JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
20 July 2016 (*)
(EU trade mark — Invalidity proceedings — International registration designating the European Union — Figurative mark e@sy Credit — Earlier national figurative mark EasyCredit — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)
In Case T‑745/14,
TeamBank AG Nürnberg, established in Nuremberg (Germany), represented by H. Lindner, D. Terheggen, T. Kiphuth, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by P. Geroulakos, and subsequently by D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO and intervener before the General Court, being
Easy Asset Management AD, established in Sofia (Bulgaria), represented by M. Georgieva-Tabakova and H. Raychev, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 5 September 2014 (Case R 1975/2013-1), relating to invalidity proceedings between Easy Asset Management AD and TeamBank AG Nürnberg,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,
Registrar: M. Marescaux, Administrator,
having regard to the application lodged at the Court Registry on 5 November 2014,
having regard to the response of EUIPO lodged at the Court Registry on 24 March 2015,
having regard to the response of the intervener lodged at the Court Registry on 16 March 2015,
having regard to the reply lodged at the Court Registry on 15 June 2015,
having regard to the intervener’s rejoinder lodged at the Court Registry on 19 August 2015,
further to the hearing on 27 April 2016,
gives the following
Judgment
Background to the dispute
1        On 11 June 2009, the applicant, TeamBank AG Nürnberg, notified 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), of international registration No 811527 of the figurative mark e@sy Credit, reproduced below, designating the European Union:
2        The application was published in Community Trade Marks Bulletin No 23/2009 of 22 June 2009 and protection of the international registration was granted on 11 May 2012.
3        The goods and services covered by the international registration are in Classes 16, 36 and 38 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 the services in question in the present case, to the following description:
–        Class 36: ‘Financial affairs; monetary affairs; insurance; real estate affairs’;
–        Class 38: ‘Providing and transmission of data, information, news, music and images for access via computer and telecommunication networks’.
4        On 24 July 2012, the intervener, Easy Asset Management AD, filed an application for a declaration of invalidity in respect of the international registration, based, inter alia, on the existence of relative grounds for invalidity, pursuant to Article 158 of Regulation No 207/2009, read in conjunction with Article 53(1)(a) and Article 8(1)(b) of that regulation.
5        The application for a declaration of invalidity was based on the earlier Bulgarian figurative mark EasyCredit, reproduced below, registered on 28 May 2008 under number 65233 for the services in, inter alia, Classes 36 and 38 and corresponding, for each of those classes, to the following description:
–        Class 36: ‘Insurance services; financial services; monetary affairs; real estate affairs’;
–        Class 38: ‘Telecommunication services’.
6        On 30 April 2013, the Cancellation Division rejected the application for a declaration of invalidity and ordered the intervener to pay the costs of the proceedings. It found, in essence, that the marks at issue coincided only in their respective word elements, which are manifestly descriptive of all activity linked to the world of finance, while their figurative elements, in which the distinctive character resides, were unrelated. The Cancellation Division concluded that there was no likelihood of confusion between the marks at issue.
7        On 8 October 2013, the intervener filed a notice of appeal, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
8        By decision of 5 September 2014 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal in part for the services referred to in paragraph 3 above, and rejected it for the goods in Class 16. It found, essentially, that, for the services in Classes 36 and 38 which are identical, there was a likelihood of confusion due to the strong similarity of the signs. In particular, the Board of Appeal noted that the relevant public would focus its attention on the word elements which dominate the two signs at issue, and that neither of those signs was sufficiently stylised to change the overall visual impression. It considered, inter alia, that the earlier mark had to be recognised as having at least a certain level of distinctiveness.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      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.
12      In support of its single plea in law, the applicant submits that the Board of Appeal was wrong in finding that there was a likelihood of confusion between the marks at issue. It submits, essentially, that the word elements of the marks are descriptive and cannot be a distinctive component of those marks. Therefore, according to the applicant, those elements do not form part of the overall impression given by the marks. By contrast, the applicant maintains that the figurative elements, which are different for each of the marks at issue, are of great importance.
13      EUIPO and the intervener dispute the applicant’s arguments.
14      According to Article 158(2) of Regulation No 207/2009, the application for invalidation of the effects of an international registration designating the European Union are to take the place of an application for a declaration of revocation as provided for in Article 51, or for a declaration of invalidity as provided for in Article 52 or Article 53 of that regulation.
15      Under Article 53(1)(a) of Regulation No 207/2009, a European Union trade mark is to be declared invalid, on application to EUIPO or on the basis of a counterclaim in infringement proceedings, where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in Article 8(1) or (4) are fulfilled.
16      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, earlier trade marks means trade marks registered in a Member State with a date of application for registration earlier than the date of application for registration of the European Union trade mark.
17      According to settled case-law, the likelihood that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. 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 the 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 in 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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
19      According to the case-law, in the context of the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
20      With regard to the relevant public, the Board of Appeal was correct in considering, in paragraph 17 of the contested decision, that it is made up of the general public and professionals. Given that the services in question are financial services that may have important financial consequences for their users, the level of attention of the latter will be above average. Since the earlier mark is a Bulgarian mark, Bulgaria is the territory to be taken into consideration in order to determine whether there is a likelihood of confusion.
The comparison of the services
21      In the present case, the Board of Appeal considered, in paragraph 22 of the contested decision, that the services covered by the marks at issue in Class 36 were identical. According to the Board of Appeal, the ‘telecommunication services’ covered by the earlier mark in Class 38 form a wider category than the services covered by the contested mark in Class 38. Therefore, the Board of Appeal found that those services also were identical.
22      Those findings, which, moreover, are not contested by the parties, are not vitiated by any error and must be confirmed.
The comparison of the signs
23      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, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
24      In the present case, the Board of Appeal found, in paragraph 28 of the contested decision, that the signs at issue were visually and phonetically highly similar, and conceptually identical, given that they coincide in their word elements and that neither of the two signs is sufficiently stylised for the public to have a different overall visual impression. Due to the lower importance of the graphic stylisation of the signs, the Board of Appeal considered that the word elements were dominant components.
25      The applicant disputes the findings of the Board of Appeal by submitting that the word elements are descriptive and not distinctive and, therefore, must not be taken into consideration. According to the applicant, the signs at issue are to be compared on the basis of the figurative elements, which, for their part, are different.
26      First, with regard to the visual similarity of the signs at issue, it must be noted that the contested sign is made up of the word element ‘e@sy credit’, written in a font that is slightly stylised, in which the letter ‘a’ of the English word ‘easy’ is replaced with the symbol ‘@’ in inverted colours. In that regard, it must be borne in mind that the symbol ‘@’ will easily be understood by the consumer as replacing the letter ‘a’. The fact that the colours of the symbol are inverted has no particular consequence since the symbol will still be read as the letter ‘a’ (judgment of 19 September 2012 in TeamBank v OHIM — Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 31).
27      As for the sign forming the earlier mark, it is made up of the word element ‘easy credit’ written in a slightly stylised font. The word ‘easy’ is written in red, while the word ‘credit’ is written in black. The sign also contains two curved, geometric elements in grey and in red.
28      As the Board of Appeal observed, there is a strong visual similarity between the signs at issue. They coincide in their word elements, and the figurative elements in the earlier marks are of lower importance due to their size, position and purely decorative shape. The contested sign does not contain any free-standing figurative element other than the word element. In addition, despite the figurative nature of the signs at issue, the fonts used for the word elements of those signs are very common and do not make it possible to detect any particular difference between them.
29      In that regard, the Court rejects the applicant’s argument that, due to a lack of distinctiveness, the word elements must be disregarded when comparing the signs at issue.
30      As is clear from settled case-law, the assessment of the similarity between two marks means more than taking into consideration 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 at issue 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, by analogy, judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only where all the other components of the mark are negligible that the assessment of the similarity may be carried out solely on the basis of the dominant element (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42; see also, by analogy, judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). This could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their mind, such that all the other components of the mark are negligible in the overall impression which it creates (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
31      Given their respective size and position in the marks at issue, the word elements cannot be regarded as negligible.
32      It follows that the Board of Appeal was correct in finding that there is a strong visual similarity between the signs at issue as a whole.
33      Secondly, with regard to the phonetic similarity of the signs at issue, as EUIPO observed, the signs must be regarded as being identical. The only elements that are likely to be pronounced are the word elements which are identical, since the symbol ‘@’ will easily be understood and pronounced as the letter ‘a’ (see paragraph 26 above).
34      Thirdly, with regard to the conceptual similarity of the signs at issue, the Board of Appeal considered, in paragraph 30 of the contested decision, that the signs at issue were identical at least in respect of the services in Class 36, because a Bulgarian consumer would understand the signs at issue as referring to the nature and the intended purpose of those services.
35      Since the figurative elements of the earlier mark are devoid of any conceptual meaning, and both word elements are identical, the message conveyed by the signs at issue will be understood by the Bulgarian public in an identical manner, irrespective of its knowledge of English.
36      The word element ‘easy credit’, common to the signs at issue, will easily be understood by the relevant public with a command of English as an indication of the type of services in question. For the members of the relevant public that do not speak English, the word element would still allude to the type of services in question because of the term ‘кредит’, which means ‘credit’ in Bulgarian.
Likelihood of confusion
37      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 the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 14 December 2006 in 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).
38      In paragraph 39 of the contested decision, the Board of Appeal found that, given the high degree of similarity of the signs at issue, and the fact that the earlier mark had at least a certain degree of distinctiveness, there was a likelihood of confusion for the services in Classes 36 and 38.
39      In the present case, as is apparent from the foregoing analysis, the services covered by the marks at issue are identical (see paragraphs 21 and 22), the signs are visually highly similar (see paragraph 32), and phonetically and conceptually identical (see paragraphs 33 and 35). Furthermore, the word element, which is common to the marks at issue, dominates the overall impression they give, despite its potentially descriptive nature in respect of the services in question.
40      In addition, according to settled case-law, it is correct, admittedly, that the public will not consider, in general, a descriptive element forming part of a composite mark to be the dominant element of that mark (see judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 56 and the case-law cited).
41      However, specific circumstances may justify a descriptive element having a dominant character (see judgment of 16 January 2014 in Investrónica v OHIM — Olympus Imaging (MICRO), T‑149/12, not published, EU:T:2014:11, paragraph 51 and the case-law cited).
42      That is the position in the present case. With regard to the services in question, while the English term ‘easy credit’ may be of a descriptive nature for the Bulgarian public, the respective word elements still occupy a central position in the signs at issue and dominate the overall picture.
43      In addition, with regard to the distinctive character of the earlier mark, as recalled by the Board of Appeal, the fact that a national mark has been registered implies that that mark has a minimum of inherent distinctiveness, since Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) precludes registration of a mark which is devoid of distinctive character (judgment of 16 January 2014 in MICRO, T‑149/12, not published, EU:T:2014:11, paragraph 36).
44      It follows that the Board of Appeal was right to conclude that there is a likelihood of confusion in the present case.
45      Lastly, it is clear that the body of case-law and decisions of EUIPO raised by the applicant is not applicable in the present case, since, in those examples, the likelihood of confusion was ruled out either because the marks at issue did not coincide in their word elements or because the figurative elements occupied an important position and made it possible to differentiate between the marks. In the present case, however, the marks at issue contain identical word elements and do not have any figurative elements that make it possible to differentiate between them.
46      In addition, with regard to EUIPO’s decision-making practice, it is necessary to point out that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of the Boards of Appeal, or of EUIPO (judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraphs 64 and 65). While, in the light of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with the respect for legality (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 75).
47      In the present case, it follows from the foregoing that the Board of Appeal was right to conclude that there is a likelihood of confusion.
48      In the light of all of the foregoing, the single plea in law must be rejected and the action dismissed in its entirety.
Costs
49      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. 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 (Fourth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Team Bank AG Nürnberg to pay the costs.
Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 20 July 2016.
[Signatures]
* Language of the case: English.