JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
22 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark Tradias – Earlier EU word mark TRIODOS – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑32/23,
Tradias GmbH, established in Frankfurt am Main (Germany), represented by P. Bär, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Triodos Bank NV, established in Zeist (Netherlands),
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, P. Zilgalvis (Rapporteur) and E. Tichy-Fisslberger, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Tradias GmbH, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 November 2022 (Case R 734/2022-1) (‘the contested decision’).
Background to the dispute
2        On 26 June 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign Tradias pursuant to 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).
3        The mark applied for covered services in, inter alia, Class 36 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, corresponding to the following description: ‘Finance services’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 152/2020 of 12 August 2020.
5        On 9 November 2020, the other party to the proceedings before the Board of Appeal, Triodos Bank NV, filed a notice of opposition to registration of the mark applied for, in particular, in respect of the services referred to in paragraph 3 above.
6        The opposition was based on the earlier EU word mark TRIODOS, filed on 7 March 2003 and registered on 20 December 2004 under number 3 075 801 and covers services in Class 36, corresponding to the following description: ‘Financial and monetary affairs and banking; insurances; banking services and services of an insurance company’.
7        The ground relied on in support of the opposition was, in particular, that set out in Article 8(1)(b) of Regulation 2017/1001.
8        On 9 March 2022, the Opposition Division upheld the opposition and refused the mark applied for in respect of the services referred to in paragraph 3 above.
9        On 3 May 2022, the applicant filed a notice of appeal with EUIPO, on the basis of Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal dismissed the appeal and, in essence, found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 as regards the services in Class 36. In particular, first, the Board of Appeal noted that the relevant public was the general public of the European Union and the professional public. It submits that that public displays a ‘higher’ level of attention. In the same way as the Opposition Division, the Board of Appeal decided to focus on the ‘Polish-speaking’ part of the relevant public. Second, that board found that the services covered by the mark applied for and those covered by the earlier mark were identical. Third, it took the view that the signs at issue displayed an average degree of visual and phonetic similarity and could not be compared conceptually. Fourth and last, in the absence of evidence establishing enhanced distinctiveness of the earlier mark, it concluded that that mark enjoyed an average degree of inherent distinctiveness.
Forms of order sought
11      The applicant claims, in essence, that the Court should:
–        annul the contested decision, in so far as it upheld the opposition for ‘finance services’ in Class 36 and reject the opposition in its entirety;
–        order EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
Law
The request for annulment of the contested decision
13      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits, in essence, that the Board of Appeal erred in its assessment of the degree of similarity of the signs at issue, in particular in the visual, phonetic and conceptual comparison and carried out an incorrect assessment of the factors relevant in respect of the analysis of the overall likelihood of confusion.
14      EUIPO disputes the applicant’s arguments.
15      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
16      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. 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).
17      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).
18      It is in the light of the abovementioned principles that the present plea must be examined.
19      As a preliminary point, it should be noted that the applicant does not call into question the Board of Appeal’s assessment relating to the relevant public, its level of attention and the comparison of the services in question.
20      First, in that respect, it should be borne in mind, as regards the relevant public, that the Board of Appeal found that the services in question targeted both the general public and a public of professionals. All of that public displays a ‘higher’ level of attention. As regards the relevant territory, although it is that of the European Union, the Board of Appeal decided to focus on the ‘Polish-speaking’ public.
21      In that regard, it must be observed that the level of attention of the specialised public and of the general public for ‘financial services’ is high since they are liable to have a direct impact on the economic and financial assets of consumers, that they generally involve substantial sums of money and that they may have a significant financial impact (see judgment of 2 March 2022, Banco de Investimento Global v EUIPO – Banco BIC Português (EUROBIC), T‑125/21, not published, EU:T:2022:102, paragraph 66 and the case-law cited). That is the case here inasmuch as the services in question are finance services.
22      Second, as regards the comparison of the services concerned, the Board of Appeal found that they were identical to the extent that the finance services covered by the mark applied for included the financial affairs covered by the earlier mark.
23      Those assessments must be upheld, which, moreover, are not disputed by the applicant.
The comparison of the signs
24      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In 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).
25      In the present case, it is necessary to compare the two word signs, namely Tradias and TRIODOS.
26      First, as regards the visual comparison of the signs at issue, the applicant submits that they are similar only to a very low degree or that they are not similar. It takes the view that the Board of Appeal’s finding is not substantiated by reasoning from which it could follow that there are more differences than similarities, given that their central parts were different. Likewise, it complains that the Board of Appeal failed to take into account the arguments relating to the significant difference of the double use of vowels in each of the signs. Accordingly, the applicant states that out of the seven letters of the two signs, more than half, namely four, are different. It claims that the signs differ in their first syllables which end with the letter ‘i’ and the letter ‘a’, respectively and in the sequences ‘a’, ‘d’, ‘i’ and ‘a’ for the mark applied for and ‘i’, ‘o’, ‘d’ and ‘o’ for the earlier mark. According to the applicant, use of the double ‘a’ in the mark applied for and the double ‘o’ in the earlier mark is an element which is easily remembered by consumers given that it displays a repetitive visual and phonetic effect.
27      EUIPO contends that the signs at issue are each composed of a single word element containing seven letter of which five are the same: Their first two letters ‘t’ and ‘r’ and the last letter ‘s’ are placed in the same positions, whereas the letters ‘d’ and ‘i’ are placed in a different order. Therefore, the differences which are confined to the central parts of the signs at issue are insufficient to outweigh the important similarities. Likewise, according to EUIPO, the fact that the mark applied for includes two letters ‘a’ and the earlier mark two letters ‘o’ has no significant effect on the visual perception of those signs.
28      The Board of Appeal observed that the two signs were composed of the same number of letters, that they began with the same letters (‘t’ and ‘r’) and that they ended with the same letter (‘s’). Although it is true that the signs at issue also contain the letters ‘a’ and ‘d’, positioned in different places, they differ in their central parts. According to the Board of Appeal, the visual degree of similarity between the signs is average.
29      In the present case, it must be pointed out, as observed by the Board of Appeal, that the two signs have the same number of letters, namely seven, begin with the same letters (‘t’ and ‘r’) and end with the letter ‘s’. However, the central parts of the signs at issue, composed of the letters ‘a’, ‘d’, ‘i’ and ‘a’ in the mark applied for and ‘i’, ‘o’, ‘d’ and ‘o’ in the earlier mark, are different, as the Board of Appeal had acknowledged, even though it is true that the letters ‘i’ and ‘d’ appear in the signs in a different order. It must be held that the difference in the central part of the signs at issue corresponding to four letters out of seven which make up those signs will be noticed by consumers, in particular on account of the presence, in each of the signs, of the different vowels ‘a’ in respect of the mark applied for and ‘o’ in respect of the earlier mark. Consequently, the level of visual similarity is below average and not average as the Board of Appeal had found.
30      Second, as regards the phonetic comparison, the applicant submits that the signs are different. It takes the view that the Board of Appeal’s finding that there is an average degree of phonetic similarity cannot be substantiated by the grounds it relies on. It argues that the Board of Appeal found that the sounds differed in the middle letters, which creates a distinguishable phonetic impression. However, a ‘distinguishable phonetic impression’ would rule out any similarity to an average degree.
31      According to the applicant, the overall phonetic impression is significantly different, given that the different sequence of letters, in particular the different sequence of vowels, leads to a different sound and pronunciation for every syllable and a different pronunciation and intonation of both signs overall.
32      Moreover, the applicant submits that the combination of the vowels ‘a’ or ‘o’ and the consonant ‘d’ results in a ‘phonetical pause’ when both signs are pronounced which leads to a different ‘speaking rhythm’ for those signs which will be pronounced ‘trio’ ‘dos’ and ‘tra’ ‘dias’, respectively.
33      EUIPO takes the view that the Board of Appeal did not err in finding that the signs at issue were similar to an average degree. It recalls, in essence, its observations made regarding the visual similarity and argues that the differences which exist between the signs are confined to their central parts and that, therefore, they will have less of an impact on the overall phonetic impression.
34      As regards the Board of Appeal’s statement that the middle letters of the signs create a ‘distinguishable [phonetic] impression’, EUIPO contends that that statement cannot be interpreted as meaning that the signs have been regarded as phonetically dissimilar. Those differences were found to be insufficient to rule out the phonetic similarities between the signs.
35      The Board of Appeal found that the signs displayed an average degree of phonetic similarity to the extent that they coincided in the sound of their letters ‘t’, ‘r’ and ‘s’ and in their number of syllables. Likewise, the rhythm of the words would also have some resemblance in both signs. However, the sounds differ in their middle letters, thereby creating a distinguishable phonetic impression.
36      In that respect, it must held, as EUIPO found, that the Board of Appeal’s findings are not contradictory. The assertion that the middle letters of the signs create a distinguishable phonetic impression must be understood as meaning that that difference will make it possible to distinguish the two marks but does not, however, mean that it will offset all similarities, thus making the signs different.
37      Nevertheless, it must be held that the Board of Appeal has underestimated the effect on the overall phonetic impression of the signs at issue resulting from the central part which is different and which will also influence the rhythm of the signs which will not go unnoticed by the public displaying a high level of attention. As the applicant maintains, the mark applied for will be pronounced in the three syllables ‘tra’ ‘di’ ‘as’, whereas the earlier mark will be pronounced in the three syllables ‘tri’ ‘o’ ‘dos’, or in the two syllables ‘trio’ ‘dos’. It follows that the degree of phonetic similarity due to the shared letters is low and not average.
38      Third, as regards the conceptual comparison, the applicant submits that, in the earlier mark, the public would perceive the element ‘trio’ which is associated with a group of three persons. It deduces from this that the conceptual comparison of the signs further distinguishes the signs at issue. That fact was not taken into account by the Opposition Division and the Board of Appeal.
39      EUIPO states that it follows from the contested decision that the Board of Appeal duly examined the applicant’s argument, however, implicitly but necessarily rejected it. According to EUIPO, it is unlikely that an average consumer of the relevant Polish-speaking public ‘dissects’ the element ‘trio’ in the earlier mark and relates it to the number three. It submits that there is no graphic element that would make it possible to distinguish that part from the rest of the sign; the element ‘trio’ has no clear and evident meaning and its use is mainly limited to the field of music.
40      The Board of Appeal found that it was not possible to carry out a conceptual comparison since the signs had no meaning on the relevant territory.
41      In that regard, where the conflicting signs are devoid of any concrete meaning or semantic content a conceptual comparison is not possible (see, to that effect, judgment of 8 July 2020, FF Group Romania v EUIPO – KiK Textilien und Non-Food (‚kix), T‑659/19, not published, EU:T:2020:328, paragraph 84 and the case-law cited).
42      The word elements making up the marks at issue ‘tradias’ and ‘triodos’ have no meaning for the Polish public of the European Union.
43      As regards the applicant’s argument that the relevant public would identify the term ‘trio’ in the earlier mark, it suffices to note that, in any event, that possibility would at most concern only a part of that public, with the result that for the rest of that public the earlier mark will have no meaning.
44      It follows that the Board of Appeal was correct in finding that the conceptual comparison was not possible in the present case.
The global assessment of the likelihood of confusion
45      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).
46      The applicant takes the view that the Board of Appeal should have concluded that the signs were visually and phonetically dissimilar, or at least visually similar only to a very low degree. Likewise, the Board of Appeal should have taken account of the conceptual meaning that the public will associate with the earlier mark. Having regard to the relevant public’s rather high level of attention, the Board of Appeal should have found that there was no likelihood of confusion. The applicant adds that, contrary to the Board of Appeal’s findings in the contested decision, consumers who have a high level of attention will not overlook differences between the signs even if relying on their imperfect recollection of them.
47      Likewise, the applicant submits that the contested decision is vitiated by an ‘error of inconsistency’, to the extent that in other opposition proceedings concerning the earlier mark and a figurative mark of the applicant containing the word elements ‘tradias trading digital assets’, the Board of Appeal drew different conclusions as regards the similarity between the elements ‘triodos’ and ‘tradias’.
48      EUIPO considers that taking into account the identity of the services concerned, the similarities that the marks display are sufficient for the relevant public to confuse them, even with a higher level of attention. As regards the Board of Appeal’s decision relied on by the applicant, EUIPO notes that the mark applied for included additional figurative and word elements, the first of which influenced the Board of Appeal’s finding relating to the phonetic comparison. Lastly, according to EUIPO, a higher level of attention cannot in itself rule out the existence of a likelihood of confusion. Likewise, it argues that on account of an imperfect recollection, the relevant public is likely to remember the similarities rather than the differences between the signs.
49      The Board of Appeal found that, taking into account the average degree of visual and phonetic similarity of the signs at issue and the identity of the services concerned, the existence of a likelihood of confusion cannot be ruled out in the present case, given that the relevant public, even though it displays a higher level of attention, will not be able to safely distinguish the signs. It added that ‘the mentioned imperfect recollection [might] overlook differences between the signs’. Furthermore, it found that the inherent distinctiveness of the earlier mark was average in the present case.
50      As is apparent from the foregoing considerations, the services covered by the marks at issue are identical (see paragraph 22 above), the marks display a lower than average degree of visual similarity and a low degree of phonetic similarity (see paragraphs 29, 37 and 44 above). It follows that, on account of the higher level of attention that the relevant public will display with regard to finance services (see paragraph 21 above), the similarities existing between the marks at issue are not sufficient to create a likelihood of confusion in the present case. In those circumstances, the Board of Appeal made an error of assessment in finding that there was a likelihood of confusion for the Polish public of the European Union.
51      As regards EUIPO’s argument that, because of an imperfect recollection, the relevant public would be likely to remember the similarities rather than the differences between the signs, it must be pointed out that that argument is not supported by the case-law to which it refers. In paragraph 99 of the judgment of 2 March 2022, Degode v EUIPO – Leo Pharma (Skinovea) (T‑715/20, not published, EU:T:2022:101), the Court found that on account of an imperfect recollection, it was very likely that, in the light of the presence and the position of the element in common in the marks at issue, the relevant public, even though it displayed a high level of attention with regard to some of the goods and services at issue, may be led to believe that the goods and services at issue came from the same undertaking or from economically linked undertakings. However, it must be stated that neither that case-law nor the case-law to which the Court referred states that the relevant public is more inclined to keep in mind the similarities rather than the differences that exist between the marks.
52      In that respect, it must be recalled that the average consumer of the services concerned as a rule makes no direct comparison between the trade marks in conflict (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53). Moreover, the concept of an imperfect recollection means that the consumer, who has been confronted with the earlier mark could not remember all of the elements of that mark and, for that reason, takes the view that the goods and services relating to a similar mark come from the same undertaking or economically linked undertakings. However, it is not possible to determine in abstracto which elements of the earlier mark consumers will retain in their minds.
53      In view of all of the foregoing, the applicant’s single plea in law must be accepted and the contested decision annulled.
The second part of the first head of claim
54      By the second part of its first head of claim, the applicant asks the Court to reject the opposition in its entirety.
55      It must be held that, in the present case, the applicant seeks, in essence, to have the Court exercise its power to alter decisions in order to reject the opposition to registration of the mark applied for in respect of all the services which it covers, thus adopting the decision which, according to the applicant, the Board of Appeal should have taken when the appeal was brought before it.
56      In this respect, it should be recalled that the power of the General Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001, must, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
57      However, in the present case, the conditions for the exercise of the Court’s power to alter decisions are not satisfied. It admittedly follows from the considerations set out above that the Board of Appeal erred in finding that there was a likelihood of confusion for the Polish public of the European Union. The fact, however, remains that it did not assess that likelihood of confusion for the rest of the relevant public. Consequently, the request for alteration must be refused.
Costs
58      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.
59      In the present case, since EUIPO has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the latter.
60      As regards the applicant’s request that EUIPO also be ordered to pay the costs incurred by the applicant in the proceedings before the Board of Appeal, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are regarded as recoverable costs. Consequently, EUIPO must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 November 2022 (Case R 734/2022-1);
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to pay the costs, including those incurred by Tradias GmbH before the Board of Appeal.
Costeira
Zilgalvis
Tichy-Fisslberger
Delivered in open court in Luxembourg on 22 November 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.