JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
9 December 2020 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark bim ready – Earlier EU figurative mark BIM freelance – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Restriction of the services covered by the mark applied for)
In Case T‑819/19,
Man and Machine Ltd, established in Thame Oxfordshire (United Kingdom), represented by R. Peto and C. Neu, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Bim Freelance Corp., established in Miami, Florida (United States),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 17 September 2019 (Case R 317/2019-1), relating to opposition proceedings between Bim Freelance and Man and Machine,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, U. Öberg and O. Spineanu-Matei (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 2 December 2019,
having regard to the response lodged at the Court Registry on 20 February 2020,
having regard to the designation of another judge to complete the Chamber as one of its members was prevented from acting,
further to the hearing on 30 September 2020,
gives the following
Judgment
Background to the dispute
1        On 16 May 2017, the applicant, Man and Machine Ltd, obtained international registration No 1359265 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO). That international registration was notified to the European Union Intellectual Property Office (EUIPO) on 10 August 2017 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 mark covered by the international registration at issue is the following figurative sign:
3        The services in respect of which registration is sought are in Class 41 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: ‘Provision of training’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 152/2017 of 11 August 2017.
5        On 1 December 2017, Bim Freelance Corp. filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6        The opposition was based on the EU trade mark, whose sign is reproduced below, filed on 11 October 2016 and registered on 29 March 2017 under No 15907868, covering, inter alia, services in Class 41 corresponding to the following description: ‘Educational centre services; Creation of educational content relating to engineering, architecture and construction’.
7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation 2017/1001.
8        By decision of 20 December 2018, the Opposition Division of EUIPO upheld the opposition in respect of all the services referred to in paragraph 3 above and refused protection of the mark applied for, on the ground that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001, as the dissimilarities between the signs at issue were not sufficient to outweigh their commonalities.
9        On 8 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 17 September 2019 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it concluded that, in the light of the level of attention of the relevant public, which varied from average to high, the identity of the services covered by the trademarks at issue, the average degree of visual and phonetic similarity of the signs at issue and of the fact that the conceptual perspective did not influence their comparison, and in view of the normal degree of distinctiveness of the earlier mark, there was a likelihood of confusion on the part of the relevant public, consisting both of the public at large and of professionals, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Restriction of the services covered by the mark applied for
13      On 29 November 2019, the applicant filed with WIPO a request for the recording of a restriction of the list of services covered by the mark applied for (‘the restriction of services’), so that the protection of the latter was henceforth sought for services in Class 41 corresponding to the following description: ‘Provision of training relating to building information modeling for engineers, constructors, architects and other technical experts’. On 2 December 2019, it informed EUIPO of that restriction.
14      The applicant submits, in essence, that, under Article 49(1) of Regulation 2017/1001, the applicant may at any time restrict the list of goods or services contained in his trade mark application. The applicant argues that, as it filed the restriction of services on 29 November 2019 (see paragraph 13 above), namely before the expiry of the time limit for bringing an action before the General Court, that restriction is admissible and should be taken into account, as ‘it does not in any way comprise a modification or even amplification of the [services covered]’.
15      EUIPO contends that the restriction of services must be disregarded, as it changes the factual context presented before the Board of Appeal and, therefore, the subject matter of the dispute before the General Court, which is prohibited by Article 188 of the Rules of Procedure of that court. In reply to a question raised at the hearing, EUIPO stated that the restriction of services was possible, but that it could not be taken into account in the present case by the General Court in its review of the legality of the contested decision, which was to be examined exclusively in the light of the original list of services.
16      It should be borne in mind that, under Article 49(1) of Regulation 2017/1001, the applicant may at any time withdraw his EU trade mark application or restrict the list of goods or services contained therein. Where the application has already been published, the withdrawal or restriction shall also be published.
17      According to settled case-law, for reasons of procedural economy, the Court may take account of a restriction of the goods and services covered in the trade mark application on condition that that restriction is not such as to change the factual context to which the Board of Appeal’s examination related as regards the goods or services not affected by that restriction. Thus, a restriction carried out in accordance with Article 49(1) of Regulation 2017/1001 subsequent to the adoption of the contested decision may be taken into consideration by the Court where the applicant limits itself strictly to reducing the subject matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application. Since the Board of Appeal must assess the likelihood of confusion in relation to each of the goods and services in respect of which the Union trade mark has been applied for, the mere withdrawal of one or more categories of goods and services from the list in respect of which the trade mark application is filed is not, in principle, capable of changing the factual context to which the Board of Appeal’s examination related as regards the goods and services unaffected by that restriction (see judgment of 30 April 2015, Tecalan v OHIM – Ensinger (TECALAN), T‑100/14, not published, EU:T:2015:251, paragraph 31 and the case-law cited).
18      Where, on the other hand, that restriction leads to a change in the subject matter of the dispute, in that it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the contested decision, it may not, in principle, be taken into account by the Court. Such is the case where the restriction of the goods and services consists in specifications capable of influencing the assessment of the similarity of the goods and services or the determination of the target public and of changing, consequently, the factual context presented before the Board of Appeal (see, to that effect, judgment of 30 April 2015, TECALAN, T‑100/14, not published, EU:T:2015:251, paragraph 32 and the case-law cited).
19      In the present case, it must be observed that, in paragraph 18 of the contested decision, the Board of Appeal noted that it was not possible to infer from the general indication ‘provision of training’ in the services covered by the mark applied for that those services could not also relate to areas of expertise that were of interest to the public at large. In paragraphs 26 and 27, it noted that the earlier mark’s ‘educational centre services’ were identical to the services ‘provision of training’ covered by the mark applied for, as the services were to be compared as they appeared in the register or in the trade mark application, respectively, and not with regard to actual commercial activities or interests of the parties.
20      Through its request for the restriction of services, the applicant replaced the reference to the general category of services ‘provision of training’ with the reference to the more specific category of services ‘provision of training relating to building information modeling for engineers, constructors, architects and other technical experts’.
21      In its written pleadings and at the hearing, first, the applicant acknowledged that, after the restriction of services, an overlap of the services covered by the signs at issue was conceivable only in so far as those services related to building information modeling for engineers, constructors, architects and other technical experts. Secondly, it confirmed that that restriction altered the composition of the relevant public, since it limited it to a public consisting exclusively of professionals, specialists and technical experts, who will display a high level of attention.
22      Accordingly, it must be stated that the requested restriction of services is not limited to reducing the subject matter of the dispute by withdrawing, from the services covered by the mark applied for, certain services in the same category. By contrast, such a restriction is capable of changing the subject matter of the dispute by altering the composition of the relevant public and its level of attention.
23      In the light of those considerations, the requested restriction of services cannot, in the present case, be taken into account by the General Court for the purposes of examining the legality of the contested decision.
Substance
24      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It disputes the Board of Appeal’s findings relating to the comparison of the services covered by the marks at issue, to the definition of the relevant public and of its level of attention and to the comparison of the signs at issue, and the conclusions that the Board of Appeal drew, in its global assessment of the likelihood of confusion, from its earlier findings.
25      Under Article 196(1) of Regulation 2017/1001, international registration designating the Union shall be subject to opposition in the same way as published EU trade mark applications.
26      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.
27      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 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).
28      It is in the light of the foregoing considerations that it must be examined whether the Board of Appeal was correct to conclude that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Comparison of the services and the relevant public
29      In paragraph 27 of the contested decision, the Board of Appeal confirmed the Opposition Division’s conclusion that the services ‘provision of training’ covered by the mark applied for were to be considered identical to the ‘educational centre services’ covered by the earlier mark, as the latter referred to arranging and conducting conferences, colloquiums, trainings, seminars or exhibitions.
30      In paragraphs 19 to 23 of the contested decision, in the first place, the Board of Appeal found that the services ‘provision of training’ covered by the mark applied for were addressed both to the public at large and to professionals and that the level of attention of the relevant public thus defined could vary from average to high depending on the subject matter of the services rendered. In the second place, first, it noted that, as the mark applied for designated the European Union, the relevant territory which was to be taken into account was that of the European Union. Secondly, it confirmed the Opposition Division’s conclusions that, given that the word elements ‘ready’ in the mark applied for and ‘freelance’ in the earlier mark had a meaning in English, it was appropriate to refer to the English-speaking part of the relevant public.
31      As has been noted in paragraph 21 above, in its written pleadings, the applicant, first, submits that there is a potential overlap between the services covered by the trademarks at issue only in so far as they relate to building information modeling for engineers, architects, constructors and other technical experts. Secondly, it disputes the Board of Appeal’s finding relating to the level of attention of the relevant public in that professionals, specialists and experts will display a high level of attention. At the hearing, the applicant stated that, irrespective of the restriction of services, the relevant public, faced with the services covered by the mark applied for, will display a high level of attention.
32      EUIPO contends that, as the restriction of services is inadmissible, the Board of Appeal’s finding that the services covered by the signs at issue are identical (see paragraph 29 above) is correct. For the same reason, the relevant public to be taken into account is still the public as defined by the Opposition Division and, as later confirmed, by the Board of Appeal. Therefore, the conclusions set out in the contested decision (see paragraph 30 above) that the relevant public consists both of the public at large and of professionals and displays a level of attention that varies from average to high depending on the subject matter of the services rendered are correct.
33      It should be borne in mind that, for the reasons set out in paragraphs 16 to 23 above, the restriction of services cannot be taken into account by the General Court. Accordingly, the Board of Appeal’s findings relating to the identity of the services covered by the signs at issue, as set out in paragraph 29 above, and to the relevant public, in that it consists both of the public at large and of professionals, as the trainings offered may be trainings of any kind and not only those addressed to specialists in the fields of construction, engineering and architecture, must be upheld.
34      Nonetheless, in the global assessment of the likelihood of confusion, account should be taken of the point of view of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It must also be borne in mind that the level of attention of the average consumer in the relevant public is likely to vary according to the category of goods or services in question (see judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26 and of 28 November 2019, Soundio v EUIPO – Telefónica Germany (Vibble), T‑665/18, not published, EU:T:2019:825, paragraph 19 and the case-law cited).
35      The training services at issue are aimed at expanding knowledge and developing skills, usually through a commitment in terms of time and resources on the part of the relevant public. They are services that do not satisfy a current or recurring need, but a personal or leisure interest. In principle, the public at large will use them to acquire knowledge and skills for the purpose of professional and functional retraining or to develop specific technical expertise. Professionals will consider them for the purpose of further training in order to acquire, maintain or expand knowledge and skills related to their area of work. Thus, contrary to what the Board of Appeal and EUIPO concluded, the level of attention of the average consumer in the relevant public with regard to the mark applied for is high, be it the average consumer in the public at large or the average consumer in the professional public.
Comparison of the signs
36      The applicant submits that the Board of Appeal failed to take into account the fact that the combination of letters ‘bm’ or ‘BIM’, which coincides in the signs at issue, is descriptive of the services covered by the trademarks at issue, so that it gives rise to a mere associative parallel between them and not to a similarity. It also disputes the Board of Appeal’s assessments regarding the visual, phonetic and conceptual comparison of the signs at issue.
37      It should be borne in mind, in the first place, that 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 them, 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 that 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).
38      In the second 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).
–       Distinctive and dominant elements of the signs at issue
39      In paragraphs 32 to 35 of the contested decision, the Board of Appeal found, first of all, that the combination of letters ‘BIM’ was the dominant element of the earlier mark owing to its size and position in the sign. As regards the mark applied for, it observed that the vast majority of the relevant public would perceive the first part of the word element of the sign as the sequence of letters ‘bim’. Next, it noted that, for at least a significant part of the relevant public, the combination of letters ‘bim’, common to the signs at issue, would not be understood as an acronym and that it was to be regarded as having a normal degree of distinctiveness. Lastly, it added that the other word elements, namely ‘freelance’ in the earlier mark and ‘ready’ in the mark applied for, would be understood as referring to ‘a self-employed person’ and ‘something or someone fully prepared’, respectively. Since it considered that those words would be perceived as referring to important characteristics of the services concerned, it concluded that their degree of distinctiveness was low.
40      The applicant submits that those conclusions of the Board of Appeal are in part erroneous and in part obsolete, since, after the restriction of services, the marks at issue now relate to sophisticated services addressed to professionals for whom the combination of letters ‘bm’ or ‘BIM’ is a generic part of those signs.
41      Thus, according to the applicant, first, the combination of letters ‘bm’ or ‘BIM’ represents, for the relevant public consisting of professionals, a clear and obvious reference to the acronym for ‘building information modeling’ technology. The applicant submits that that acronym is therefore merely descriptive of the services covered by the mark applied for after the restriction of those services, as the results of an internet search provided by it show. The associative parallel that exists between the signs at issue is therefore based only on a descriptive element of those signs which is weak in its distinctiveness. Secondly, the signs at issue differ from one another not only in their graphic elements but also in their other respective word elements, namely ‘ready’ in the mark applied for and ‘freelance’ in the earlier mark, elements to which the relevant public will pay more attention. The Board of Appeal’s statement that those other word elements referred to important characteristics of the services concerned, but had a low degree of distinctiveness, is thus manifestly self-contradictory.
42      EUIPO contends that the Board of Appeal was correct in concluding, first, that the majority of the public, in particular the general public, would not be aware of the meaning of the combination of letters ‘bim’. That element therefore has a normal degree of distinctiveness. As regards the screenshot of the results of an internet search provided by the applicant in Annex A.9 to the application, EUIPO – while withdrawing, at the hearing, its plea of inadmissibility alleging that the screenshot had been submitted for the first time before the General Court – argues that that screenshot cannot call into question that conclusion. It adds that, as the Board of Appeal correctly concluded, the combination of letters ‘bim’ must be considered to be the dominant element of the signs at issue. The additional word elements ‘freelance’ in the earlier mark and ‘ready’ in the mark applied for will be perceived as referring to some important characteristics of the relevant services and, therefore, as descriptive indications. Moreover, the figurative elements of the signs at issue will be clearly perceived as being secondary ornamental elements.
43      It should be borne in mind that, according to case-law, for the purpose of assessing the distinctive character of a mark or of an element making up a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark or 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 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).
44      It must also be observed that the greater or lesser degree of distinctiveness of the elements of the marks at issue is one of the relevant factors in assessing the similarity of the signs (see judgment of 14 September 2017, Alpenschmaus, T‑103/16, not published, EU:T:2017:605, paragraph 47 and the case-law cited). The descriptive, non-distinctive or weakly distinctive elements of a composite trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression given by that mark (see, by analogy, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).
45      In the present case, in the first place, for the reasons set out in paragraphs 16 to 23 above, the restriction of services cannot be taken into account by the General Court. Accordingly, as has been noted in paragraphs 33 to 35 above, the services covered by the mark applied for are the services ‘provision of training’ in Class 41 and the relevant public to be taken into account in relation to those services consists both of the public at large and of professionals, a public which displays a high level of attention.
46      In the second place, as regards the first part of the word element of the mark applied for, as the applicant moreover acknowledged in its written pleadings and at the hearing, that part will be perceived, despite its unusual spelling, namely ‘bm’ with a dot above the first stroke of the letter ‘m’, as indicating ‘bim’.
47      At the hearing, the applicant also confirmed that the combination of letters ‘bm’ or ‘BIM’ of the signs at issue will not be understood either by the part of the relevant public consisting of the public at large or necessarily by the relevant public consisting of professionals other than engineers, constructors, architects and technical experts. Consequently, as EUIPO correctly submits, at least for that part of the relevant public, that combination of letters has no specific meaning and is not therefore descriptive of the services covered, so that it has a normal degree of distinctiveness.
48      On the contrary, for the relevant public consisting of specialists in the fields of construction, engineering and architecture, the results of the internet search provided by the applicant show that the combination of letters ‘bim’ is in fact used as the acronym for ‘building information modeling’, a fact which is not, moreover, disputed by EUIPO. Accordingly, for that part of the relevant public, the combination of letters ‘bm’ or ‘BIM’ is descriptive of training services relating to ‘building information modeling’ technology.
49      In the third place, as regards the other elements of the signs at issue, first, it should be noted that ‘ready’ and ‘freelance’ in the second part of the word element of the signs at issue will be perceived as referring to certain characteristics of the services covered, respectively, by the mark applied for and by the earlier mark. The first one will be immediately understood as an indication of services ready to be used, while the second one refers to a self-employed person or an independent undertaking. Since those words are descriptive indications of the services covered, the Board of Appeal, without contradicting itself, correctly found that they had a low degree of distinctiveness.
50      Secondly, as regards the impact of the figurative elements of the signs at issue, it should be observed that the combination of letters ‘BIM’ in the sign for the earlier mark is the dominant element of that sign owing to its size, which is significantly larger than that of the second part of the word element, namely ‘freelance’, its central position and its arrangement in the sign. By contrast, no dominant element can be identified in the mark applied for, in that the first part of its word element ‘bm’ and the second part ‘ready’ are written, in lower case and in the same size, in the same ordinary typeface and in the same neutral colour, while the orange checkmark in the middle is not striking. Contrary to the applicant’s claim, the view cannot therefore be taken that the relevant public will pay more attention to the other word and figurative elements of the signs at issue.
51      Therefore, the Board of Appeal’s findings, as set out in paragraph 39 above, must be confirmed as far as concerns the relevant public consisting of the public at large and of professionals other than engineers, constructors, architects and technical experts, a public for which the earlier mark will have a normal degree of distinctiveness. However, for the relevant public consisting of specialists in the fields of construction, engineering and architecture, the combination of letters ‘bm’ or ‘BIM’ of the signs at issue will be considered to be descriptive of training services relating to ‘building information modeling’ technology, so that the earlier mark will have a low degree of distinctiveness for that public.
–       Visual, phonetic and conceptual comparison
52      In paragraphs 36 to 39 of the contested decision, the Board of Appeal noted that, in view of the identity of their first word element, to which more attention was paid, and the reduced distinctiveness of the differentiating elements, the signs at issue had an average degree of visual similarity. Phonetically, they coincided in the sound of the word ‘bim’, so that they were similar to an average degree. Conceptually, the impact of the elements ‘freelance’ and ‘ready’ did not, due to their limited distinctiveness, notably influence the comparison of the signs at issue.
–        Visual comparison
53      The applicant submits that the overall visual impression of the signs at issue is so different that they have nothing in common. According to the applicant, this is because of the differences between the figurative elements, the colours used in the signs at issue and the typefaces of the word elements of those signs. Admittedly, the relevant public will interpret the first letters of the mark applied for as the expression ‘bim’, which must, in fact, be read in this way, but that does not create a real visual identity between that combination of letters, which is common to the signs at issue.
54      EUIPO notes that, in the case of the sign for the earlier mark, the element ‘BIM’ is striking due to its size and its position in relation to the other element of the sign. In the case of the sign for the mark applied for, that element is placed in the first position and is therefore the element that, according to settled case-law, is most likely to attract the attention of consumers. Since the signs at issue coincide in their dominant and most distinctive element and differ in their secondary elements, EUIPO maintains that the Board of Appeal was right in concluding that those signs were visually similar to an average degree.
55      It should be observed that the sign for the earlier mark consists of the combination of letters ‘BIM’ and of the word ‘freelance’, depicted on two lines and on a blue and white rectangular background, respectively, and of circular elements of different sizes and colours placed in the upper right part of the sign. The sign for the mark applied for is composed of the combination of letters ‘bm’ with a dot above the first stroke of the letter ‘m’, written in grey letters, followed by an orange checkmark and, on the same line, the word ‘ready’, which is also written in grey letters.
56      In the case of the earlier mark, the combination of letters ‘BIM’ is visually striking due to its size and its position in relation to the other elements, word and figurative, of the sign. In the case of the mark applied for, the combination of letters ‘bm’ with a dot above the first stroke of the letter ‘m’ is the same size as the other elements of the sign. Although the signs at issue have a combination of letters in the first part of their word elements, which is, in principle, more likely to attract the consumer’s attention than the parts which follow it (see, to that effect, judgment of 21 May 2015, Wine in Black v OHIM – Quinta do Noval-Vinhos (Wine in Black), T‑420/14, not published, EU:T:2015:312, paragraph 25 and the case-law cited), it should be noted that the combination of letters ‘BIM’ in the earlier mark is not to be found as such in the mark applied for, which includes the two-letter combination ‘b’ and ‘m’, written in lower case. Nonetheless, the high level of attention of the relevant public may enable it to determine that the dot above the first stroke of the letter ‘m’ in fact evokes the letter ‘i’ and thus to identify therein the same combination of letters as that of the earlier mark.
57      Accordingly, due, first, to the differences relating to the second part of the word elements, the figurative elements, the colours used in the signs at issue and the typefaces of the word elements of those signs and, secondly, to the mere possibility of identifying the same combination of letters in the first part of the word elements of the signs at issue, the Board of Appeal erred in concluding that the signs at issue had an average degree of visual similarity. Those signs have, at best, a very low degree of visual similarity.
–        Phonetic comparison
58      The applicant submits that, at least after the restriction of services, the relevant public will definitely not focus its attention on the combination of letters ‘bim’ in the signs at issue, since that combination of letters is the generic part of those signs, rather it will focus its attention on the other word elements that are phonetically totally different, so that no phonetic similarity of the signs at issue can be found.
59      EUIPO contends that, since the restriction of services must be disregarded, the word elements of the signs at issue will be pronounced as ‘bim ready’ and ‘bim freelance’. The fact that the signs coincide in their distinctive and dominant element, which is moreover placed at the beginning of those two signs, necessarily leads to the conclusion that the signs are phonetically similar to an average degree, as correctly found in the contested decision.
60      It should be noted that, as EUIPO maintains, the word elements of those signs will be pronounced as ‘bim ready’ and ‘bim freelance’. The fact that the first part of the word element of the sign in the mark applied for is read as ‘bim’, as the applicant confirmed in its written pleadings, and that the signs coincide partially on account of the pronunciation of that element makes it possible to conclude that those signs are phonetically similar to an average degree, as the Board of Appeal correctly found in paragraph 37 of the contested decision.
–        Conceptual comparison
61      It must be observed at the outset that the Board of Appeal merely noted that the impact of the elements ‘freelance’ and ‘ready’ was limited due to their weak distinctiveness and that the conceptual perspective did not notably influence the comparison of the overall similarity of the signs.
62      According to the applicant, the combination of letters in the initial part of the word elements of the signs at issue conveys the same conceptual message, which is descriptive of the underlying services, while the elements ‘ready’ and ‘freelance’ function as the only distinctive elements and convey different conceptual ideas, so that any conceptual similarity of the signs at issue should be excluded.
63      EUIPO supports the Board of Appeal’s approach set out in paragraphs 52 and 61 above. It submits, first, that at least a significant part of the relevant English-speaking public will not attribute any clear meaning to the combination of letters ‘bim’ and, secondly, that the applicant did not demonstrate that the earlier mark conveys a concept which is understood by a significant part of the relevant public.
64      It should be noted that, for the part of the relevant public that will not recognise the acronym for ‘building information modeling’ in the combination of letters ‘bm’ or ‘BIM’, any conceptual similarity of the signs at issue must be excluded. That combination will not convey any concept and the second part of the word elements of the signs at issue, which is not common to those signs, will have a clear and distinct descriptive meaning. ‘ready’ and ‘freelance’ will be understood as referring to ‘a self-employed person’ and ‘something or someone fully prepared’, respectively, as the Board of Appeal noted in paragraph 35 of the contested decision.
65      By contrast, for the part of the relevant public that will recognise the acronym for ‘building information modeling’ in the combination of letters ‘bm’ or ‘BIM’, that combination of letters will refer to ‘building information modeling’ technology, which makes it possible to conclude that there is a certain degree of conceptual similarity of the signs at issue. However, since the second part of the word elements of the signs at issue will have a different meaning, while the similarity deriving from the combination of letters ‘bm’ or ‘BIM’ is based on an element which is descriptive of training services relating to such technology, the level of conceptual similarity between the signs at issue must, at most, be regarded as low (see, to that effect, judgment of 28 May 2020, Workspace Group v EUIPO – Technopolis Holding (UMA WORKSPACE), T‑506/19, not published, EU:T:2020:220, paragraph 53).
Overall assessment of the likelihood of confusion
66      In paragraphs 40 to 45 of the contested decision, the Board of Appeal took the view that there was a likelihood of confusion on the part of the relevant public in the present case in the light, in essence, of the identity of the services, the overall similarity of the signs and the normal degree of distinctiveness of the earlier mark, even for a public that displayed a high level of attention.
67      The applicant submits that there is no likelihood of confusion in the present case, since the overlap of the services covered by the signs at issue is reduced after the restriction of services, the relevant public will display a high level of attention and there are significant differences between the signs, in particular on account of the minor importance and of the descriptiveness of the combination of letters ‘bm’ or ‘BIM’.
68      EUIPO contends that, in the light of the identity of the services at issue, the average degree of distinctiveness of the earlier mark, the average degree of visual and phonetic similarity and of the fact that the conceptual comparison has only a limited impact on the overall similarity of the signs, the Board of Appeal was right in concluding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even taking into account a higher level of attention.
69      It should be borne in mind that 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).
70      As has been noted above, in the present case, the services covered by the signs at issue are identical (see paragraph 33 above), the signs are visually similar to a very low degree (see paragraph 57 above) and they have an average degree of phonetic similarity (see paragraph 60 above). Conceptually, the signs at issue are not similar for the public at large or professionals other than engineers, constructors, architects and technical experts, and the earlier trade mark has normal inherent distinctiveness (see paragraphs 51 and 64 above). However, for the public that will understand the meaning of the combination of letters ‘bm’ or ‘BIM’, the signs at issue are conceptually similar to a low degree and the earlier mark has a low degree of distinctiveness (see paragraphs 51 and 65 above). While ‘BIM’ is the dominant element in the earlier mark, no dominant element can be identified in the mark applied for (see paragraph 50 above).
71      Accordingly, first, the average degree of phonetic similarity of the signs at issue is offset by a very low degree of visual similarity and by a lack of or low degree of conceptual similarity, which make the signs at issue similar to a low degree overall. Secondly, the identity of the services covered by the signs at issue is offset by the high level of attention of the relevant public consisting both of the public at large and of professionals, regardless of their area of specialisation. Thus, contrary to what the Board of Appeal noted, in accordance with the principle of interdependence between the factors to be taken into account, set out in paragraph 69 above, it must be concluded that no likelihood of confusion on the part of the relevant public can be found.
72      In the light of all of the foregoing considerations, the single plea in law relied on by the applicant must be upheld and, consequently, the contested decision must be annulled.
Costs
73      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
74      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 (Fifth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 September 2019 (Case R 317/2019-1);
2.      Orders EUIPO to pay the costs.
Spielmann
Öberg
Spineanu-Matei
Delivered in open court in Luxembourg on 9 December 2020.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.