JUDGMENT OF THE GENERAL COURT (Third Chamber)
28 March 2019
(*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark K9 UNIT — Earlier EU figurative mark unit — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑276/18,
Julius-K9 Zrt, established in Szigetszentmiklós (Hungary), represented by G. Jambrik, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė and by H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 February 2018 (Case R 1432/2017-2) relating to opposition proceedings between the Hipercor, SA
and Julius-K9,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 April 2018,
having regard to the response of EUIPO lodged at the Court Registry on 4 July 2018,
having regard to the response of the intervener lodged at the Court Registry on 1 August 2018,
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 24 September 2015, the applicant,
Julius-K9 Zrt, 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 following figurative sign:
3        The goods in respect of which registration of the aforementioned mark was sought are in, inter alia, Classes 16, 18, 25 and 28 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 16: ‘Boxes of cardboard or paper; catalogues; stationery; notebooks; calendars; prospectuses; Advertising pamphlets; Advertising publications; Advertising posters; Notepaper; Packaging materials; Wrapping materials made of paper; Wrapping materials made of card; Logos, labels, removable name tags for use on dog harnesses and clothing; Adhesive labels’;
–        Class 18: ‘Harnesses for animals; Leashes for animals; Dog collars; Muzzles; Fittings for dog harnesses; Clothing for animals; Pet food bags; Bags for sports; Bags; Shoe bags; Casual bags; Work bags; Athletic bags; Boston bags; Waterproof bags; Athletics bags; Sport bags; Belt bags; Gym bags; Belt bags and hip bags; Electronic pet collars; Collars for pets bearing medical information; Dog apparel’;
–        Class 25: ‘Gloves as clothing; mittens; socks; scarves; sports jerseys; tee-shirts; waistcoats; coats; headbands for clothing; uniforms; pullovers; shirts; Outerclothing; Waterproof outerclothing; Outerclothing for men; Womens’ outerclothing; Clothing; Weatherproof clothing; Clothing for sports; Headwear; Caps [headwear]; Hooded sweatshirts; Hooded pullovers; Sleeveless jackets; Sleeveless jerseys; sleeveless shirts; Sports shirts with short sleeves; Pants; Trousers; Trousers shorts; Waterproof trousers; belts [clothing]; Money belts [clothing]; Work clothes; Overalls; Underwear; Trunks [underwear]; Ladies’ underwear; Briefs [underwear]; Bathing costumes; Bathing costumes for women; Shoes; Sports shoes’;
–        Class 28: ‘Play balloons; balls for games; games; pet toys; Elbow guards [sports articles]; Knee guards [sports articles]; Forearm guards [sports articles]; Gloves for games; Men’s athletic supporters [sports articles]; Protective paddings [parts of sports suits]; Stuffed toys; Devices for training and exercise with dogs; Remote control toys’.
4        The trade mark application was published in Community Trade Marks Bulletin
on 26 January 2016.
5        On 5 April 2016, Hipercor, SA
filed a notice of opposition under 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 referred to in paragraph 3 above.
6        The opposition was based on the earlier EU figurative mark No 9182718, filed on 17 June 2010 and registered on 6 December 2010, and the earlier Spanish figurative mark No 2935503, filed on 17 June 2010 and registered on 21 January 2011, both reproduced below and covering, inter alia,
‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes)’ in Class 16; ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery with the exclusion of sheets of leather and imitation of leather for footwear’s soles’ in Class 18 and ‘Clothing, footwear, headgear with the exclusion of rubber soles and heels for footwear’ in Class 25:
7        The grounds relied on in support of the opposition were those laid down in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 10 May 2017, the Opposition Division, relying essentially on reasons of procedural economy, confined itself to examining the opposition at issue on the basis of earlier EU figurative mark No 9182718 and upheld the opposition for all of the contested goods in Classes 16, 18 and 25, but rejected it in respect of those in Class 28.
9        On 30 June 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision, concerning only the contested goods in Classes 16, 18 and 25.
Consequently, the Opposition Division’s decision became final with regard to the goods in Class 28.
10      On 23 October 2017, Hipercor, SA
informed EUIPO of its merger with El Corte Inglés, SA which thus became the intervener in the present proceedings.
11      By decision of 22 February 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO confirmed the decision of the Opposition Division and dismissed the appeal.
12      First, the Board of Appeal stated that the relevant public in the present case consisted of the public at large and the relevant territory was that of the European Union.
13      Second, as regards the goods covered by the mark applied for in Classes 16, 18 and 25, the Board of Appeal stated that they were, in essence, identical, or at least very similar, to those covered by the earlier mark included in those classes. Third, it held that the signs at issue were visually similar to a low degree, phonetically highly similar and conceptually dissimilar.
14      As regards visual similarity in particular, the Board of Appeal found that ‘the sign [applied for was] a figurative mark consisting of the word “UNIT”, placed in the right-hand corner of the sign[; that u]nderneath the word “UNIT” there [was]
the letter-number-combination “K9” which [was] significantly larger than the word “UNIT”[; that t]he letter “K” as well as the number “9” [were moreover] only partially visible because they [were] overlapped by the depiction of a leaping dog next to the upper torso of a man with a cap[; that a]lthough the word “UNIT” is significantly smaller than [that]
depiction ... and [than] the element “K9”, it [was] still clearly visible[; but that]
by contrast, it [required] some effort to recognise the element “K9” due to the fact that it [was] partly covered by [that] depiction ... and [that] furthermore the number 9 [was] alienated by the star replacing the usual round space in its upper part’. Next, the Board of Appeal found that the signs at issue had
the word ‘unit’ in common but that they differed in their graphic elements. Last, it found that the fact that a mark which consists exclusively of the earlier mark, to which another word or figurative element is added, was an indication that the two marks were similar.
15      Next, as regards conceptual similarity, the Board of Appeal observed, in particular, that there was no indication that the word ‘unit’ in both the earlier mark and, in capital letters,
in the mark applied for was a basic English term which was understood in the same way throughout the territory of the European Union. According to the Board of Appeal of EUIPO, the applicant itself,
moreover, accepted that the earlier mark ‘unit’ had no conceptual meaning.
16      Finally, as regards the reputation claimed by the applicant, the Board of Appeal considered that that fact was not relevant to registration, since the right attached to a trade mark takes effect on the date on which it is filed and not before.
17      In the end, on the basis of those circumstances, the Board of Appeal found that there was, in the present case, a real likelihood of confusion stemming first from the fact that the dominant element of the earlier mark, namely the word ‘unit’, was fully included in the mark applied for and that, while being smaller than the other graphic elements of that mark, that word nevertheless remained clearly visible in that latter mark.
18      In addition, given that the goods were ‘identical (or at least highly similar)’, the Board of Appeal also found that the parties in question were, on a commercial level, direct competitors and, therefore, that ‘the conflicting signs [had to] maintain a sufficient distance from each other’.
19      Last, in the present case, the greater degree of similarity between the goods offset the lower degree of similarity between the signs. Accordingly, the Board of Appeal therefore rejected the applicant’s application by upholding, in essence, the decision of the Opposition Division.
Forms of order sought
20      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
21      EUIPO and the intervener contend that the Court should:
–        dismiss the action as unfounded;
–        order the applicant to pay the costs.
Law
22      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
23      The applicant claims that, in essence, as regards the likelihood of confusion between the marks at issue, the Board of Appeal essentially failed to have regard to the principle of global assessment of the signs at issue and, in any event, carried out an incorrect analysis
of those two signs,
both as regards the visual
and phonetic comparison.
24      The applicant divides that plea into three complaints.
25      By its first complaint the applicant maintains that the Board of Appeal wholly ignored the presence, in the mark applied for, of significant graphic elements, namely the silhouette of a man and a moving dog in a single image, and the word element ‘k9’. The Board of Appeal ‘unreasonably grabbed the word “unit” [only] and [thus] did not examine the contested sign as a whole’, contrary to what is required by the relevant case-law.
26      By its second complaint
it claims, in essence, that, contrary to the finding of the Board of Appeal, the signs at issue are not phonetically similar since the mark applied for is pronounced ‘k9 unit’. According to the applicant, the element ‘k9’ is, in fact, clearly positioned in the foreground in the configuration of the sign and cannot, consequently, be considered negligible in the overall impression conveyed by the mark applied for.
27      Last, by its third complaint, the applicant submits that the Board of Appeal, in its assessment of the likelihood of confusion, did not give sufficient reasons for the similarity of the marks in that it merely stated that the mark applied for contained the element ‘unit’ and that word retained, in that mark, an independent role, even though it was not dominant,
unlike in the earlier signs.
28      EUIPO and the intervener maintain, by contrast, that, contrary to the applicant’s observations, the Board of Appeal took into account all the elements making up the marks at issue, carried out a detailed comparison of their various elements and therefore correctly found
that there was a likelihood of confusion.
29      In the first place, it should be noted that, under Article 8(1)(b) of Regulation 2017/1001, the
mark applied for
is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two trade marks, there is 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.
30      In the second place, according to settled case-law, the fact that the relevant 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 within the meaning of the aforementioned provision, in particular where the marks at issue are both identical or similar and the goods or services which they cover are identical or similar. Furthermore, those conditions are cumulative (see judgments of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 32 and the case-law cited, and 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).
31      In the third place, the global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks that the average consumer may have of the goods or services in question plays in particular a decisive role in the global assessment of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
32      In the fourth place, 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).
33      The legal framework having been set out, it is now necessary to examine the single plea in law invoked by the applicant.
Dominant and distinctive character of the elements making up the signs at issue
34      The Board of Appeal, after having described the earlier mark as ‘a figurative mark consisting of the term “unit” written in small white letters in a standard font surrounded by a light blue rectangle with rounded corners’, found, in paragraph 46 of the contested decision, that the dominant element of that mark was the word ‘unit’.
35      The applicant criticises the Board of Appeal for having found that the element ‘unit’ was the dominant element of the earlier mark, because that mark
is in fact, in its opinion, dominated visually by its figurative element, namely the blue rectangle.
36      It should however be noted that a mere blue rectangle cannot be remembered more easily by the relevant public than the word element ‘unit’ which, in white font, is included in the centre of that rectangle. In addition, it is settled case-law that decorative elements or basic geometric shapes usually play a less important role in the
perception of the sign by consumers (see judgment of 24 October 2017, Keturi kambariai v EUIPO — Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 104 and the case-law cited). Consequently, the applicant’s argument cannot be accepted.
37      By contrast, as regards the mark applied for, the Board of Appeal found, in essence, that the letter ‘k’ and the number ‘9’ were only partially visible, since they were covered in part by the ‘depiction of a leaping dog next to the upper torso of a man with a cap’ and, although the word ‘unit’ was significantly smaller than the depiction of that man and that dog, as well as the element ‘k9’, it was still ‘clearly visible’. The number ‘9’ is, in the view of the Board of Appeal, ‘alienated by the star replacing the usual round space in its upper part’. The Board of Appeal took the view,
in the end, that ‘due to the independent distinctive role of the common element ‘unit’ in the contested sign, the [signs at issue were] similar at least to a low degree’.
38      The applicant maintains that the element ‘k9’ is ‘clearly visible and readable’, in view of the European rules of reading from left-to-right, and it
considers
that the average consumer focuses on that element as well as the man and the dog which, in the applicant’s opinion, are the actual dominant elements because of their size and position.
39      The arguments of the parties having thus been summarised, it should be recalled that it is apparent from settled case-law that, in assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 12 May 2016, Red Lemon v EUIPO — Lidl Stiftung (ABTRONICX2), T‑776/14, not published, EU:T:2016:291, paragraph 30).
40      In the present case, contrary to the Board of Appeal’s findings, the word element ‘unit’
which is smaller compared to the other elements and placed in the top right-hand corner of the mark applied for must not be regarded, because of its position away from the other elements and its legibility, as an element which is of particular importance in that mark.
41      First, it should be noted
that the silhouette of the torso of a man with a cap pointing
his finger to the star in the centre of the number 9 of the element ‘k9’, as well as the figurative element depicting a leaping dog, occupy a clearly central position in the foreground of the mark applied for.
42      Second, it must be found that the element ‘k9’, due to its size which almost fills the entirety of the mark applied for,
and the figurative elements which cover it partially constitute the actual dominant elements of that mark. The size of the element ‘k9’ significantly exceeds that of the word element ‘unit’ and the figurative elements referred to in paragraph 39 above occupy an important position in the mark applied for. Accordingly, it must be concluded that those elements are much more likely to attract the attention of the relevant public than the word element ‘unit’ (judgment of 8 February 2019, Serendipity and Others v EUIPO — CKL Holdings (CHIARA FERRAGNI), T‑647/17, not published, EU:T:2019:73, paragraphs 39 and 40).
43      By contrast, as regards the distinctive character of the elements of the mark applied for, the Board of Appeal was correct to find that the silhouette of a man pointing his finger and the leaping dog had a low degree of distinctiveness for those goods in Class 18 which specifically relate to animals, such as
dog collars or leashes for animals. As regards the remaining goods, by contrast, they have their own distinctive character which the relevant public will take into account.
Comparison of the signs
44      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 that the average consumer may have of the goods or services in question plays, in particular, a decisive role in the global assessment of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
45      Those aspects of the legal framework having been summarised, EUIPO notes first, in support of the lawfulness of the contested decision, that, according to a principle settled
in the case-law, where the goods or services
covered are identical, there may be a likelihood of confusion on the part of the public where the contested mark is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 37). In the present case, in EUIPO’s opinion, the Board of Appeal was correct to find that there was a likelihood of confusion between the signs at issue, since the dominant element of the earlier mark, namely the word ‘unit’, was entirely included in the mark applied for.
46      EUIPO further states that it is true that, although it is graphically smaller than the other figurative and verbal elements in the mark applied for, the word ‘unit’ nevertheless remains
clearly visible in that mark and,
accordingly,
it retains, in the mark applied for, an ‘independent distinctive role’, since that word is not linked to the other elements of that mark, either visually or conceptually.
47      Finally, first, EUIPO submits that the word element ‘k9’ of the mark applied for will be perceived, at least by part of the relevant public, as an indication of the company that manufactures the goods, especially if the alleged reputation of the applicant’s ‘K9 brands’ is taken into consideration. Second, the case-law applicable in the present case does not require that the element which retains its independent distinctive role in the mark applied for — in the present case, the word ‘unit’ — must also be
dominant.
48      Those arguments of EUIPO cannot, however, prevail.
Visual comparison
49      According to settled case-law, the fact that the two signs at issue have a similar element is not sufficient, in itself, to find that they are similar, given that the presence of figurative elements set out in a specific way may have the effect that the overall impression of each sign is different (see judgment of 22 February 2018, International Gaming Projects v EUIPO — Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 50 and the case-law cited).
50      In that regard, it should be noted that the mark applied for is a composite sign, consisting of several figurative elements as well as several word elements.
51      In the present case, it has been established, in paragraphs 40 to 42 above, that the word element ‘k9’ and the figurative elements of the mark applied for had a dominant character which does not justify the conclusion of a visual similarity of the signs at issue owing to the mere presence of the common word element ‘unit’.
52      It is possible to
establish that the signs at issue are very different visually. In this context, as stated in paragraph 41 above, the figurative element depicting the silhouette of the torso of a man with a cap pointing his finger to the star in the centre of the number 9 of the element ‘k9’,
as well as the figurative element depicting a leaping dog, occupy a clearly central position in the mark applied for
and are positioned in the foreground compared to the word elements ‘k9’ and ‘unit’. The impression that those word elements make up the background of the mark applied for is reinforced by the graphic representation of that sign since the outline of the silhouettes of the man and dog are bolder and darker than the elements ‘k9’ and ‘unit’. The figurative elements of the mark applied for are therefore set out in a way which is likely to attract the attention of the relevant public.
53      In addition, the word element ‘k9’, notwithstanding the fact that it is covered in part by those figurative elements, is nevertheless, in principle, easily perceived and understood as such by the relevant public, precisely because, as EUIPO itself also points out, it is part of the name of the applicant, Julius-K9, which manufactures the goods at issue, ‘especially [– adds EUIPO –]
if the alleged reputation of the [applicant’s
other] “K9 brands” is taken into consideration’.
54      Consequently, the Board of Appeal found,
in paragraph 49 of the contested decision, on the basis of an incorrect assessment of the mark applied for, that the element
common to
the two signs at issue, namely the word ‘unit’, had, in the mark applied for, an ‘independent distinctive role’, so that the two signs must be considered, as a whole, to be ‘similar at least to a low degree’.
Phonetic comparison
55      Phonetically, EUIPO, relying primarily on the findings of the Board of Appeal, contends that the two signs are very similar because, regardless of the first word element ‘k9’, the other element ‘unit’ can only be pronounced identically to the earlier mark.
56      Admittedly, the mere fact that the word ‘unit’, common to the two signs at issue, is pronounced identically in both cases, regardless,
moreover, of
the language used, implies some phonetic similarity between those signs
(see judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 58 and the case-law cited).
57      However, the Board of Appeal erred in finding, in paragraph 50 of the contested decision, that the signs at issue were phonetically ‘similar to a high degree’. The mark applied for differs from the earlier mark in the word element ‘k9’, which, because of its size and its position in the mark applied for, will be read alongside the other word element in that mark, namely the word ‘unit’.
58      Therefore, phonetically, owing to the presence of the common element ‘unit’, the signs at issue share some degree of similarity. Nevertheless, ‘k9’ is the first word element that the relevant public will read
in the light of its position in the mark applied for.
Consequently, the degree of phonetic similarity between the signs at issue cannot be characterised as ‘similar to a high degree’, but rather as ‘average’ or ‘low’.
Conceptual comparison
59      Conceptually, the parties agree on the lack of any
meaning of the word elements contained in both of the signs at issue, and in particular the meaning of the word ‘unit’.
The likelihood of confusion
60      According to the case-law, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects
do not always bear the same weight and the extent of the similarity or difference between the signs at issue may depend on the inherent qualities of the signs (see judgment of 20 September 2018, Kwizda Holding v EUIPO — Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 78 and the case-law cited).
61      In that regard, even by relying on the criterion that EUIPO invokes on the basis of the judgment of 6 October 2005,
Medion (C‑120/04, EU:C:2005:594, paragraph 37), the correct legal conclusion, in the present case, is different from that reached by EUIPO.
62      As is apparent from the analysis in paragraphs 40 to 42 above, the Board of Appeal and EUIPO erroneously took the view that the word element ‘unit’ of the mark applied for
had an ‘independent distinctive role’. The other word element ‘k9’ and the figurative elements are clearly dominant compared to the word element ‘unit’ which is written in much smaller font. Moreover, it must also be recalled that the word element ‘k9’ is part, as EUIPO also points out, of the applicant’s name, Julius-K9, which manufactures the goods at issue, so that, from the perspective of the relevant public, the word ‘unit’ cannot be regarded as independent from the element ‘k9’.
63      Finally, it must be found that the signs at issue have significant visual and phonetic differences. In the present case, it must be found that the visual and phonetic differences found in paragraphs 50 to 54 and 56 to 58 above cancel out the similarity resulting from the common word element ‘unit’ (see, to that effect, judgment of 24 November 2005, Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraphs 50 and 55).
64      Therefore, the applicant’s single plea in law must be upheld and the contested decision annulled because the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public with regard to the goods at issue.
Costs
65      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.
66      Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Third Chamber),
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 February 2018 (Case R 1432/2017-2);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Julius-K9 Zrt;
3.      Orders El Corte Inglés, SA to bear its own costs.
Frimodt Nielsen
Forrester
Perillo
Delivered in open court in Luxembourg on 28 March 2019.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.