JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
6 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark SMATRIX — Prior EU figurative mark AsyMatrix — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001) — Extent of the examination to be carried out by the Board of Appeal — Failure to assess an item of evidence produced before the Opposition Division)
In Case T‑264/17,
Uponor Innovation AB, established in Borås (Sweden), represented by A. Kylhammar, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Swep International AB, established in Landskrona (Sweden), represented by J. Norderyd and C. Sundén, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 1 March 2017 (Case R 236/2016-2), relating to opposition proceedings between Swep International and Uponor Innovation,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva (Rapporteur) and J. Passer, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 May 2017,
having regard to the response of EUIPO lodged at the Court Registry on 30 May 2017,
having regard to the response of the intervener lodged at the Court Registry on 2 July 2017,
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
Background to the dispute
1        On 28 January 2014, the applicant, Uponor Innovation AB, 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 SMATRIX.
3        The goods and services in respect of which registration was sought are in Classes 9, 11 and 37 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: ‘Measuring, detecting and monitoring instruments, indicators and controllers for controlling indoor water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations; controllers (regulators) for controlling indoor water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations; computers and computer hardware and computer software for controlling indoor water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations’;
–        Class 11: ‘HVAC systems (heating, ventilation and air conditioning), namely water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations’;
–        Class 37: ‘Installation, repair and maintenance of water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations; advisory services relating to the installation, service, maintenance and renovation of water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations’.
4        The trade mark application was published in Community Trade Marks Bulletin No 50/2014 of 14 March 2014.
5        On 13 June 2014, the intervener, Swep International AB, 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 the goods and services referred to in paragraph 3 above.
6        The opposition was based on the earlier EU figurative mark registered on 10 August 2010 reproduced below:
7        The earlier mark referred to goods in Class 11 corresponding to the following description: ‘Pipe line cocks (spigots); regulating and safety accessories for water installations; pipes and tubes forming parts of hot water systems; sanitary apparatus and installations; boilers; ventilation (air-conditioning) installations and apparatus; heating elements, heating installations, heating boilers, heat exchangers (not parts of machines) and parts and fittings therefor not included in other classes’.
8        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).
9        On 3 December 2015, the Opposition Division partially upheld the opposition as regards the goods in Class 11 covered by the mark applied for, and the services in Class 37 covered by the mark applied for, and rejected the opposition in respect of the goods in Class 9 covered by the mark applied for.
10      On 3 February 2016, the applicant filed an appeal with EUIPO, under 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 in so far as it partially upheld the opposition for the goods and services covered by the trade mark applied for in Class 11 and Class 37 respectively. In its observations of 13 June 2016, the intervener sought the dismissal of the applicant’s appeal and lodged a cross-appeal against the Opposition Division’s decision in so far as the Opposition Division rejected the opposition as regards the goods in Class 9 covered by the mark applied for.
11      By decision of 1 March 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO rejected the applicant’s appeal and upheld the intervener’s cross-appeal. The Board of Appeal found, in particular, that the relevant territory in respect of which the likelihood of confusion had to be assessed was the European Union as a whole and that the relevant public consisted of professionals and of the general public who, given the nature of the goods and services in question, would show a high level of attention. The Board of Appeal held, with respect to the comparison of the goods and services at issue, that the goods in Class 9 and in Class 11 covered by the mark applied for were, respectively, similar and identical to the goods in Class 11 covered by the earlier mark. The Board of Appeal also took the view that there was a similarity between the ‘installation, repair and maintenance’ services in Class 37 covered by the mark applied for and the goods in Class 11 covered by the earlier mark and that there was, at the very least, some similarity between the latter and the ‘advisory services’ in Class 37 covered by the mark applied for. The Board of Appeal also held, as regards the comparison of the signs at issue, that they were visually, phonetically and conceptually similar for a significant part of the relevant public. Since the Board of Appeal had found that the earlier mark had a normal level of distinctiveness, it concluded, in the light of the foregoing considerations, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs;
–        order the intervener to bear, in addition to its own costs incurred in the opposition proceedings and in the appeal proceedings, the costs which it has incurred in those proceedings.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. As part of that plea, the applicant puts forward a complaint alleging, in essence, infringement of Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001). Thus, the applicant complains that the Board of Appeal took the view that the relevant public consisted of both the general public and professionals, whereas it is comprised solely of professionals who have a high level of attention. The applicant submits that, contrary to what the Board of Appeal found, the goods in Class 9 and Class 11 covered by the mark applied for are, respectively, at most, similar to a very low degree and similar to the goods in Class 9 covered by the earlier mark. The applicant also complains that the Board of Appeal took the view that the services in Class 37 covered by the mark applied for were similar to the goods in Class 9 covered by the earlier mark. The applicant further disagrees with the Board of Appeal’s reasoning regarding the comparison of the signs at issue. It takes the view that the signs at issue differ substantially from a visual point of view, have, at most, a very low degree of phonetic similarity and are conceptually different, the Board of Appeal having failed, in that regard, to take account of an item of evidence produced before the Opposition Division. It follows, according to the applicant, that, since the earlier mark was of minimal distinctiveness, the global assessment of the likelihood of confusion should have led the Board of Appeal to conclude that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
15      EUIPO and the intervener dispute the applicant’s arguments.
16      Under Article 8(1)(b) of Regulation No 207/2009, 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17      According to the 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).
18      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
19      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 or services in question in that territory. However, it must be borne in mind that, in order 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).
The relevant public
20      In paragraphs 24 to 30 of the contested decision, the Board of Appeal found that both the goods in Class 9 for which the earlier mark is registered and the goods and services in, respectively, Classes 9, 11 and 37 and covered by the mark applied for are aimed at the general public and professionals in the sector concerned within the European Union as a whole. The Board of Appeal stated, as regards the general public, that, given the highly technical nature of the goods and services at issue and the fact that they could be costly, the average consumer would show a high level of attention.
21      In that regard, there is no need to call into question the findings of the Board of Appeal, since, on the one hand, although the applicant claims that the relevant public is composed of professionals, it does not put forward any argument in support of that statement and, on the other, the applicant submits that it is appropriate to confirm the Board of Appeal’s finding that the relevant public will display a high level of attention.
The comparison of the goods and services
22      According to settled case-law, in assessing the similarity of the goods or services at issue, all 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, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
The goods in Class 11 covered by the earlier mark
23      The applicant claims that the protection of the earlier mark is expressly limited to certain goods in Class 11 for which it was registered and does not therefore extend to other goods in Class 11 covered by the mark applied for or to the goods and services in Classes 9 and 37 covered by the mark applied for.
24      In that regard, first, it should be noted, as EUIPO has done, that the wording ‘not included in other classes’, which is to be found at the end of the description of the goods in Class 11 for which the earlier mark is registered, does not apply to all of those goods, but only to ‘parts and fittings’ of ‘heating elements, heating installations, heating boilers, heat exchangers (not parts of machines)’ in Class 11.
25      Secondly, it should also be noted that, in any event, the earlier trade mark is only registered in respect of goods in Class 11, so that the wording ‘not included in other classes’ may not be truly interpreted as a limitation.
26      Furthermore, as noted by the Board of Appeal, Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) provides that the classification of goods and services under the Nice Agreement are to serve exclusively administrative purposes. Therefore, goods and services may not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and may not be regarded as being dissimilar on the ground that they appear in different classes under the Nice Classification.
27      It follows that the fact that the goods covered by the earlier mark are included in a particular class of the Nice Classification (Class 11) is in no way contrary to a finding of similarity or even identity of those goods with goods covered by the mark applied for and falling within the same class or other classes. Contrary to what the applicant claims, such a finding does not involve any extension of the scope of the protection afforded to the earlier trade mark.
The goods in Class 9 covered by the mark applied for
28      The Board of Appeal took the view that the services in Class 9 covered by the mark applied for were at the very least similar to the goods in Class 11 covered by the earlier mark. The Board of Appeal took the view that the goods at issue were similar, had the same or a very similar purpose, were aimed at the same consumers, could be produced by the same entities and shared the same distribution channels.
29      The applicant submits that the goods in Class 9 covered by the mark applied for are not of the same nature and do not have the same purpose as the goods in Class 11 covered by the earlier mark. Moreover, the goods in Class 9 covered by the mark applied for are neither indispensable nor complementary to the goods in Class 11 covered by the earlier mark. Therefore, the goods at issue are at most slightly similar.
30      In that regard, it should be noted that the goods in Class 9 covered by the mark applied for, namely ‘measuring, detecting and monitoring instruments, indicators and controllers’, ‘regulators’, ‘computers and computer hardware and computer software’ are devices making it possible to measure and regulate ‘indoor water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations’.
31      The Board of Appeal found that those goods have the same intended purpose as ‘regulating and safety accessories’ covered by the earlier mark. The Board of Appeal took the view that, although the goods in Class 9 covered by the mark applied for related to water based heating systems, whereas ‘regulating and safety accessories’ in Class 11 covered by the earlier mark referred to the more general category of ‘water installations’, both types of installation largely coincided, since the same installation is often used for water heating and building heating purposes.
32      It should be noted that, contrary to what the Board of Appeal found, the water installation systems do not coincide with the water based heating systems. Thus, the purpose of the water installation system is to allow the distribution and drainage of water in a building, whereas the purpose of the water based heating system is to heat a building by circulating hot water throughout. The two installations are generally independent. The fact that the water circulating in the water installation and that circulating in the water based heating system may be heated by a single boiler cannot lead to the conclusion that the goods in Class 9 covered by the mark applied for have the same purpose as the regulating and safety accessories for the water installations covered by the earlier mark. It should be noted that the applicant expressly excluded from the list of goods in Class 9 covered by the mark applied for devices that provide measuring and supervisory control of ‘boilers’, ‘boiler systems’ and ‘solar installations’.
33      However, it is important to emphasise that, as correctly noted by the Board of Appeal, the goods in Class 9 covered by the mark applied for are largely covered by the more general category of ‘parts and fittings’ for ‘heating elements’ and ‘heating installations’ in Class 11 covered by the earlier mark.
34      It should be borne in mind that, in line with the case-law, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
35      It follows that the Board of Appeal did not err in finding that the goods in Class 9 covered by the mark applied for and the goods in Class 11 covered by the earlier mark were similar.
The goods in Class 11 covered by the mark applied for
36      The Board of Appeal noted that the Opposition Division had found that the goods in Class 11 covered by the mark applied for were identical to the goods in Class 11 covered by the earlier trade mark and that the applicant had expressly accepted that finding. The Board of Appeal also confirmed the Opposition Division’s assessment in finding that the goods in Class 11 covered by the earlier mark, namely ‘ventilation (air-conditioning) installations and apparatus; heating elements, heating installations, heating boilers, heat exchangers (not parts of machines)’ included the goods in Class 11 covered by the mark applied for, which are ‘HVAC systems (heating, ventilation and air conditioning), namely water based heating systems for buildings comprising radiators and underfloor, wall and ceiling heating installations, excluding boilers, boiler systems and solar installations’.
37      The applicant submits that the goods in Class 11 covered by the earlier trade mark do not include the goods in Class 11 covered by the mark applied for, the latter being expressly limited to ‘water based heating systems for buildings’. It follows that the services in Class 11 covered by the mark applied for are, at most, similar to the goods in Class 11 covered by the earlier mark.
38      In that regard, it should be recalled that, under Article 188 of the Rules of Procedure of the General Court, ‘the pleadings lodged by the parties in proceedings before the General Court may not change the subject-matter of the proceedings before the Board of Appeal’.
39      It should be noted that, as is apparent from the file of the proceedings before EUIPO, in its observations before the Opposition Division of 14 August 2015, the applicant conceded that the goods in Class 11 covered by the mark applied for could be regarded as identical to the ‘heating installations’ and similar to the ‘heating elements’, as well as to the ‘heat exchangers (not parts of machines)’ in Class 11 covered by the earlier mark. It should also be recalled that, in its decision of 3 December 2015, the Opposition Division concluded that the goods at issue were identical. It should further be noted that, in its observations before the Board of Appeal on 3 April 2016, the applicant acknowledged the Opposition Division’s finding, so that the question of the similarity between the goods in Class 11 covered by the mark applied for with the goods in Class 11 covered by the earlier mark was not the subject matter of the dispute before the Board of Appeal.
40      It follows that, pursuant to Article 188 of the Rules of Procedure, the line of argument relating to that question is inadmissible.
The goods in Class 37 covered by the mark applied for
41      The Board of Appeal found, as regards the ‘installation, repair and maintenance’ services covered by the mark applied for, that they were complementary to the ‘water based heating systems’ in so far as they related specifically to those goods and ensured their proper functioning. Since ‘water heating systems’ are included in the goods covered by the earlier mark in Class 11, namely ‘heating elements, heating installations, heat exchangers’, the Board of Appeal found that there was a complementarity between those goods and the ‘installation, repair and maintenance’ services covered by the mark applied for. In addition, the Board of Appeal found that, at the time of the sale of the goods in Class 11 covered by the earlier mark to their customers, many producers were offering, inter alia on the basis of warranty provisions linked to purchase contracts, after-sales services, either themselves or through an integrated retailer or one with which they maintain commercial relations, which helped to facilitate the perception by the relevant customer that there were close connections between them and to strengthen the perception that the same undertaking was responsible for their production. The Board of Appeal concluded that the ‘installation, repair and maintenance’ services covered by the mark applied for were ‘similar’ to the goods in Class 11 covered by the earlier mark.
42      As regards the ‘advisory services relating to installation, repair and maintenance’, the Board of Appeal held that there was, at the very least, a certain degree of similarity with the goods in Class 11 covered by the earlier mark, since those services were themselves often part of ‘installation, repair and maintenance’ services.
43      The applicant submits that the services in Class 37 covered by the mark applied for are not ‘similar’ to the goods in Class 11 covered by the earlier mark. In particular, first, the applicant denies that the goods covered by the services in Class 37 covered by the mark applied for are identical to the goods in Class 11 covered by the earlier mark. Secondly, according to the applicant, it is highly uncommon in the market sector at issue that the installation, repair, maintenance and advisory services are provided by the manufacturer of the goods at issue. Thus, as a general rule, those services are not supplied by the manufacturer of the goods, but rather by the retailer or, in most cases, by a third party. Furthermore, the goods covered by the earlier mark and the services covered by the mark applied for are typically not manufactured or offered by the same companies or distributed through the same channels.
44      In that regard, first, it should be observed that the applicant’s argument aimed at disputing the existence of a similarity between ‘water based heating systems’, which are the subject of the services covered by the mark applied for, and the goods in Class 11 covered by the earlier mark amounts to disputing the existence of a similarity between the goods in Class 11 covered by the mark applied for and the goods in Class 11 covered by the earlier mark. As noted at paragraph 40 above, such an argument is inadmissible, pursuant to Article 188 of the Rules of Procedure.
45      Secondly, it should be recalled that the principles applicable to the comparison of the goods also apply to the comparison between the services and between the goods and services. Admittedly, as noted by the applicant, by reason of their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary (judgment of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 66).
46      Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. This implies that complementary goods or services can be used together, which presupposes that they are intended for the same public (judgments of 12 July 2012, Hand Held Products v OHIM — Orange Brand Services (DOLPHIN), T‑361/11, not published, EU:T:2012:377, paragraph 48, and of 26 October 2017, Sulayr Global Service v EUIPO — Sulayr Calidad (sulayr GLOBAL SERVICE), T‑685/15, not published, EU:T:2017:761, paragraphs 33 and 34).
47      The Court has already held that goods and services may be complementary where, for example, the maintenance of the goods complements the goods themselves, or where services may have the same purpose or use as the goods, and thus compete with each other (judgment of 27 October 2005, MOBILIX, T‑336/03, EU:T:2005:379, paragraph 66).
48      In the present case, it should be noted that the goods in Class 11 covered by the earlier mark and the goods in Classes 9 and 11 covered by the mark applied for are aimed at the general public and professionals. Admittedly, the ‘installation, repair and maintenance’ services and the ‘advisory services pertaining to installation, repair and maintenance’ covered by the mark applied for, which are specifically designed for the goods in question, are not addressed to professionals of the sector concerned, the latter being the providers of the services in question. However, it should be noted that such services are directed at the general public, as a result of which they may be used, together with the goods in Classes 9 and 11 covered by the mark applied for and the goods in Class 11 covered by the earlier mark, by a part of the relevant public.
49      Moreover, according to the case-law, since the services in Class 37 covered by the mark applied for expressly refer to the goods included in Classes 9 and 11, also covered by the mark applied for, which are themselves similar to the goods in Class 11 covered by the earlier mark, and ensure their proper functioning, the services in question must be regarded as complementary to those goods (see, to that effect, judgment of 15 October 2014, Skysoft Computersysteme v OHIM — British Sky Broadcasting Group and Sky IP International (SKYSOFT), T‑262/13, not published, EU:T:2014:884, paragraph 24).
50      That finding cannot be called into question by the applicant’s argument that, as a general rule, the goods covered by the earlier mark and the services covered by the mark applied for are not manufactured or provided by the same undertakings or distributed via the same distribution channels. The applicant does not exclude the possibility that, as noted by the Board of Appeal, certain manufacturers of the goods in question may provide, by means of safeguard clauses, services pertaining to the maintenance or repair of those goods. In addition, it must be noted that the goods and services concerned may be provided through the same distribution channels, since companies that install, repair and maintain the goods in Classes 9 and 11 covered by the mark applied for, also sell or distribute, in principle, those very goods (see, to that effect, judgment of 15 June 2017, Fakro v EUIPO — Saint Gobain Cristalería (climaVera), T‑457/15, not published, EU:T:2017:391, paragraph 44).
51      It must therefore be held that the Board of Appeal was correct in finding that the services in Class 37 covered by the mark applied for were similar to the goods in Class 11 covered by the earlier mark.
The comparison of the signs
52      The global assessment of the likelihood of confusion, in relation to the visual, phonetic 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).
53      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). 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).
54      The Board of Appeal held, in paragraphs 64 to 78 of the contested decision, that the word element ‘asymatrix’ as a whole could be considered the most distinctive and dominant element in the earlier mark, although the limited figurative elements could not be ignored. It also took the view, as regards the mark applied for, that it was the word element ‘smatrix’ as a whole which produced an impression on the relevant consumer.
55      The applicant submits that, in accordance with the case-law, the first parts of the earlier mark and the mark applied for must be regarded as distinctive and dominant elements. The same is true of the figurative elements of the earlier mark, namely the red letter ‘x’ and the stylisation of the typeface.
56      In that regard, it should be borne in mind that, where a mark is composed of word and figurative elements, the former are, generally speaking, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 5 October 2011, La Sonrisa de Carmen and Bloom Clothes v OHIM — Heldmann (BLOOMCLOTHES), T‑118/09, not published, EU:T:2011:563, paragraph 34).
57      In the present case, first, as regards the earlier mark, it must be pointed out that, contrary to what the applicant claims, the figurative elements of that mark cannot be regarded as the distinctive and dominant elements. As the Board of Appeal noted, the typeface used is not a particularly stylised form. Moreover, as rightly noted by the Board of Appeal, although the red stroke over the last letter of the word element ‘asymatrix’ contrasts with the grey colouring of the other letters of that word element, that combination is a mere variation of the numerous combinations of colours used in trade and does not in itself present a particularly distinctive character.
58      Furthermore, as regards the applicant’s argument that the initial part of the word element of the earlier mark has a distinctive and dominant character, it should be noted that the applicant does not state precisely to which part of that word element it refers. In so far as that argument may be interpreted as seeking, first, to break down the word element ‘asymatrix’ into two parts, namely ‘asy’ and ‘matrix’ and, second, to claim that the relevant public will perceive the element ‘asy’ as a distinctive and dominant element because it is placed in front of the element ‘matrix’, it must be held that it cannot be upheld. While, according to settled case-law, consumers generally take more note of the beginning of a sign than of its ending (see judgment of 14 December 2017, N & C Franchise v EUIPO — Eschenbach Optik (Ojo sunglasses), T‑792/16, not published, EU:T:2017:908, paragraph 33 and the case-law cited), it must be pointed out that, in the present case, the visual impression left by the word element ‘asy’ is offset by the fact that the first letter of the word element ‘matrix’ is a capital letter and is composed of five letters, while the word element ‘asy’ contains only three letters. It follows that, in the circumstances of the present case, there are no grounds for considering that the word element ‘asy’ will be perceived by the relevant public as a distinctive and dominant element of the earlier mark.
59      It must therefore be concluded that the Board of Appeal did not err in finding that the word element ‘asymatrix’ would be perceived by the relevant public as the distinctive and dominant element of the earlier mark.
60      Secondly, as regards the mark applied for, it must be noted that the applicant merely contends that the initial part of it will be perceived by the relevant public as a distinctive and dominant element, without indicating precisely to which part of the sign in question it refers. In so far as the applicant’s argument may be understood as referring to the letter ‘s’ as the initial part of the word sign SMATRIX, it should be noted, as EUIPO submits, that it is unlikely that the relevant public will perceive a single letter of a word sign as a distinctive and dominant element, simply because it is placed at the beginning of the sign.
61      It follows that the Board of Appeal was correct in holding that, as regards the mark applied for, it is the word element ‘smatrix’ as a whole which produces an impression on the relevant public.
Visual comparison
62      The applicant submits that, from a visual point of view, the initial part of the earlier mark differs substantially from the initial part of the mark applied for. The applicant submits that the signs at issue differ in the first and third letters of the earlier mark, namely the letter ‘a’ and the letter ‘y’, the place of the letter ‘s’ in the signs at issue, as well as by the use of upper-case letters for ‘a’ and ‘m’ in the earlier mark, which shows that the mark is composed of two words. In support of its argument, the applicant relies on the judgment of 11 December 2013, Eckes-Granini v OHIM — Panini (PANINI) (T‑487/12, not published, EU:T:2013:637), in which the General Court held, in similar circumstances, that the beginnings of the signs at issue were substantially different. The applicant adds that the difference between the signs at issue is reinforced by the figurative elements of the earlier mark. According to the applicant, it follows that the visual impression produced by each of the two signs differs substantially.
63      With regard, first of all, to the applicant’s argument that, in accordance with the case-law, particular attention should be paid, at the visual similarity assessment stage, to the differences between initial parts of the conflicting signs, it should be recalled that that consideration cannot be upheld in all cases and cannot, in any event, invalidate the principle according to which the examination of the similarity of the 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 engage in the examination of its various details (judgments of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, not published, paragraph 70, and of 8 September 2010, Quinta do Portal v OHIM — Vallegre (PORTO ALEGRE), T‑369/09, not published, paragraph 29).
64      Next, it is important to note that, as the Board of Appeal held in paragraph 82 of the contested decision, the word element ‘asymatrix’ pertaining to the earlier mark contains the seven letters making up the word element ‘smatrix’ of the mark applied for, six of which are placed in the same order, which is of particular importance in the assessment of the visual similarity between word elements (see, to that effect, judgment of 25 March 2009, Kaul v OHIM — Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 83).
65      Furthermore, unlike the word elements ‘panini’ and ‘granini’ of the signs at issue in the case which gave rise to the judgment of 11 December 2013, PANINI (T‑487/12, not published, EU:T:2013:637), and as the Board of Appeal correctly stated at paragraph 85 of the contested decision, in the present case, the part which is common to both word elements of the signs at issue, namely ‘matrix’, is substantially longer than the initial parts of those signs, and the second letter, ‘s’, of the word element of the earlier mark is identical to the first letter of the mark applied for.
66      Moreover, as regards the applicant’s argument that the first and fourth letters of the word element of the earlier mark are written in upper case, it should be noted, as the Board of Appeal did in paragraph 83 of the contested decision, that that fact is irrelevant for the purposes of the visual comparison of the word elements of the signs at issue in so far as the protection of the word mark covered by the application applies to the word and not to the graphic or stylistic characteristics which that mark might possess (judgment of 22 May 2008, Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, not published, EU:T:2008:165, paragraph 43).
67      Finally, it should be noted that, contrary to what the applicant claims, the figurative elements of the earlier mark, without being completely negligible, are not such as to leave a sufficient impression on the relevant public as to counteract the overall impression of visual similarity created by the word elements of the signs at issue (see, to that effect, judgment of 30 November 2011, SE-Blusen Stenau v OHIM — Sport Eybl & Sports Experts (SE© SPORTS EQUIPMENT), T‑477/10, not published, EU:T:2011:707, paragraphs 46 and 47).
68      It must therefore be concluded that the Board of Appeal was correct in finding that the signs at issue were visually similar.
Phonetic comparison
69      The applicant does not dispute the Board of Appeal’s finding that the word element of the earlier mark is composed of three syllables ‘asy’, ‘ma’ and ‘trix’ and the mark applied for of the two syllables ‘sma’ and ‘trix’. However, the applicant submits that that finding should have led the Board of Appeal to conclude that the signs at issue were phonetically dissimilar or, at most, similar to a very low degree. The applicant argues that, as the General Court held in its judgment of 11 December 2013, PANINI (T‑487/12, not published, EU:T:2013:637), on the phonetic comparison between the word elements ‘panini’ and ‘granini’, the difference in pronunciation of the first syllable of the word elements of the signs at issue is such as to reduce the impression of phonetic similarity between those signs.
70      In that respect, it should be noted that, as the Board of Appeal pointed out in paragraph 89 of the contested decision, it is likely that part of the relevant public, namely the Spanish public, will pronounce the earlier mark ‘asi-ma-trix’, and the mark applied for ‘esmatrix’. Thus, for that part of the relevant public, the pronunciation of the initial part of the signs at issue will be relatively similar and the pronunciation of the rest of the signs at issue will be identical.
71      It must therefore be held that the signs at issue are, at the very least, phonetically similar to an average degree.
Conceptual comparison
72      In paragraphs 91 to 93 of the contested decision, the Board of Appeal held that neither of the signs at issue, considered as a whole, had any meaning. The Board of Appeal thus held that, contrary to the applicant’s submissions, the word element of the earlier mark was not a misspelling of the word ‘asymmetric’ and that the applicant had not adduced any evidence in that regard. The Board of Appeal then held that the signs at issue were conceptually similar for the part of the relevant public which will perceive the element ‘matrix’ as a word, regardless of the exact meaning that it attributes to it.
73      The applicant submits that the earlier mark is an amended version of the word ‘asymmetric’, which refers to the asymmetric design of goods marketed by the intervener under that mark. According to the applicant, the intervener claims that an asymmetric design of goods marketed under the earlier mark makes it possible to optimise pressure and to achieve heat transfers. The applicant notes that, according to the intervener, the asymmetric design is innovative and has big advantages in terms of technology. The applicant states that, contrary to what the Board of Appeal held in paragraph 91 of the contested decision, it produced evidence in support of its argument in its observations of 14 August 2015 before the Opposition Division, in the form of the technical file of the product in question. The technical file submitted by the applicant supports the arguments it put forward in that regard. According to the applicant, the relevant public displaying a high level of attention will undoubtedly associate the earlier mark with the word ‘asymmetric’.
74      EUIPO and the intervener submit that it is clearly apparent from the representation of the sign that it consists of two different word elements, namely the element ‘asy’, which has no meaning, and the element ‘matrix’, which will be understood by a significant part of the public. Consequently, according to EUIPO, that part of the public will concentrate immediately on the meaning of the second word and will not attempt to establish the other possible meaning of the sign by combining both elements. According to the intervener, the Board of Appeal correctly held that the applicant had not produced any evidence capable of proving that the earlier mark would be perceived by the relevant public as an abbreviation of the word ‘asymmetric’. EUIPO adds that nothing in the specification of the goods for which the earlier mark was registered appears to indicate that the word element ‘asymatrix’ would be perceived as a reference to asymmetry.
75      In that regard, it should be recalled that the existence of a conceptual similarity between the marks at issue must be assessed on the basis of the evocative force that may be recognised in each of them taken as a whole (see, to that effect, judgment 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 90).
76      In the present case, it should be noted that the Board of Appeal’s conclusion that the signs at issue are conceptually similar, on the ground that a part of the relevant public will attach particular importance to the common part of their word element ‘matrix’ is expressly based on the premiss that the word elements of the signs at issue, taken as a whole, have no meaning. It should also be noted that, as regards the word element ‘asymatrix’ of the earlier mark, the Board of Appeal found that, contrary to what the applicant submitted, it was not a misspelling of the word ‘asymmetric’ and that the applicant had not adduced any evidence in that respect.
77      In that regard, even if the applicant did not in fact adduce evidence to support the claim that the word element ‘asymatrix’ would be understood by the relevant public as a reference to the word ‘asymmetric’ in its observations of 3 April 2016 before the Board of Appeal, it should be noted that it produced such evidence before the Opposition Division.
78      Thus, it is apparent from the file that, in paragraph 2 of its observations of 14 August 2015 submitted to the Opposition Division, the applicant claimed that the relevant public would associate the intervener’s earlier mark with the word ‘asymmetric’, in particular, because the key characteristic of the intervener’s product is that it is designed with an asymmetric plate. In that regard, it referred to a document from the intervener’s website, describing the product in question. It is also apparent from the file that the applicant produced the document at issue annexed to its observations of 14 August 2015 before the Opposition Division. The first page of the document, taken from the intervener’s website, contains a description of the AsyMatrix technology for BPHE (Brazed Plate Heat Exchangers) in the following terms:
‘AsyMatrix® is SWEP’s innovative asymmetric plate design technology for BPHEs. The asymmetric channel configuration smartly combines maximum heat transfer on the refrigerant side with minimum pressure drop on the secondary side. The increased energy efficiency and better use of the structural material compared with conventional heat exchangers delivers a more sustainable solution in suitable applications.’
79      Contrary to what EUIPO contends, that evidence was relevant, prima facie, as regards the assessment of the way in which the word element of the earlier mark, taken as a whole, would be perceived, on a conceptual level, by the relevant public.
80      It should be recalled that, according to the case-law, it follows from the principle of continuity of functions between the different bodies of EUIPO that, in matters within the scope of Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001), the Board of Appeal is required to base its decision on all the matters of fact and of law contained in the decision contested before it and with regard to those introduced by the party or parties concerned either in the proceedings before the department which heard the application at first instance or, with the exception of submissions which have not been made in due time, in the appeal (see, to that effect, judgment of 7 December 2017, Coca-Cola v EUIPO — Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 115 and the case-law cited).
81      In accordance with the principle of functional continuity, it must be held that the Board of Appeal was obliged to take account of the applicant’s statements concerning the lack of conceptual similarity between the signs at issue, set out in paragraph 2 of its observations of 14 August 2015 submitted to the Opposition Division, as well as the evidence annexed to those observations, to which the applicant expressly referred.
82      The Board of Appeal therefore incorrectly held, in paragraph 91 of the contested decision, that the applicant had not adduced any evidence in support of the assertion that the relevant public would perceive the word element ‘asymatrix’ in the earlier mark as a misspelling of the word ‘asymmetric’. Accordingly, it assessed the question whether the word element ‘asymatrix’ would be perceived as a misspelling of the word ‘asymmetric’ without examining the evidence adduced in that regard by the applicant in its observations of 14 August 2015 submitted to the Opposition Division.
83      That error entails the failure by the Board of Appeal to examine a potentially relevant factor in the overall assessment of the likelihood of confusion between the mark applied for and the earlier mark (see judgment of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 71 and the case-law cited).
84      In those circumstances, the Court does not have all the elements necessary to determine whether the global assessment as to whether there was a likelihood of confusion, as carried out by the Board of Appeal in the contested decision, was well founded (see, to that effect, judgment of 7 February 2012, Representation of elephants in a rectangle, T‑424/10, EU:T:2012:58, paragraph 71 and the case-law cited.
85      It is possible that the assessment of the merits of the arguments and evidence submitted by the applicant during the proceedings before EUIPO regarding the lack of conceptual similarity of the signs at issue could have led the Board of Appeal to adopt a decision with a content different from the contested decision.
86      It should be recalled that the jurisdiction conferred on the General Court by Article 72(3) of Regulation No 2007/1001 does not confer on it the power to substitute itself for the Board of Appeal in undertaking a factual assessment that the Board of Appeal failed to carry out (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 71 and 72).
87      Accordingly, the single plea must be upheld and the contested decision consequently annulled, without there being any need to examine the arguments relating to the global assessment of the likelihood of confusion, in particular so far as concerns the relationship between the different elements derived from the comparison of the signs at issue.
Costs
88      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.
89      Since EUIPO and the intervener have been unsuccessful, EUIPO must first be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter.
90      Moreover, the applicant has applied for the intervener to be ordered to bear its own costs and to pay those incurred by the applicant during the opposition proceedings and before the Board of Appeal. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case in respect of the costs incurred for the purposes of proceedings before the Opposition Division. Accordingly, the applicant’s request that the intervener, having been unsuccessful, be ordered to pay the costs of the administrative proceedings can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal (see, to that effect, judgment of 7 December 2017, Master, T‑61/16, EU:T:2017:877, paragraph 126 and the case-law cited).
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 March 2017 (Case R 236/2016-2);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Uponor Innovation in the proceedings before the General Court;
3.      Orders Swep International AB to bear its own costs and to pay those incurred by Uponor Innovation in the proceedings before the Board of Appeal of EUIPO.
Collins
Kancheva
Passer
Delivered in open court in Luxembourg on 6 June 2018.
E. Coulon
A. M. Collins
Registrar
President
*Language of the case: English.