JUDGMENT OF THE GENERAL COURT (Second Chamber)
30 June 2021 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark ZOOM – Earlier EU figurative and word marks ZOOM – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑204/20,
Zoom KK, established in Tokyo (Japan), represented by M. de Arpe Tejero, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Zajfert, J.F. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Facetec, Inc., established in Las Vegas, Nevada (United States), represented by P. Wilhelm, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 7 February 2020 (Case R 507/2019‑1) relating to opposition proceedings between Zoom KK and Facetec,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin (Rapporteur) and I. Nõmm, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 19 April 2020,
having regard to the response of EUIPO lodged at the Court Registry on 24 July 2020,
having regard to the response of the intervener lodged at the Court Registry on 17 September 2020,
further to the hearing on 19 April 2021,
gives the following
Judgment
Background to the dispute
1        On 16 October 2016, the intervener, Facetec, Inc., filed with the European Union Intellectual Property Office (EUIPO) an application for protection within the European Union of international registration No 1323959 in respect of the word mark ZOOM (‘the contested mark’), 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        The goods covered by the contested mark are in Class 9 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 to the following description: ‘Computer application software for mobile phones, smartphones, portable media players, handheld computers, and tablets, namely, security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification’.
3        The particulars of the international registration, as set out in Article 152(1) of Regulation No 207/2009 (now Article 190(1) of Regulation 2017/1001), were published in the European Union Trade Marks Bulletin
No 239/2016 of 15 December 2016.
4        On 7 April 2017, the applicant, Zoom KK, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the application for protection of the international registration in respect of all the goods referred to in paragraph 2 above.
5        The opposition was based, first, on the earlier EU word mark ZOOM, registered on 22 December 1999 under No 227157, subsequently renewed on 6 April 2016, designating goods in Classes 9 and 15 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Apparatus for reproduction and recording of sounds, namely voice frequency transmitting apparatus, portable communicating apparatus, sound recording apparatus, public address systems, amplifiers; synchronizing and auto locating systems for video tape recorders (VTR), audio tape recorders (ATR) and musical instruments; audio visual teaching apparatus, namely apparatus for developing, printing, enlarging and finishing of photographs, with the exception of such which have the capability of magnifying or enlarging static or moving images; computers and LSI-circuits (large scale integrated-circuit)’;
–        Class 15: ‘Electronic musical instruments’.
6        The opposition was based, second, on the earlier EU figurative mark registered on 28 April 2008 under No 4888749, subsequently renewed on 25 November 2015, and corresponding to the following sign:
7        That mark covers goods in Classes 9 and 15 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Programmed-data-carrying magnetic discs, downloadable computer program; magnetic disks, optical disks, magneto-optical disks, CD ROMs, digital versatile disk- ROMs, magnetic tapes carrying information of images and/or text data of magazines, books, newspapers, maps and photographic images; all the aforesaid goods being intended for use in connection with musical instruments and sound recording apparatus, and not relating to telephony; laboratory apparatus and instruments; measuring or testing machines and instruments; power distribution or control machines and apparatus; rotary converters; phase; batteries and cells; electric or magnetic meters and testers; electric wire and cables; photographic machines and apparatus; cinematographic machines and apparatus; optical apparatus and instruments; spectacles (eyeglasses and goggles); life saving apparatus and equipment; encoded magnetic cards, magnetic sheets, tapes, magnetic compact discs, [records]; metronomes; electronic circuits and CD-ROMs recorded automatic performance programs for electronic musical instruments; mouse pads for electronic computers; magnetic tapes; electronic machines and apparatus, namely multi-track recorders, hard disc recorders, rhythm machines, drum machines; and sound processors, effect processors, and their parts; electronic publications; ozonisers (ozonators); electrolysers (electrolytic cells); programmed-data carrying electronic circuits, magnetic tapes for computers for video game apparatus for commercial use; sports training simulators; vehicle drive training simulators; electric flat irons; electric hair curlers; electric buzzers; vehicle breakdown warning triangles; luminous or mechanical road signs; fire boats; fire alarms; gas alarms; anti-theft warning apparatus; gloves for protection against accident; fire extinguishers; fire hydrants; fire hose nozzles; sprinkler systems for fire; fire engines; cigar lighters for automobiles; protective helmets; fireproof garments; dust masks; gas masks; welding masks; magnetic cores; resistance wires; electrodes; exposed cinematographic firms; exposed slide films; slide film mounts; receded video discs and video tans; vending machines; coin-operated gates for car parking facilities; cash registers; coin counting or sorting machines; photocopying machines; manually operated computing apparatus; weight belts (for scuba diving); wetsuits (for scuba diving); inflatable swimming floats; protective helmets for sports; air tanks (for scuba diving); swimming flutter boards; regulators (for scuba diving); diving machines and apparatus (not for sports); electric arc welding machines; electric welding apparatus; programmed-data-carrying electronic circuits, magnetic disks, optical disks, magneto-optical disks, CD-ROMS, digital versatile disk-ROMs, magnetic tapes for computers for video game apparatus for personal use; memory cards for personal use; consumer video games; electronic circuits and CD-ROMs recorded programs for hand-held [cameras] with liquid crystal displays; electric door openers; magnets; permanent magnets; railway signals; marker buoys; cigar lighters for motorcycles; ear plugs’;
–        Class 15: ‘Turning apparatus for music instruments; musical instruments; musical performance auxiliaries, namely, multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic-effects pedals, guitar effect processors, tuning forks’.
8        The grounds initially relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001), before the applicant, by a letter to EUIPO on 17 April 2017, declared that it was waiving the right to rely on Article 8(5) of Regulation No 207/2009.
9        On 13 February 2019 the Opposition Division rejected the opposition. Following the examination of the evidence submitted by the applicant in order to show genuine use of the earlier marks relied on in support of the opposition, the Opposition Division found, first, that the earlier EU figurative mark ZOOM had been used for the goods ‘portable recorders; magnetic compact discs, [records]; rhythm machines, drum machines; and sound processors, effect processors and their parts’ in Class 9 and for the goods ‘multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic effects pedals, guitar effect processors’ in Class 15 and, second, that the earlier EU word mark ZOOM had been used in respect of the goods ‘portable recorders’ in Class 9. The Opposition Division took the view that, in the light of the abovementioned goods, for which the earlier marks were validly registered, the opposition had to be rejected in its entirety on the ground that the condition relating to the similarity of those goods and the goods covered by the contested mark was not satisfied.
10      On 27 February 2019 the applicant filed a notice of appeal with EUIPO under Articles 66 to 71 of Regulation 2017/1001 against the decision of the Opposition Division.
11      By decision of 7 February 2020 (‘the contested decision’), the First Board of Appeal of the EUIPO dismissed the appeal. First of all, it found that, in addition to the goods in respect of which the Opposition Division had accepted evidence of genuine use of the earlier figurative mark ZOOM, the view had to be taken that such evidence had also been adduced in respect of ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ in Class 9, for the relevant five-year period from 16 October 2011 to 15 October 2016. The Board of Appeal therefore focused its assessment of the likelihood of confusion on the comparison of the contested mark with the earlier figurative mark ZOOM, taking into account those latter goods.
12      Next, as regards the comparison of the signs at issue, the Board of Appeal found that the contested mark and the earlier figurative mark ZOOM were practically identical.
13      Furthermore, with regard to the comparison of the goods covered, on the one hand, by the contested mark and, on the other, by the earlier figurative mark ZOOM, for which proof of genuine use had been adduced, and, more specifically, ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ in Class 9, the Board of Appeal found that, while they share the fact that they consist of software, they were intended for different purposes, the former being intended to identify a person who accesses a mobile device such as a smartphone, while the latter were intended to edit and alter sounds while recording. According to the Board of Appeal, the use of identical distribution channels, in this case online application stores, is not a relevant decisive factor. The Board of Appeal concluded that the goods in question have only a low degree of similarity, the difference in their intended uses outweighing the similarity in their nature.
14      Lastly, the Board of Appeal confirmed the absence of a likelihood of confusion by holding that, even if account were to be taken of the use of the earlier figurative mark ZOOM to designate ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, the near-identity of both the marks at issue and the nature of the goods that they cover was offset by the factors relating, first, to the complete dissimilarity as regards the functions of those goods, second, to the high level of attention of the public respectively targeted by the goods at issue, and, third, to the lower than average degree of distinctiveness of the earlier figurative mark ZOOM, which, as the intervener argued, and which argument was not refuted by the applicant, was not very distinctive for sound-related goods because of the meaning of the word ‘zoom’, which refers to making a humming or buzzing sound.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
16      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
17      It must be noted, at the outset, that, in view of the date on which the application for protection in the European Union of the international registration of the contested mark was filed, namely 16 October 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.
18      Consequently, in the present case, so far as concerns the substantive rules, the references to Article 8(1)(b) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties to the proceedings must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
Documents presented for the first time before the Court
19      EUIPO claims that Annexes A.3 to A.14 to the application are inadmissible. It submits that those annexes contain documents which are submitted for the first time before the Court and that they do not fall within the exceptions to the principle that documents submitted for the first time before the Court are inadmissible, in that they do not prove a clear distortion of the facts, do not support or contest the accuracy of a well-known fact relevant to the contested decision, and do not constitute judicial decisions or decisions of EUIPO that have a purely illustrative purpose.
20      It must be noted, as EUIPO maintains, that Annexes A.3 to A.14 to the application are being produced for the first time before the Court. Some of the annexes consist of various images from websites illustrating the wide range of software offered by certain developers (Annexes A.7 to A.13 to the application). The other annexes include articles setting out statistics on downloads and use of applications for mobile phones and tablets, articles relating to the search for applications in a virtual store (Annexes A.8 to A.10), and statistical data from that virtual store relating to search methods enabling consumers to identify the applicant’s two applications, together with explanatory notes relating thereto (Annexes A.11 to A.14).
21      Those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of the action before the Court is, in the present case, to review the legality of the contested decision within the meaning of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it. The abovementioned documents must therefore be disregarded, and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
Substance
22      In support of the action, the applicant relies on a single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009.
23      That plea is divided into two parts.
24      By the first part, the applicant submits, in essence, that, even on the basis of the incorrect findings made by the Board of Appeal, in particular those relating to the similarity of the marks at issue and of the goods which they cover, the Board of Appeal should have concluded that there was a likelihood of confusion between the marks at issue. By the second part, the applicant submits that the Board of Appeal erred in its examination of the facts and arguments relating to the application of Article 8(1)(b) of Regulation No 207/2009, in particular as regards the comparison of the marks at issue and of the goods covered by them, and as regards the distinctive character of the earlier marks, which led to an incorrect global assessment of the likelihood of confusion.
25      EUIPO and the intervener dispute the applicant’s arguments.
26      The Court considers it appropriate to deal with both parts of the single plea together on account of the links between them.
27      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the contested mark may 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 two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
28      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of 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).
29      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).
30      As a preliminary point, it should be noted, as the applicant submits, that, in the contested decision, the Board of Appeal did not expressly examine the likelihood of confusion between the earlier word mark ZOOM and the contested mark. Furthermore, with regard to the goods covered by the earlier marks and in respect of which genuine use was found to have been shown, the Board of Appeal limited its comparison to only ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ in Class 9 and covered by the earlier figurative mark ZOOM.
31      However, as mentioned in paragraph 9 above, when the Opposition Division compared the goods covered by the contested mark and the goods in respect of which it found that genuine use of the earlier marks had been shown, it did not include among the latter ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ in Class 9 and covered by the earlier figurative mark ZOOM (see paragraphs 9 and 14 above).
32      It should be noted that, first, it is apparent from paragraphs 7 and 13 of the contested decision that the applicant essentially based its appeal before the Board of Appeal on the fact that the Opposition Division should also have recognised the use of the earlier figurative mark ZOOM in relation to ‘downloadable computer programs’ in Class 9 and that, in so far as the goods covered by the contested mark were highly similar to those goods, it should have been found that there was a likelihood of confusion. Moreover, in the light of their nature, the latter goods are, according to the applicant, those most likely to present a degree of similarity with the goods covered by the contested mark, which could lead to a finding of a likelihood of confusion.
33      Second, as is apparent from paragraph 66 of the contested decision, the Board of Appeal, in essence, endorsed the grounds set out in the Opposition Division’s decision, in particular as regards the comparison between the goods in respect of which the Opposition Division had found that genuine use of the earlier marks had been shown and the goods covered by the contested mark, in order to focus, next, on the comparison between the latter goods and ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, covered by the earlier figurative mark ZOOM.
34      In those circumstances, taking into account the functional continuity between the Opposition Divisions and the Boards of Appeal, as reflected in Article 71(1) of Regulation 2017/1001 (see, to that effect, judgments of 13 March 2007, OHIM v
Kaul, C‑29/05 P, EU:C:2007:162, paragraph 30, and of 10 July 2006, La Baronia de Turis v OHIM – Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraphs 57 and 58), the decision of the Opposition Division and the grounds on which it is based form part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise its review of legality in full as regards the validity of the assessment of the likelihood of confusion (see, to that effect, judgment of 28 September 2016, Kozmetika Afrodita v EUIPO – Núñez Martín and Machado Montesinos (KOZMeTIKA AFRODITA), T‑574/15, not published, EU:T:2016:574, paragraph 66). Consequently, in the context of the assessment of the likelihood of confusion, account must be taken of, in addition to the grounds of the contested decision, those of the Opposition Division’s decision.
The relevant public
35      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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).
36      The Board of Appeal found, in paragraph 61 of the contested decision, that the relevant public targeted by the goods at issue consisted of consumers needing to identify themselves prior to accessing a mobile device and of consumers interested in processing sounds when recording audio files.
37      In paragraph 62 of the contested decision, the Board of Appeal found that the level of attention and discernment of those consumers could be considered high. In that connection, as regards the contested mark, that high level of attention, even with regard to the general public, is due to the fact that it is linked to security. As regards the earlier marks, the processing of sounds when recording audio files is a rather specialised and technical activity which is of interest for professionals and a relatively small number of amateurs.
38      Those findings, which, moreover, are not disputed by the parties, appear to be correct in the light of the evidence in the case file.
39      Even though the Board of Appeal confined its analysis to ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, as covered by the earlier figurative mark ZOOM, it must be held that all the goods covered by the earlier marks for which genuine use has been shown demonstrably come within the same category in that they all relate to the processing and recording of sounds. Consequently, in the light of the evidence in the case file, it must be held that those goods are aimed at the same type of consumers, namely professionals and a small number of amateurs whose level of attention when purchasing those goods must be regarded as high.
The comparison of the goods covered by the marks at issue
40      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods 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).
41      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. By definition, goods intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
42      The Opposition Division found, with regard to the goods covered by the earlier marks in respect of which it considered that genuine use of those marks had been shown (see paragraph 9 above), that they were not similar to the goods covered by the contested mark because they had a different purpose and use, served different needs and were neither complementary nor in competition.
43      As regards the ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ covered by the earlier figurative mark ZOOM, the Board of Appeal found that their intended purpose was different from that of the goods covered by the contested mark, in so far as those goods satisfied different needs and were not complementary, as the only similarity between them lay in their nature, namely that they consist of software. However, since the consumer attaches primary importance to the intended purpose of software, the difference in intended purpose outweighs the similarity in nature.
44      As regards, first, the goods referred to in paragraph 9 above in respect of which the Opposition Division found that genuine use of the earlier marks had been shown, the applicant submits that, although they differ from the goods covered by the contested mark, mainly in their respective concrete intended purposes and functioning principles, they rely on the same technology and need software in order to function. Consequently, given that software is often necessary both for the functioning of the goods covered by the earlier marks and for that of the goods covered by the contested mark, there is a certain degree of complementarity between those goods. In addition, the applicant submits that they may come from the same undertaking, be provided through the same distribution channels and target the same consumers. According to the applicant, the goods at issue therefore have the same intended purpose and have a close complementary connection, so that consumers may think that the same undertaking is responsible for producing them, with the result that they are similar to, at least, an average degree.
45      Second, as regards ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, covered by the earlier figurative mark ZOOM, the applicant submits that the Board of Appeal’s presumption that the function of the software must be regarded as the main criterion of similarity with the goods covered by the contested mark is not accurate. It is, it submits, common in the software sector for developers to supply software or applications to meet different needs, which could lead consumers to believe that software comes from the same undertaking, regardless of the function of such software. The applicant also submits that the fact that the software covered by the contested mark is sold through the same distribution channels as the goods covered by the earlier figurative mark ZOOM plays an important role in the assessment of the similarity between those goods, in so far as that software is in competition to attract the user’s attention and the trend in the market is to use the name of the software, and not its function, to find the desired software. According to the applicant, the goods in question are therefore similar to an average degree.
46      EUIPO and the intervener dispute the applicant’s arguments.
47      In the present case, as regards the earlier word mark ZOOM, the applicant claims, in paragraph 52 of the application, that proof of genuine use has also been adduced in respect of goods other than ‘portable recorders’. However, there is no evidence in the case file to corroborate that assertion, with the result that only those latter goods should be taken into consideration with regard to that mark.
48      The comparison must therefore be made by taking into consideration, on the one hand, all of the goods covered by the contested mark and, on the other, the goods in respect of which proof of genuine use of the earlier marks must be regarded as having been shown, namely, first, as regards the earlier word mark ZOOM, ‘portable recorders’ in Class 9 and, second, as regards the earlier figurative mark ZOOM, ‘portable recorders; magnetic compact discs, [records]; rhythm machines, drum machines; and sound processors and effect processors and their parts’, ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, in Class 9, and ‘multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic effects pedals, guitar effect processors’ in Class 15.
49      As regards, first, the comparison between ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, covered by the earlier figurative mark ZOOM, and the goods covered by the contested mark, it should be noted that the parties do not dispute that all of the goods at issue coincide in their nature as software although they have different intended purposes. Although software is involved in both cases, the intended purpose of the goods covered by the earlier figurative mark ZOOM is to edit and alter sounds while recording, whereas the intended purpose of the goods covered by the contested mark is to enable users to secure and access mobile devices through multidimensional facial recognition identification.
50      The Board of Appeal acted correctly in finding that, as regards those goods, it was necessary to compare the function of software and programs in order to determine whether they were similar.
51      As the applicant states, in essence, in paragraph 28 of the application, software consists of programs which control the operation of a machine, especially a computer, and enable it to perform a desired sequence of operations. It follows that a program must be understood in relation to the operations which it carries out and therefore in relation to its function. Thus, the consumer will be guided primarily by the specific function of the product rather than by its nature.
52      Moreover, in today’s high-tech society, almost no electronic or digital equipment functions without the use of computers in one form or another, with the result that there is a multitude of software or programs with radically different functions. To acknowledge similarity in all cases in which competing rights cover computer programs or software would clearly exceed the scope of the protection granted by the legislature to the proprietor of a trade mark. Such a position would lead to a situation in which the registration of an EU trade mark designating software or programs would in practice exclude subsequent registration of any other competing right designating such software or programs (see, by analogy, judgment of 27 October 2005, Éditions Albert René v OHIM – Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 69).
53      It follows from the foregoing that, in the circumstances of the present case, in order effectively to assess the degree of similarity between the programs and software at issue, the function criterion, and therefore the criterion of intended use, assumes overriding importance among the relevant factors to be taken into account.
54      In that regard, it should be noted that each of the descriptions of the goods at issue refers to specific and distinct intended purposes.
55      First, as the Board of Appeal noted in paragraph 15 of the contested decision, ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, covered by the earlier figurative mark ZOOM, are not defined solely as ‘downloadable computer programs’, but their intended purpose forms part of their specification, with the result that it must be taken into account when examining the use of the mark.
56      Second, as is stated in paragraph 40of the contested decision, the description of the goods covered by the contested mark is accompanied by the adverb ‘namely’, which precedes the specification of the software concerned. That specification does not refer to ‘all types of software’ but solely to ‘security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification’.
57      It must therefore be held that, in so far as the intended purpose of the goods at issue is specified with a certain degree of precision, it helps to differentiate them beyond their common nature as software.
58      Furthermore, since the software and programs at issue have different intended purposes, in so far as the use of one is not necessary or important for the use of the other, with the result that consumers do not attribute responsibility for the manufacture of those goods to the same undertaking, they are not complementary within the meaning of the case-law cited in paragraph 41 above.
59      The applicant’s assertion that the criterion of intended purpose is inappropriate for comparing the goods at issue, in so far as it is common for an undertaking to offer different types of software, prompting consumers to believe that software comes from the same undertaking irrespective of its function, is not capable of calling those findings into question. First, the criterion of intended purpose is important for the purposes of comparing those goods (see paragraphs 52 and 53 above) and, second, although it is indeed true that an undertaking may offer different types of software, that fact alone is not sufficient for consumers to assume that all such software comes from the same undertaking, given the multitude of software on the market.
60      Similarly, it is true that the fact that the goods at issue are made available through the same distribution channels is a factor to be taken into account. However, it cannot be concluded in this case that the goods at issue are similar, since a multitude of software or programs with radically different functions can be found in the same stores, whether physical or virtual, without consumers automatically believing that they have the same origin (see, by analogy, judgment of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 83).
61      The applicant’s argument that the market trend, when searching for an application, is to search by name does not contradict the Board of Appeal’s finding, as set out in paragraph 56 of the contested decision, that people generally identify the desired function and then launch a search for all the applications available on the market that perform that function, before eventually selecting the desired application. Even if, as the applicant maintains, all consumers tend to search online stores for the desired application by name, that does not mean that the search for that application has not been determined in advance by the desired function, with the result that, even if a consumer searches for the desired application by name, his or her search in the list of results will ultimately be guided by the desired function.
62      It follows from all of the foregoing, and as the Board of Appeal correctly found in paragraph 57 of the contested decision, that the goods at issue have only a low degree of similarity.
63      As regards, second, the comparison between the other goods covered by the earlier marks as referred to in paragraph 9 above, in respect of which the Opposition Division found that genuine use of those marks had been shown, and the goods covered by the contested mark, it must be stated that the goods at issue do not have the same nature, the same intended purpose or the same use.
64      The applicant’s line of argument that the goods covered by the earlier marks are largely based on the use of the same technology as computer hardware and therefore require software to function, which makes them at least moderately similar to the goods covered by the contested mark, cannot undermine that finding. The mere fact that a particular product is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different (judgment of 27 October 2005, MOBILIX, T‑336/03, EU:T:2005:379, paragraph 61).
65      That is the case here, since the goods covered by the contested mark are intended solely to secure access to mobile devices through multi-dimensional facial recognition identification, whereas the goods in question covered by the earlier marks are devices for recording, transmitting or playing music or videos. They are therefore not aimed at the same consumers and are not complementary within the meaning of the case-law, with the result that it must be held that they are not similar.
The comparison of the signs at issue
66      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 those 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 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).
67      The Board of Appeal found that the contested mark and the earlier figurative mark ZOOM were practically identical and that the only difference lay in the fact that, in the latter, the term ‘zoom’ appeared in a stylised form, whereas it was written in block-type letters in the contested mark.
68      The applicant submits that, contrary to what the Board of Appeal stated in paragraph 37 of the contested decision, there is a full identity between the earlier word mark ZOOM and the contested mark in that they both consist of the word ‘zoom’.
69      EUIPO claims that there is a high degree of similarity between the signs at issue.
70      In the present case, it should be noted that both the earlier word mark ZOOM and the contested mark are composed of the single word ‘zoom’, with the result that those marks are identical. Similarly, in so far as that word also constitutes the single word element of which the earlier figurative mark ZOOM consists, albeit in a stylised form, that mark and the contested mark are practically identical and therefore display a high degree of similarity.
71      Contrary to what the applicant claims, those findings are not contradicted by the finding in paragraph 37 of the contested decision, from which it is apparent that the Board of Appeal referred only to the earlier figurative mark ZOOM, but did not rule on the earlier word mark ZOOM. Although the Board of Appeal found that the contested mark and the earlier figurative mark ZOOM were practically identical, a fact which the applicant does not dispute, it cannot, a fortiori, be disputed that the earlier word mark ZOOM and the contested mark are identical.
The global assessment of the likelihood of confusion
72      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, 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).
73      The distinctive character of the earlier mark is another relevant factor which needs to be considered in the context of the global assessment of the likelihood of confusion. However, the distinctive character of the earlier mark is only one factor among others involved in the assessment of the likelihood of confusion. Consequently, even in a case involving an earlier mark with a 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, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
74      It is also apparent from the case-law that in circumstances where there is only a low degree of similarity between the goods at issue and where, in accordance with the case-law cited in paragraph 73 above, it is necessary to ascertain whether that low degree of similarity may be offset by a high degree of similarity between the signs at issue, the question of whether the earlier mark is distinctive is particularly relevant (see, to that effect, judgment of 23 September 2020, Veronese Design Company v EUIPO – Veronese (VERONESE), T‑608/19, not published, EU:T:2020:423, paragraph 85 and the case-law cited).
75      The Opposition Division found that the likelihood of confusion between the marks at issue had to be ruled out in so far as the goods covered by those marks and taken into consideration for the purposes of assessing that likelihood of confusion were clearly different. Even if the earlier marks had been found to have a high degree of distinctiveness, that finding would not have been called into question.
76      The Board of Appeal found, with regard to the distinctive character of the earlier figurative mark ZOOM, that its distinctive character could be considered to be lower than average, in so far as the word ‘zoom’ could, among its meanings in English, refer to the making of a humming or buzzing sound, which had some connection with the goods at issue, which are related to sound. Furthermore, it noted, with regard to the ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ covered by the earlier figurative mark ZOOM and to the goods covered by the contested mark, that the near-identity of the marks at issue and of the nature of the goods covered was offset by the different functions of those goods, the high level of attention of the public respectively targeted by the goods at issue and the lower than average degree of distinctiveness of the earlier figurative mark.
77      The applicant submits, in essence, that the Board of Appeal misapplied the principle of the interdependence of factors taken into consideration, according to which a low degree of similarity between those goods or services designated may be offset by a high degree of similarity between the marks, and vice versa.
78      EUIPO and the intervener dispute the applicant’s arguments.
79      In the present case, it must be borne in mind that, with the exception of ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’, covered by the earlier figurative mark ZOOM, there is no similarity between the goods covered by the earlier marks and the goods covered by the contested mark (see paragraph 65 above).
80      Thus, in so far as the existence of 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, it must be held that the finding that there is no likelihood of confusion must in any event be upheld with regard to the goods referred to in paragraph 9 above.
81      By contrast, as regards the ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ in Class 9 covered by the earlier figurative mark ZOOM, which are similar to a certain degree to the goods covered by the contested mark, the existence of a likelihood of confusion cannot be discounted from the outset, with the result that a global assessment of that likelihood must be carried out in respect of them in the light of all the relevant factors.
82      First, as regards the factor relating to the similarity of the signs at issue, it should be noted that that factor is liable to play an important role in so far as those signs consist of the same word, namely ‘zoom’. The earlier figurative mark ZOOM and the contested mark are almost identical, the only difference arising from the stylised appearance of the earlier figurative mark ZOOM, as stated in paragraph 70 above.
83      Second, as regards the distinctive character of the earlier figurative mark ZOOM, it should be recalled that, in the assessment of the distinctive character of a mark or of an element making up a mark, account should be taken, in particular, of the inherent characteristics of the mark or of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 3 April 2019, NSC Holding v EUIPO – Ibercondor (CONDOR SERVICE, NSC), T‑468/18, not published, EU:T:2019:214, paragraph 42 and the case-law cited).
84      In the present case, although, as the Board of Appeal found in paragraph 63 of the contested decision, there is no evidence to demonstrate that the earlier figurative mark ZOOM had acquired enhanced distinctiveness through use during the relevant period, that mark is, by contrast, capable of having a conceptual link with sound-related goods, such as those covered by it. As the intervener has argued, without being contradicted by the applicant, the word ‘zoom’ in English may mean to ‘make a humming or buzzing sound’. In those circumstances, it is true that, for part of the relevant public, the earlier figurative mark ZOOM is not devoid of any descriptive character with regard to the goods for which it was registered.
85      In that regard, it should be recalled that, where the protection of the earlier trade mark extends to the whole 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. Thus, 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 (judgment of 1 July 2014, Jyoti Ceramic Industries v OHIM – DeguDent (ZIECON), T‑239/12, not published, EU:T:2014:592, paragraph 60).
86      Since the English-speaking public constitutes part of the relevant public in the territory of the European Union, it is necessary to reject the applicant’s argument that the meaning of the word ‘zoom’, in so far as it will be perceived solely by the English-speaking public, is irrelevant for the purposes of establishing a conceptual link between the word ‘zoom’ and sound-related goods.
87      It follows that, in the light of the meaning in English of the word ‘zoom’ with regard to sound-related goods, it must be held that the Board of Appeal did not commit an error of assessment in finding that the distinctive character of the earlier figurative mark ZOOM could be considered, in the present case, to be lower than average.
88      Third, it is necessary to take into consideration the factor relating to the fact that the goods at issue consist, for the contested mark, of software and, for the earlier figurative mark ZOOM, of computer programs. In that respect, it should be recalled that, for the goods at issue, the relevant public will demonstrate a high degree of attention.
89      It could be concluded that there is a likelihood of confusion only if the relevant public was likely to be misled as to the commercial origin of the goods at issue.
90      In the present case, however, that likelihood of confusion does not appear to have been demonstrated. When faced with the goods covered by the contested mark, consumers comprising the relevant public will not establish a link between that mark and the earlier figurative mark ZOOM since, first, they will display a high degree of attention when purchasing those goods, second, the functions of the goods covered by each of those marks, which are decisive for the consumer, are different, as is apparent, in particular, from the specification of their intended purpose, and, third, the degree of distinctiveness of the earlier figurative mark ZOOM can be regarded as lower than average.
91      In the light of all of the foregoing considerations, it must be held, first, that the Board of Appeal did not err in the assessment of the criteria on which it relied in carrying out the global assessment of the likelihood of confusion and, second, that it was entitled, without erring, to conclude in the present case that there was no likelihood of confusion between the marks at issue. The two parts of the single plea in law must therefore be rejected and, consequently, that plea must be rejected and the action dismissed in its entirety.
Costs
92      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.
93      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Zoom KK to pay the costs.
Tomljenović
Schalin
Nõmm
Delivered in open court in Luxembourg on 30 June 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.