case T‑16/24,
IServ GmbH,
established in Brunswick (Germany), represented by M. Wille, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other parties to the proceedings before the Board of Appeal of EUIPO being
Victoria Dorovska, residing in Sofia (Bulgaria),
Stefan Jordanov,
residing in Ruse (Bulgaria),
and
Nadja Jordanova, residing in Ruse,
THE GENERAL COURT (Third Chamber),
composed, at the time of the deliberations, of I. Nõmm, acting as President, G. Steinfatt and D. Kukovec (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, IServ GmbH, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 November 2023 (Case R
1557/2023-1) (‘the contested decision’).
Background to the dispute
2        On 20 January 2022, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The goods and services in respect of which registration of the mark was sought are in Classes 9, 37, 38, 41 and 42 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 9: ‘Recorded content; Software; Computer software packages; Data communications hardware; Data processing equipment; Computer networking hardware; Computer hardware; Cloud servers; Cloud server software; Application software for cloud computing services; Downloadable cloud computing software; Server software; Internet servers; File servers; Intranet servers; Electronic mail servers; Web application and server software; Network access server hardware; Servers for web hosting; Educational mobile applications; Application software for mobile devices; Downloadable mobile applications for the management of information; Downloadable mobile applications for the transmission of information’;
–        Class 37: ‘Installation of hardware for computer systems; Maintenance and repair of hardware for data processing apparatus; Computer hardware and telecommunication apparatus installation, maintenance and repair; Installation of Access Control as a Service (ACaaS) hardware’;
–        Class 38: ‘Telecommunication services; Provision and rental of telecommunications facilities and equipment; Computer communication and Internet access; Provision of access to content, websites and portals; Providing access to data in computer networks; Provision of access to an electronic on-line network for information retrieval; Provision of internet access services; Providing access to computer networks’;
–        Class 41: ‘Instructional and training services; Provision of training courses; Arranging of training courses; Organisation of training courses’;
–        Class 42: ‘Computer software design; Computer software consultancy; Software development; Rental of computer hardware and computer software; Consultation services relating to computer hardware; Rental of computer software, data processing equipment and computer peripheral devices; Software as a service [SaaS]; Troubleshooting of computer hardware and software problems; Consultancy in the field of computers; Design and development of computer hardware; Software design and development; Consultancy services relating to computer networks using mixed software environments; Advisory services in the field of product development and quality improvement of software; Computer project management services; Computer and information technology consultancy services; Compilation of information relating to information technology; Technical consultancy services relating to information technology; Cloud computing; Cloud hosting provider services; Cloud storage services for electronic files; Cloud storage services for electronic data; Consulting in the field of cloud computing networks and applications; Providing virtual computer systems through cloud computing; Rental of operating software for accessing and using a cloud computing network; Design and development of operating software for accessing and using a cloud computing network; Providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; Server administration; Server hosting; Rental of server memory space; Rental of memory space on servers for hosting electronic bulletin boards; Hosting of Access Control as a Service (ACaaS) servers and software; Hosting of mobile applications; Design and development of software in the field of mobile applications; Testing, analysis and evaluation of the goods and services of others for the purpose of certification’.
4        On 4 April 2022, the other parties to the proceedings before the Board of Appeal, Ms Victoria Dorovska, Mr Stefan Jordanov and Ms Nadja Jordanova, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
5        The opposition was based on the Bulgarian word mark Info Serv covering ‘Data processing equipment, computers, information networks, telecommunications and office equipment, devices for preparation and reproduction of data, sound and picture, software for processing data and telecommunications’ in Class 9.
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        Following a request by the applicant, EUIPO invited the other parties to the proceedings before the Board of Appeal to adduce the evidence of genuine use of the earlier mark relied on in support of the opposition. The parties complied with that request within the prescribed period.
8        On
13 June 2023, the Opposition Division rejected the opposition in its entirety. For reasons of procedural economy, it presumed, first, that genuine use of the earlier mark had been shown for all the goods referred to in paragraph 5 above and, secondly, that the goods and services at issue were identical. The Opposition Division considered that, even in those circumstances, the differences between the signs at issue were sufficient to exclude any likelihood of confusion.
9        On 21 July 2023, the other party to the proceedings before the Board of Appeal of EUIPO filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal annulled the decision of the Opposition Division and remitted the case to the latter. In particular, it found, in essence, first, that the likelihood of confusion could not be ruled out in the present case and, secondly, that the final conclusion regarding the existence of that likelihood could no longer be made without the assessment of the genuine use of the earlier mark in respect of all the goods covered by that mark.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        confirm the decision of the Opposition Division;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
Law
13      In support of the action, the applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 26 of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37).
14      The examination of the present case will begin with an analysis of the second plea in law.
The second plea in law, alleging infringement of Article 26 of Implementing Regulation 2018/626
15      The applicant complains that the Board of Appeal infringed Article 26 of Implementing Regulation 2018/626, in so far as it did not require the filing of a certificate that the translation of the extract from the ПАТЕНТНО ВЕДОМСТВО НА РЕПУБЛИКА БЪЛГАРИЯ (Bulgarian Patent Office) relating to the registration of the earlier mark name corresponded to the original text, when the earlier mark name was identified differently in the original document and in its translation. According to the applicant, the Board of Appeal thus infringed essential procedural requirements.
16      EUIPO disputes the applicant’s arguments.
17      According to Article 26 of Implementing Regulation 2018/626, ‘in the absence of evidence or indications to the contrary, [EUIPO] shall assume that a translation corresponds to the relevant original text. In the event of doubt, [EUIPO] may require the filing, within a specific period, of a certificate that the translation corresponds to the original text.’
18      First, by stating that EUIPO ‘may’ require the filing of a certificate that the translation corresponds to the original text, Article 26 of Implementing Regulation 2018/626 does not impose any obligation on EUIPO in that regard. Where EUIPO has doubts as to whether the translation corresponds to the original text, it is entitled to require the filing of such a certificate in order to dispel such doubts.
19      Secondly, it is true, as the applicant points out, that the English translation of the extract from the Bulgarian Patent Office relating to the registration of the earlier mark indicated that the earlier mark name was ‘Infoserv’, whereas the original text of that extract referred to the name ‘Info Serv’. However, it must be pointed out, as observed by EUIPO, that, even in the original text, most of the information, including information concerning the earlier mark name, was indicated in English, so that it was obvious that the translation contained a clerical error and that the earlier mark name was ‘Info Serv’. Thus, there was no valid reason, in the proceedings before EUIPO, to have doubts as to the earlier mark name.
20      In addition, the fact that the Board of Appeal took into account the correct earlier mark name was also confirmed in paragraphs 5 and 21
of the contested decision: the sign Info Serv is referred to as an earlier trade mark which is taken into account for the purposes of examining the likelihood of confusion. Furthermore, while it is true that the Board of Appeal identified, on a number of occasions, the earlier mark name as ‘Info serv’, it is clear that the use of the lower-case letter ‘s’ was, in that context, a clerical error and had no impact on the examination carried out by the Board of Appeal.
21      Since it has not been shown that the requirements of Article 26 of Implementing Regulation 2018/626 had been infringed, it must be held that the Board of Appeal cannot be criticised for having infringed essential procedural requirements. The second plea in law must therefore be dismissed.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
22      The applicant claims that the Board of Appeal remitted the case to the Opposition Division for further examination, including an examination of the proof of genuine use of the earlier mark. According to the applicant, the Board of Appeal should have found that there was no likelihood of confusion in the present case and that the examination of the proof of genuine use was therefore not necessary.
23      EUIPO disputes the applicant’s arguments.
24      It should be borne in mind that, 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.
25      Under Article 47(2) of Regulation 2017/1001, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition is to furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her opposition, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected.
26      It is apparent from the case-law that, although genuine use of an earlier mark is a question which, when raised expressly, must, in principle, be settled before a decision is taken on the opposition itself, it is not necessary, where there is no likelihood of confusion between the signs at issue, to examine proof of use of the earlier mark (see judgment of 28 April 2021, Nosio v EUIPO – Tros del Beto (ACCUSÌ), T‑300/20, not published, EU:T:2021:223, paragraph 24 and the case-law cited).
27      It follows that, where the existence of a likelihood of confusion can be ruled out, the examination of whether there has been genuine use of the earlier mark may be dispensed with.
28      In the present case, the Board of Appeal found, in essence, that, in so far as the identity of the goods and services at issue was presumed, that likelihood could not be completely ruled out, taking into account, inter alia, the similarities between the signs at issue. Accordingly, in those circumstances, the prior examination of the proof of genuine use of the earlier mark was mandatory.
29      It must be observed that, as EUIPO submits, the Board of Appeal did not take a final decision either on the similarity of the signs at issue, or on the existence of a likelihood of confusion. It confined itself to finding that the Opposition Division had erred, first, in the assessment of that similarity and, secondly, in the global assessment of the likelihood of confusion, in particular in finding that any likelihood of confusion could be ruled out.
30      Thus, in order to answer the question whether, in the present case, the examination of genuine use of the earlier mark was necessary, it is appropriate to ascertain whether the Board of Appeal was right in finding that, in so far as the identity of the goods and services at issue was presumed, the likelihood of confusion could not be ruled out without carrying out that examination.
31      In those circumstances, contrary to what EUIPO submits, the applicant’s arguments by which it seeks to show that the likelihood of confusion could be considered to be ruled out, even without examining the proof of genuine use of the earlier mark, cannot be regarded as ineffective and must therefore be examined.
32      In that regard, it must be borne in mind that the likelihood 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. 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).
33      In the light of those considerations, it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by finding that, in so far as the identity of the goods and services at issue was presumed, the likelihood of confusion could not be ruled out without examining the proof of use of the earlier mark.
The relevant public and its level of attention
34      In the global assessment of the likelihood of confusion, account should be taken 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).
35      It should be borne in mind that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see  judgment of 21 February 2024, Hong Kong NetEase Interactive Entertainment v EUIPO – Medion (LifeAfter), T‑175/23, not published, EU:T:2024:109, paragraph 37 and the case-law cited).
36      The Board of Appeal considered that, since proof of genuine use of the earlier mark had not been examined by the Opposition Division, it was not possible to assess the level of attention of the relevant public, which depends on the nature and other characteristics of the goods concerned.
37      There is no reason to question those assessments, which are, moreover, not disputed by the applicant.
38      By contrast, while acknowledging that the level of attention of the relevant public may vary from average to high, the applicant emphasises the high level of attention of professional consumers.
39      Even if it was not possible to adopt a definitive conclusion as regards the relevant public and its level of attention in the present case, it is apparent from all of the Board of Appeal’s reasons that, in its assessments, it not only took into account the perception of the general public with an average level of attention, but it also took into account the assumption that the relevant public consists of professionals and displays a high level of attention.
40      Thus, in any event, it cannot validly be maintained that the Board of Appeal did not take into account the fact that the level of attention of the relevant public might possibly be high.
41      Furthermore, it must be noted, as the Board of Appeal did, that, since the earlier mark is a Bulgarian mark, the relevant territory for the purposes of assessing the likelihood of confusion is Bulgaria.
The comparison of the signs
42      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that 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).
43      Consequently, before dealing with the issue of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal’s assessment of their distinctive and dominant elements.
–       The distinctive and dominant elements of the signs at issue
44      The Board of Appeal found that the word element ‘info’ in the earlier mark was the abbreviation commonly used to designate ‘information’ which, irrespective of the goods concerned, had, at most, a weak distinctive character. It also found that the word element ‘serv’ did not exist, as such, in Bulgarian, but that it cannot be excluded that at least part of the relevant public would perceive it as alluding to the term ‘service’, with the result that it would constitute, together with the word element ‘info’, a conceptual entity meaning ‘information service’. In addition, depending on the goods in question, the word element ‘serv’ could be understood as referring to a ‘server’. According to the Board of Appeal, since proof of genuine use of the earlier mark had not been examined, it was not possible to determine with certainty how that mark would be perceived by the relevant public.
45      As regards the mark applied for, the Board of Appeal found that the term ‘iserv’, as a whole, was meaningless. However, according to the applicant, it cannot be excluded that the letter ‘i’ at the beginning of that word may be perceived as suggesting an information point or centre. Similarly, that term could be associated, in accordance with the case-law, with the concepts of ‘intelligent’, ‘interactive’ or ‘internet’, especially if the relevant public consisted of professionals. In addition, the Board of Appeal took the view that the findings concerning the perception of the word element ‘serv’ in the earlier mark equally applied to the combination of letters ‘serv’ in the mark applied for. Furthermore, as regards the figurative elements of that mark, it emphasised that they were of secondary importance in the overall impression of the sign.
46      It is therefore apparent from the analysis carried out by the Board of Appeal that, although it referred to several conceivable perceptions of the word elements of the signs at issue, no definitive conclusion was adopted in that regard. Similarly, although the Board of Appeal found that the word element ‘info’ of the earlier mark had a weak distinctive character, no word element was expressly considered to be more distinctive than the others. By contrast, the graphic elements of the mark applied for are, according to the Board of Appeal, of secondary importance. It follows that they are therefore less distinctive than the word element of that mark. Furthermore, none of the elements of those signs was considered to be dominant.
47      The applicant disputes the findings of the Board of Appeal only in so far as it found that the letter ‘i’ at the beginning of the mark applied for could be perceived, inter alia, as an information point or centre. According to the applicant, such a perception, relating to tourist information, has no connection with information services in the information technology sector.
48      In that regard, first, it should be underlined that the consideration at issue is only one of the perceptions envisaged by the Board of Appeal, when the other possible perceptions were also taken into account. Secondly, the applicant’s claim that the letter ‘i’ is linked solely to tourist information has no factual basis. As is apparent from the contested decision, the evidence produced before that board confirms that that letter is used, in particular in Bulgaria, to indicate an information point or centre in several different fields. It may be inferred from this that it is a universal sign, the use of which cannot be linked solely to services related to the tourism sector.
49      Similarly, contrary to what the applicant claims, it must be stated that an average consumer does not have to make a significant mental effort to distinguish the letter ‘i’ from the rest of the mark applied for in order to recognise the concept of ‘information’. First, as the applicant itself submits, the use of the letter ‘i’ at the beginning of the signs to refer to that concept is not unusual for average consumers. Secondly, in so far as the word element ‘serv’ could, in itself, invoke several specific associations to those consumers, they are likely to make that distinction immediately and without further reflection. Thus, the splitting of the cognitive process into several autonomous stages, as suggested by the applicant, is rather arbitrary and does not necessarily reflect reality.
50      Consequently, the applicant does not put forward any arguments capable of calling into question the findings of the Board of Appeal as regards the perception of the distinctive and dominant elements of the signs at issue, as summarised in paragraphs 44 to 46 above.
–       Visual and phonetic comparison
51      The Board of Appeal found that the Opposition Division had wrongly concluded that the signs at issue were visually and phonetically similar only to a low degree. According to the Board of Appeal, those signs had a degree of visual similarity that was ‘at least below average’ and a degree of phonetic similarity that was ‘at best average’. The Board of Appeal emphasised, in that regard, that the ‘final’ degree of similarity between those signs depended on the distinctiveness of their elements, which cannot be determined in abstracto.
52      The applicant disputes those assessments of the Board of Appeal, claiming that the signs at issue are visually and phonetically similar to, at best, a low degree.
53      As a preliminary point, it should be noted that, although the Board of Appeal did not determine, in a precise and definitive manner, the degree of visual and phonetic similarity of the signs at issue, it is apparent from the grounds of the contested decision that it considered that those signs had, in any event, a degree of visual and phonetic similarity that was higher than low.
54      It must be held that that conclusion is correct.
55      As was pointed out by the Board of Appeal, the signs at issue coincide, visually, in the letter ‘i’ at the beginning of those signs and in the letter combination ‘serv’. They differ only in the letters ‘n’, ‘f’ and ‘o’ included in the word element ‘info’ of the earlier mark and in the figurative elements of the mark applied for, which are, however, of only secondary importance.
56      Thus, in so far as more than half of the letters of the signs at issue are identical, it cannot be held that those signs have only a low degree of visual similarity.
57      In so far as the applicant relies on the enhanced attention paid to the beginning of the signs at issue, it must be borne in mind that that cannot apply in all cases and that that rule cannot apply independently of the facts of the present case, and in particular of the specific characteristics of those signs. Nor can that rule call into question the general principle that the examination of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Therefore, the Court must not take as its starting point the premiss that consumers pay greater attention to the beginning of a compound word sign than to the end. It may hold that the end of signs that are the subject of opposition proceedings is more distinctive or dominant than the beginning of those signs or even that one of the elements in those signs is not more distinctive or dominant than the other (see, to that effect, judgments of 1 March 2023, Canai Technology v EUIPO – Trend Fin (HE&ME), T‑25/22, not published, EU:T:2023:99, paragraph 56 and the case-law cited, and of 8 November 2023, Pollen + Grace v EUIPO – Grace Foods (POLLEN + GRACE), T‑41/23, not published, EU:T:2023:705, paragraph 49 and the case-law cited).
58      In that regard, it must be borne in mind that the Board of Appeal did not determine, in a precise and definitive manner, the degree of visual similarity between the signs at issue, since that degree had to be assessed by taking into account the distinctive character of their elements, which could not be determined in abstracto. However, the word element ‘info’ at the beginning of the earlier mark has, in any event, only a weak distinctive character, with the result that the average consumer will not pay greater attention to it.
59      Thus, it must be held that the similarities between the signs at issue, as referred to in paragraph 55 above, are sufficient to find, at the very least, that those signs are visually similar to a higher than low degree.
60      Phonetically, as the Board of Appeal found, the signs at issue coincide at least in the pronunciation of their last four letters, which are identical, whereas they differ in the pronunciation of the elements at the beginning of those signs, namely the letter ‘i’ of the mark applied for and the word element ‘info’ of the earlier mark.
61      The applicant complains that the Board of Appeal did not take sufficient account of the fact that the coincidence in the pronunciation of the signs at issue is based on the word element which is non-distinctive or at best weak.
62      In that regard, first, it must be borne in mind that the Board of Appeal did not reach a conclusion regarding the distinctive character of the word element ‘serv’ in the earlier mark because it could not be determined in abstracto. Secondly, it must be pointed out that, in any event, that word element, the pronunciation of which is identical to that of the combination of letters ‘serv’ in the mark applied for, constitutes a not insignificant part of the signs at issue: it consists of four of the five letters of the mark applied for and half of the letters of the earlier mark. In those circumstances, irrespective of the conclusion on the distinctive elements of those signs, it must be held that the degree of phonetic similarity of those signs is higher than low.
63      Consequently, it must be concluded that the Board of Appeal did not make an error of assessment in so far as it found that the degree of visual similarity and the degree of phonetic similarity of the signs at issue had to be considered to be higher than low.
–       Conceptual comparison
64      The Board of Appeal considered whether or not the signs at issue were conceptually similar, depending on their perception by the relevant public and the distinctive character of their elements. It stated that those signs would be similar if they had the same or a similar meaning. By contrast, those signs would not be similar if the earlier mark were associated with a weak concept and the mark applied for were considered to be meaningless. In any event, that lack of conceptual similarity is of minor importance, given that the word element ‘info’ (and possibly the word element ‘serv’) has, at most, a weak distinctive character.
65      The applicant does not dispute the Board of Appeal’s assessment, in paragraph 31
of the contested decision, that, in circumstances where the earlier mark is associated with a weak notion, whereas the mark applied for lacks any meaning for part of the public, the signs at issue are not conceptually similar. By contrast, it submits that, if those signs were perceived as referring to the same concept of ‘service’ or ‘server’, they would, at most,
display a low degree of conceptual similarity because of the fact that the word element ‘serv’ is devoid of a distinctive character or has, at best, a weak distinctive character.
66      In that regard, first, it should be borne in mind that, although the Board of Appeal referred to several conceivable scenarios as regards the conceptual similarity of the signs at issue, it did not determine, precisely and definitively, the degree of that similarity, in particular because it could not determine, in abstracto, the relevant public’s perception of those signs.
67      Secondly, it must be pointed out that, although the Board of Appeal, unlike the Opposition Division which found only that there was no conceptual similarity between the signs at issue, considered the possibility that they might be conceptually similar, that fact played no role in its conclusion that the likelihood of confusion could not be ruled out without examining the proof of genuine use of the earlier mark. It is apparent from the grounds set out in the contested decision that, for the purposes of that finding, the Board of Appeal based its assessments on the visual and phonetic similarities of those signs, whereas, conceptually, it based its assessments on the assumption most favourable to the applicant that those signs are not similar (see, in that regard, paragraph 37
of the contested decision).
68      In those circumstances, it must be held that the applicant’s arguments relating to the assessment of the conceptual similarity of the signs at issue are not capable of demonstrating that the Board of Appeal made an error of assessment.
The distinctive character of the earlier mark
69      Although the Board of Appeal did not reach an express conclusion regarding the assessment of the distinctive character of the earlier mark as a whole, it found, as was pointed out in paragraph 44 above, that the distinctive character of its elements could not be determined in abstracto, without having examined the proof of genuine use of that mark. It may be inferred from this that the Board of Appeal applied the same logic to the assessment of the distinctive character of that mark as a whole.
70      The applicant submits that the Board of Appeal should have found that the distinctive character of the earlier mark was weak, without it being necessary to examine the proof of genuine use of the earlier mark.
71      First, it is true that, in so far as proof of genuine use of the earlier mark was not examined in the present case, it is not possible to determine definitively either the relevant goods in relation to which the distinctive character of that mark must be examined, or the perception of that mark by the relevant public which is supposed to consume those goods.
72      Secondly, it must be observed that, in any event, the Board of Appeal recalled, referring to well-established case-law, that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61 and the case-law cited).
73      Accordingly, it may be inferred that the Board of Appeal did not fail to take into account a hypothetical situation in which the distinctive character of the earlier mark could be considered to be weak.
74      Consequently, the applicant’s claims concerning the weak distinctive character of the earlier mark are not capable of demonstrating an error on the part of the Board of Appeal.
The overall assessment of the likelihood of confusion
75      The Board of Appeal found that, if the identity of the goods and services at issue were established, that identity and the degree of similarity of the signs at issue could be sufficient to create a likelihood of confusion. However, according to the Board of Appeal, the final conclusion regarding the existence of a likelihood of confusion in the present case could no longer be made without the assessment of the genuine use of the earlier mark in respect of all the goods covered by that mark, so that the case should be remitted to the Opposition Division for further prosecution, pursuant to Article 71(1) of Regulation 2017/1001.
76      The applicant submits that, in so far as the signs at issue are visually, phonetically and conceptually similar at best to a low degree and taking into account the weak distinctive character of the earlier mark, there is no likelihood of confusion even if the goods and services at issue are assumed to be identical. It also submits that the remittal of the case to the Opposition Division was not necessary.
77      EUIPO disputes the applicant’s arguments.
78      As was pointed out in paragraph 32 above, 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).
79      Indeed, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
80      In the present case, it must be held that, in so far as the examination of genuine use of the earlier mark has not been carried out and the identity of the goods and services at issue has been presumed, the likelihood of confusion cannot be ruled out without a global assessment of all the relevant factors, account taken of the fact that the signs at issue are, at least visually and phonetically, similar to a higher than low degree. Even if it is possible that, as the applicant submits, the relevant public will display a high level of attention and the earlier mark will be regarded as having only a weak distinctive character, such a likelihood may possibly be established in those circumstances.
81      As has been pointed out in paragraph 27 above, it is only in the absence of a likelihood of confusion that it is not necessary to examine proof of genuine use of the earlier mark. Since the likelihood of confusion cannot be ruled out in the present case, the Board of Appeal was therefore right in finding that it was appropriate to carry out that examination.
82      As regards the decision to remit the case to the Opposition Division, it should be recalled that, under Article 71(1) of Regulation 2017/1001, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal. That board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.
83      First, it is apparent from the use of the verb ‘may’ in Article 71(1) of Regulation 2017/1001 that the Board of Appeal has a broad discretion for the purposes of ‘either exercis[ing] any power within the competence of the department which was responsible for the decision appealed or remit[ting] the case to that department for further prosecution’ (see order of 17 January 2024, Palírna U Zeleného stromu v EUIPO – Bacardi (B42V), T‑800/22, not published, EU:T:2024:17, paragraph 27 and the case-law cited).
84      Secondly, the Board of Appeal decided to remit the case to the Opposition Division because, if proof of genuine use of the earlier mark was established in respect of the goods concerned, a new decision on the merits had to be taken, taking into account all the relevant factors. It emphasised, in that regard, the legitimate interest of the parties in the case being examined by the two instances of EUIPO.
85      The Board of Appeal thus exercised its broad discretion under Article 71(1) of Regulation 2017/1001, in particular for the purposes of remitting the case to the first instance. Accordingly, the Board of Appeal cannot be criticised for not exercising itself the powers of the Opposition Division and for not taking the final decision, in so far as it found, in particular for the reasons set out in paragraph 84 above, that it was appropriate to remit the case to that division.
86      Accordingly, the first plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
87      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.
88      In the present case, although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Nõmm
Steinfatt
Kukovec
Delivered in open court in Luxembourg on 13 November 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.