JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
26 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark InPost — Earlier EU figurative marks INFOPOST and ePOST and earlier national word mark POST — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — No detriment to reputation and no dilution — Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001 — Evidence submitted for the first time before the Court)
In Case T-537/15,
Deutsche Post AG, established in Bonn (Germany), represented initially by M. Viefhues and T. Heitmann, and subsequently by M. Viefhues, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, G. Sakalaite-Orlovskiene and D. Walicka, acting as Agents,
defendant,
the other parties to the proceedings before the Board of Appeal of EUIPO, interveners before the General Court, being
Verbis Alfa sp. z o.o., established in Cracow (Poland),
and
EasyPack sp. z o.o., established in Cracow,
represented by M. Żabińska, A. Kockläuner and O. Nilgen, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 June 2015 (Case R 546/2014-1), relating to opposition proceedings between Deutsche Post, on the one hand, and Verbis Alfa and EasyPack, on the other.
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,
Registrar: G. Predonzani, Administrator,
having regard to the application lodged at the Court Registry on 14 September 2015,
having regard to the response of EUIPO lodged at the Court Registry on 18 March 2016,
having regard to the response of the interveners lodged at the Court Registry on 11 March 2016,
further to the hearing on 13 October 2017,
gives the following
Judgment
I.      Background to the dispute
1        On 18 July 2012, the company Inpost sp. z o.o., established in Poland, 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        Registration as a mark was sought for the following figurative sign:
–        Class 6: ‘Boxes and containers of metal for sorting, storing and dispensing parcels and mail’;
–        Class 9: ‘Automatic apparatus and parts therefor for sorting and dispensing parcels and mail, electronic notification systems’;
–        Class 35: ‘Advertising agencies, business enquiries, research surveys, direct mail advertising, dissemination of advertising matter, organisation of exhibitions for advertising or commercial purposes, sales promotion, online advertising on a computer network, rental of advertising space, publication of publicity texts, radio and television advertising, outdoor advertising’;
–        Class 39: ‘Transport, packing, storage and delivery of mail and parcels, courier services, postal services — delivery of addressed mail, delivery of goods by mail order, storage information, transport information’.
4        The trade mark application was published in Community Trade Marks Bulletin No 173/2012 of 11 September 2012.
5        On 21 November 2012, the applicant, Deutsche Post AG, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        German word mark POST, registered on 3 November 2003 under No 30012966 and renewed until 20 February 2020, designating services falling within Classes 35 and 39 and corresponding, for each of those classes, to the following description:
–        Class 35: ‘Postal, freight, express, parcel and courier services’;
–        Class 39: ‘Transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, direct and indirect mail advertising, books, Braille literature, newspapers, periodicals and brochures’;
–        The EU figurative trade mark, reproduced below, registered on 1 April 2008 under the number 005850193, covering goods and services in Classes 9, 35 and 39 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Magnetic data carriers; data processing equipment and computers; software and data processing programs; computer software for accessing information directories that may be downloaded from the global computer network; downloadable electronic files; mail management tools (software); computer programmes for document management; electronically stored printed matter, in particular for postal services, including postage stamps which can be acquired electronically or via online/internet services and printed out for dispatch purposes using computer devices; devices for the recording, transmission and playback of sound and images; downloadable publications’;
–        Class 35: ‘Computer database management; computerised database management services; brokerage of addresses and address files; providing of addresses; collecting, addressing, enveloping, folding and franking of goods, in particular letters, parcels and packages; advertising; marketing; direct marketing; business management services; business administration; business consultancy; office functions; updating of advertising material; computerised file management; publication of publicity texts; commercial information services; arranging and concluding of commercial transactions, including within the framework of e-commerce; arranging, and handling of contracts for the purchase and sale of goods and the use of services; distribution of samples; dispatch of advertisements; document reproduction; collating, systematic ordering, updating and storage of data in a computer database; order placement and invoice management, including within the framework of e-commerce; electronic commerce systems, namely the receiving and handling of electronically transmitted order transactions; electronic data processing, for others; systematisation and collating of data in computer databases, in particular management, updating, selection, formatting, analysing, renting and providing addresses or address files; electronic capture and electronic archiving of addresses or address files in computer databases; electronic data exchange for commercial transactions, in particular order transactions, invoicing, fund transfers, descriptions of goods; electronic processing; electronic archiving; commercial and organisational consultancy, in particular in the field of e-commerce; call centre services, namely the receiving of telephone orders and complaints, and information services in the field of advertising, marketing; storage of electronically-stored data or documents; data management on servers; digital image processing; digital data processing; technical consultancy in the field of e-commerce’;
–        Class 39: ‘Transport, in particular transport of goods by motor vehicle, lorry, rail, ship and aeroplane; packaging and storage of goods; transportation information; storage information; courier services; logistics in the transport sector; collection, transport and delivery of goods, in particular documents, packages, parcels, letters and pallets; freighting by ship, aeroplane, rail, motor vehicle and lorry; tracking by means of the electronic tracking of goods, in particular documents, packages, parcels, letters and pallets, included in class 39; letter, freight and express delivery services; providing information relating to handling, transport and logistics, in particular the handling of documents, letters, packages, parcels and pallets; providing information in databases in the field of the transport, packaging and storage of goods; consultancy in the fields of transportation and logistics; call centre services, namely the receiving of the telephone orders and complaints, and information services in the field of transport and storage of goods’:
–        The EU figurative trade mark, reproduced below, registered on 11 February 2005 under No 003280121, covering goods in Classes 35 and 39 and corresponding, for each of those classes, to the following description:
–        Class 35: ‘Advertising; collecting advertising materials for distribution; distribution of advertising materials, publicity materials and samples for advertising purposes; direct marketing’;
–        Class 39: ‘Transport; packaging and storage of goods; transport of consignments containing written information and/or documents, including enclosed objects; collection, forwarding and delivery of these consignments’:
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) in relation to all of the earlier rights. In addition, in respect of the earlier national word mark POST, the opposition was also based on Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
8        On 18 December 2013, the Opposition Division of EUIPO partially upheld the opposition on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the mark applied for and the earlier EU trade mark ePOST, namely with regard to the following services in Class 35: ‘Business enquiries, research surveys, organisation of exhibitions for commercial purposes’. Consequently, the EU trade mark application was rejected in respect of those services. The opposition on the basis of the earlier marks ePOST, POST and INFOPOST was rejected with regard to the remaining goods and services in Classes 9, 35 and 39.
9        On 17 February 2014, the applicant, on the basis of the earlier marks ePOST, POST and INFOPOST, 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 regarding the other goods and services in Classes 9, 35 and 39.
10      On 16 September 2014, the interveners, Verbis Alfa sp. z o.o. (established in Cracow, Poland) and EasyPack sp. z o.o. (established in Cracow), were entered in the register as the new proprietors of the EU trade mark application.
11      By decision of 26 June 2015 (Case R 546/2014-1) (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it considered that, although the signs at issue shared the word element ‘post’, they showed significant visual, aural and conceptual differences which were sufficient to rule out a likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009 or an association or mental link on the part of consumers under Article 8(5) of that regulation.
II.    Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision in so far as it dismisses the applicant’s appeal with regard to identical services;
–        order EUIPO to pay the costs.
13      EUIPO and the interveners contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
III. Law
A.      Subject-matter of the dispute
14      The applicant decided, in the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, to limit itself to raising two pleas concerning the assessment of likelihood of confusion, first, with the earlier national word mark POST and, secondly, with the earlier European Union figurative mark INFOPOST. It did, however, take the decision not to claim any further infringement of that Article in respect of the earlier European Union figurative mark ePOST.
15      The interveners, during the hearing, argued that the applicant’s claim was inadmissible in so far as, on the one hand, it was too broad since it did not reflect the limitation of the subject matter of the dispute in the present proceedings with respect to the earlier European Union figurative mark ePOST and, on the other hand, it was too vague since the applicant had not clearly defined what it meant by ‘identical services’. Furthermore, the interveners note that the action is inadmissible and unfounded on the basis of Article 8(5) of Regulation No 207/2009 in so far as the applicant has not demonstrated that the requirements of that provision were fulfilled.
16      The applicant disputes the interveners’ arguments.
17      It should be pointed out, in the first place, that the applicant seeks annulment of the contested decision, in so far as it dismisses its appeal with regard to identical services, which is possible irrespective of the number of opposition marks on which the appeal is based. For the action for annulment to be well founded, it is sufficient for the applicant to demonstrate that there is a likelihood of confusion between the mark applied for and one of the earlier marks for the services concerned (see, to that effect, judgments of 9 April 2014, Ferring v OHIM — Tillotts Pharma (OCTASA), T‑502/12, not published, EU:T:2014:192, paragraphs 72 and 73, and of 5 February 2015, Red Bull v OHIM — Sun Mark (BULLDOG), T‑78/13, not published, EU:T:2015:72, paragraphs 17 and 18). Secondly, it must be noted that, as the applicant rightly claims, the definition of identical services is apparent from the contested decision in which the EUIPO clearly identified them. In the third place, it is sufficient to note that the question whether the criteria of Article 8(5) of Regulation No 207/2009 are met in the present case does not depend on the admissibility of the action, but on its merits.
B.      Documents presented for the first time before the Court
18      The applicant presented, for the first time before the Court, two documents intended to show the enhanced distinctiveness of the earlier national word mark POST, namely a market survey carried out in October 2015 in German and its English translation in Annexes A.6 and A.7 to the letter of 12 February 2016.
19      EUIPO and the interveners challenge the admissibility of those documents.
20      The documents at issue, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, those documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
C.      Substance
21      The applicant raises two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and the second alleging infringement of Article 8(5) of that regulation.
1.      First plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
22      In support of the present plea in law, the applicant raises two complaints which, in essence, concern the error allegedly made by EUIPO in assessing the likelihood of confusion, on the one hand, between the mark applied for and the earlier national word mark POST and, on the other, between the mark applied for and the earlier EU figurative mark INFOPOST, with regard to identical services.
23      In essence, the applicant submits that the Board of Appeal disregarded, first, the enhanced distinctiveness of the earlier national word mark POST and of the earlier EU figurative mark INFOPOST and, secondly, the similarity between the signs at issue arising out of the dominant nature of the element ‘post’ in the mark applied for or, alternatively, out of the independent distinctive role of that element in that mark, and also out of the very low degree of distinctiveness of the preposition or prefix ‘in’ in the mark applied for.
24      EUIPO and the interveners dispute the applicant’s arguments.
25      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
26      According to the case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same 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).
27      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
28      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
29      The question whether the Board of Appeal was correct to conclude that there was no likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations. Moreover, it is appropriate to begin, as the Board of Appeal did, by assessing the likelihood of confusion as regards the earlier national word mark POST.
(a)    Likelihood of confusion between the mark applied for and the earlier national word mark POST
(1)    The reasoning of the contested decision
30      The applicant submits that the Board of Appeal addressed the issue of the distinctiveness of the earlier national word mark POST only in a single paragraph of the contested decision, in which it merely repeated the reasoning in the Opposition Division’s decision.
31      In that respect, despite the brevity of the Board of Appeal’s reasoning in relation to the distinctiveness of the earlier national word mark POST, as set out in paragraph 25 of the contested decision, according to which, ‘in the appeal proceedings, the [applicant] did not submit any new facts or arguments which could raise doubts in respect of [the] findings [that the word “post” had a low degree of distinctiveness, since] the German word “[p]ost” alludes to postal and related services’ and according to which ‘it is concluded that the earlier [national word] mark “POST” possesses a low degree of distinctiveness (judgment of 13 May 2015, Deutsche Post v OHIM — PostNL Holding(TPG POST), T‑102/14, not published, EU:T:2015:279)’, it is necessary to take into account the more detailed reasoning, in that respect, in the Opposition Division’s decision. Given that the Board of Appeal upheld that decision in its entirety and in view of the continuity in terms of functions between the Opposition Divisions and the Boards of Appeal, as demonstrated by Article 64(1) of Regulation No 207/2009 (now Article 71(1) of Regulation 2017/1001) (see, to that effect, judgment of 10 July 2006, La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraph 57), the Opposition Division’s decision and its reasoning are part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise fully its judicial review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64).
32      However, the Opposition Division, after having examined the evidence provided by the applicant, considered that the term ‘post’ was in itself devoid of distinctive character in respect of previous postal and related services and that the evidence produced by the applicant was sufficient to conclude that the degree of distinctiveness of the earlier national word mark POST acquired through use and sufficient recognition (‘Verkehrsgeltung’), in accordance with Article 8(3) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (Law on the Protection of Trademarks and Other Distinctive Signs), of October 25, 1994 (BGBl. 1994 I, p. 3082, ‘the MarkenG’), reached the minimum level to allow registration of that mark, which had a weak distinctive character. Moreover, it must be pointed out that the adequacy of the statement of reasons provided by the Opposition Division is not, in any event, contested by the parties.
(2)    The relevant public
33      It follows from the case-law that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
34      In that respect, first, it should be noted that the Board of Appeal rightly considered that the relevant public consisted, as regards the services in Class 39, of average members of the general public and, as regards all of the goods and services in question in Classes 6, 9, 35, 35 and 39, of a professional public. Secondly, the Board of Appeal’s assessment that the relevant public consists of consumers residing in Germany, since the earlier national word mark POST was registered in that Member State, must be confirmed. Thirdly, it must be noted that the Board of Appeal rightly considered that, for the purpose of the global assessment, the average consumer of the category of goods concerned was deemed to be reasonably well informed and reasonably observant and circumspect. Moreover, it must be pointed out that the Board of Appeal’s definition of the relevant public and the considerations relating to its level of attention are, in any event, not contested by the parties.
(3)    The comparison of the services
35      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
36      In the present case, the Board of Appeal considered, in agreement with the Opposition Division, that the contested ‘services of an advertising agency, services relating to the distribution of advertising materials, service[s] relating to the distribution of advertisements’, included in Class 35, and the contested ‘services relating to the transport, packaging, storage and delivery of packages and parcels, courier services, postal services — delivery of addressed items’, included in Class 39, were identical to the applicant’s services. Furthermore, the contested ‘advertising space rental services’ of the interveners Verbis Alfa and EasyPack, included in Class 35, were different from all of the applicant’s services in Classes 35 and 39. The other services covered by the mark applied for are similar to the applicant’s services.
37      That conclusion, which, moreover, is not disputed by the applicant, should be confirmed.
(4)    The comparison of the signs
38      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not 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).
39      The 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, concerning a figurative trade mark, 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42).
40      It should be added that, according to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (see judgment of 1 October 2014, Lausitzer Früchteverarbeitung v OHIM — Rivella International (holzmichel), T‑263/13, not published, EU:T:2014:845, paragraph 25 and the case-law cited).
41      In the present case, the Board of Appeal held that the signs at issue were visually, aurally and conceptually similar to a certain extent, since they shared the word element ‘post’, but differed on account of the black and yellow envelope symbol and the word element ‘in’ at the beginning of the mark applied for.
42      The applicant submits, however, that the earlier national word mark POST and the mark applied for have a high degree of similarity on account of the identical reproduction of the common element ‘post’. It maintains that the figurative element of the mark applied for, by contrast, is not distinctive with regard to the relevant services and that the word element ‘in’ does not lead to significant differences between the signs at issue. On the contrary, according to settled case-law, the very fact that a later mark consists exclusively of an earlier mark and a further word element is an indication that the two trade marks are similar.
43      EUIPO and the interveners dispute the applicant’s arguments.
44      As regards the visual comparison, it must be pointed out, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
45      In that regard, it must be noted, as the Board of Appeal did, that the two signs at issue are similar, in so far as they coincide in the group of letters ‘post’, which is the only element in the earlier national word mark POST, but that they differ on account of the figurative element and the word element ‘in’ at the beginning of the mark applied for. Furthermore, visual differences result from the way the different elements of the figurative mark are arranged.
46      Accordingly, the Board of Appeal rightly considered that the signs at issue were similar to a low degree, but had significant visual differences, despite the common element ‘post’, taking into account the figurative element and the word element ‘in’ which are present only in the mark applied for.
47      That finding is not called into question by the applicant’s arguments. Although it is true that the figurative element of the mark applied for may be seen as referring to postal services, the fact remains that the degree of distinctiveness of the (stylised) symbol of the black and yellow envelope is significantly higher than that of the ‘post’ element. Consequently, it contributes substantially to differentiate the marks which, moreover, present the other differences mentioned above with regard to the style of the group of letters ‘post’ and the word element ‘in’.
48      As regards, next, the aural comparison of the signs at issue, it must be found that the Board of Appeal rightly found that the pronunciation of the marks at issue coincided in the pronunciation of the term ‘post’ and differed in the pronunciation of the additional word element ‘in’ in the mark applied for. In so doing, the Board of Appeal rightly found that the two marks were similar to a low degree (see, to that effect, judgment of 20 February 2018, Deutsche Post v EUIPO — bpost (BEPOST), T‑118/16, unpublished, EU:T:2018:86, paragraph 44).
49      Contrary to the applicant’s assertions, its argument, raised in the context of the aural comparison of the signs, according to which the very fact that a later mark consists exclusively of an earlier mark and a further word element is, according to settled case-law, an indication that the two trade marks are similar (judgments of 4 May 2005, Reemark v OHIM — Bluenet (Westlife), T‑22/04, EU:T:2005:160, paragraph 40, and of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 28) cannot be accepted.
50      That case-law cannot enable a definitive conclusion to be drawn in the present case. As the Board of Appeal rightly stated, the word element ‘in’ at the beginning of the word element ‘inPost’ in the mark applied for is of particular importance, since, unlike the term ‘post’, the word element ‘in’ does not refer to the services in question and, therefore, contributes substantially to differentiating the marks.
51      Finally, as regards the conceptual comparison of the signs at issue, the Board of Appeal’s finding that the signs at issue are similar to a low degree should be confirmed, since they convey the meaning of the word ‘post’, which in the mark applied for is recognisable as an (independent) term on account of the capital letter ‘P’, but nevertheless differs significantly in that the word element ‘in’ at the beginning of the mark applied for has, for the reasons indicated in paragraph 50 above, particular importance in the overall assessment. In that respect, the Board of Appeal noted that the terms ‘in’ and ‘post’ were represented without a separation so as to form the compound word ‘inpost’. The word element ‘post’ in the mark applied for, when combined with the group of letters ‘in’, is understood by the relevant public as a reference to ‘postal/post services’. Unlike the term ‘post’, the word element ‘in’ does not allude to the goods and services in question.
52      That finding is not called into question by the applicant’s arguments that the Board of Appeal made contradictory statements and should have found, in the absence of elements establishing conceptual differences, that there was a high degree of conceptual similarity between the signs at issue.
53      In that respect, in order, in the first place, to reject the argument alleging contradictory reasoning in the contested decision, it suffices to note that the Board of Appeal specified that, unlike the term ‘post’, the word element ‘in’ does not allude to the services in question. In addition, it correctly added that the position of the element ‘in’ at the beginning of the word element ‘inpost’ of the mark applied for was such as to make it dominant, in accordance with the case-law that the relevant public normally attached more importance to the first part of words (judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 50). Furthermore, it is necessary to confirm the Board of Appeal’s finding that the word element ‘post’ in the mark applied for will not be perceived as a reference to the earlier national word mark POST, but rather, in conjunction with the word element ‘in’, merely as a reference to postal services (see also, to that effect, judgment of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 69).
54      In the second place, the application of the rule that the public normally pays more attention to the beginning of trade marks, which was relied on by the Board of Appeal as regards the word element ‘in’, must be rejected as unfounded, given that that element is a preposition and a prefix which is omnipresent in the German language and consequently has a very low degree of distinctiveness.
55      Indeed, as EUIPO rightly points out, the word element ‘in’ is used neither as a preposition nor as a prefix in the mark applied for. Use as a preposition would require a definite article ‘die’ or ‘der’ with the meaning ‘in the letter/post office (‘in der Post’) or with the meaning ‘enter the post office’ (‘in die Post gehen’). In any event, since the combination of the elements ‘in’ and ‘post’ is grammatically unusual for the German consumer, who may not necessarily perceive it as an expression with meaning, as the applicant itself rightly argues, that combination has a rather abstract meaning. The use of a prefix is also excluded, as the German term ‘post’ preceded by the prefix ‘in’, namely the term ‘inpost’, does not exist.
56      In view of the foregoing, it must be concluded that the Board of Appeal rightly considered that the signs at issue had a low degree of similarity, but showed, despite the common element ‘post’, significant visual, aural and conceptual differences.
(5)    The likelihood of confusion
57      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
58      With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of 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 (see judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35 and the case-law cited).
59      The Board of Appeal considered that, even with regard to the identical services, there was no likelihood of confusion between the earlier national word mark POST and the mark applied for on the part of the relevant public, since the differences between the signs were sufficient to rule out any likelihood of confusion as regards those services. According to the Board of Appeal, since the German word ‘post’ alludes to postal services and related services, the Opposition Division rightly concluded that the earlier national word mark POST possessed a low degree of distinctiveness. It maintains that, in the appeal proceedings, the applicant did not submit any new facts or arguments which could raise doubts in respect of those findings. By contrast, since the word element ‘in’ in the mark applied for does not refer to the services in question and is placed at the beginning of the word element of the mark applied for, it is such as to make it dominant.
60      The applicant submits that a likelihood of confusion must be found between the marks at issue in view of, first, the identity or close similarity of the services and, secondly, the close similarity between the signs by virtue of the dominant character of the element ‘post’ or, even if it is assumed that the earlier national word mark POST is of weak distinctive character, at least by virtue of the independent distinctive role of that element. According to the applicant, that likelihood is all the more manifest given the enhanced distinctiveness of the earlier national word mark POST. The present case differs from the case that gave rise to the judgment of 13 May 2015, TPG POST (T‑102/14, not published, EU:T:2015:279) — on which the Board of Appeal relied in order to justify the finding that the earlier national word mark POST had a low degree of distinctiveness — since the Board of Appeal had more evidence, and more up-to-date evidence, before it when it adopted the contested decision.
61      EUIPO and the interveners dispute the applicant’s arguments.
62      It should be pointed out at the outset, first, that the applicant seeks annulment of the contested decision in so far as it rejects its appeal in respect of the identical services in Classes 35 and 39 for which the earlier national word mark POST is registered and those in the same classes covered by the mark applied for. In addition, the signs at issue are, from the perspective of the relevant public, similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences.
63      It must therefore be found that the Board of Appeal rightly concluded that there was no likelihood of confusion.
64      In that respect, despite certain resemblances between the signs at issue, the different overall impression produced by the marks as a result of the additional word and figurative elements — which have no counterpart in the earlier national word mark POST and are more distinctive than the word element ‘post’ which, in the mark applied for, is not likely to bring to mind an association with the applicant — cannot be offset, in the context of the global assessment of the likelihood of confusion, by the fact that the services in question are identical, since the identity of the services is not sufficient to support the finding that there is a likelihood of confusion (see, to that effect, judgment of 5 October 2005, Bunker & BKR v OHIM — Marine Stock (B.K.R.), T‑423/04, EU:T:2005:348, paragraph 76).
65      The conclusion that there is no likelihood of confusion cannot be called into question by the series of arguments put forward by the applicant.
66      As regards, in the first place, the argument that it should be found that there is a likelihood of confusion in the present case because of the enhanced distinctiveness of the earlier national word mark POST, the Board of Appeal’s conclusion that that mark had a low degree of distinctiveness, rather than enhanced distinctiveness, must be confirmed.
67      Although it must be acknowledged, in the light of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 47), that the element ‘post’ has some independent distinctive character because of the registration of the sign POST as an earlier national word mark, that does not mean, however, that that element has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that element (judgment of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 43). The mere fact that the earlier national word mark POST reached the threshold required to be registered as a trade mark at the national level does not mean that the element ‘post’ has acquired enhanced distinctiveness or a reputation in respect of the applicant’s services (see, to that effect, judgment of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 68).
68      As regards paragraph 40 of the judgment of the Bundesgerichtshof (Federal Court of Justice, Germany) of 22 April 2010 (I ZR 17/05, GRUR 2010, 1103, paragraph 40 — Pralinenform II), relied on by the applicant, according to which trade marks which have been registered by virtue of their acceptance by the relevant public are normally deemed to have average distinctiveness, it must be borne in mind that it follows from settled case-law that registrations already made in the Member States are a factor which may only be taken into consideration, without being given decisive weight, for the purposes of registering an EU trade mark (judgment of 16 February 2000, Procter & Gamble v OHIM (Soap bar shape), T‑122/99, EU:T:2000:39, paragraph 61). The same considerations apply to cases decided by the courts of the Member States (judgment of 19 September 2001, Henkel v OHIM (Round red and white table), T‑337/99, EU:T:2001:221, paragraph 58).
69      As the Board of Appeal rightly submits, and contrary to the applicant’s assertions, the latter did not put forward, either in the opposition proceedings or in the appeal proceedings, any new facts or arguments capable of raising doubts in respect of the abovementioned findings.
70      As regards the consumer surveys presented before the Opposition Division on 17 April 2013 in support of the applicant’s opposition, it must be noted that those surveys were carried out from 2002 to 2005. In that context, it cannot be ruled out that a considerable number of consumers no longer associate the word ‘post’, without any additional element, exclusively with the applicant, given the significant liberalisation of the market for postal services in the European Union (judgment of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 69).
71      In view of the foregoing, the Board of Appeal rightly found that the word element ‘in’ did not allude to the services in question and that it was dominant by virtue of its position at the beginning of the verbal component of the mark applied for.
72      In any event, even if the earlier national word mark POST has enhanced distinctiveness, that cannot compensate for the fact that there is no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009, in view of the visual, aural and conceptual differences between the marks at issue (see, to that effect, judgment of 8 October 2014, Laboratoires Polive v OHIM — Arbora & Ausonia (dodie), T‑122/13 and T‑123/13, not published, EU:T:2014:863, paragraph 63 and the case-law cited). Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgments of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70, and of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 70)
73      In the second place, the Court cannot accept the applicant’s argument, based on the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), that even if the element ‘post’ were not dominant within the mark applied for, it nevertheless has an independent distinctive role which gives rise to a similarity between the signs at issue.
74      In that respect, it must be borne in mind that, in the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), the Court of Justice held that, where the goods or services are identical, there may be a likelihood of confusion on the part of the public if the sign at issue 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.
75      The principle thus established by the Court of Justice in the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), cannot be applied in the present case. Since the term ‘post’ is likely to be seen as a mere reference to ‘postal services’ in the mark applied for, it cannot be considered to be distinctive. The common element ‘post’ does not play the same role in the two marks at issue. Because of the different overall impression given by the marks as a result of the additional word and figurative elements, which have no counterpart in the earlier national word mark POST and which are more distinctive than the word element ‘post’, that entirely descriptive element in the mark applied for is not likely to bring to mind an association with the applicant.
76      The same arguments apply as regards the applicant’s assertion that, even if it were considered that the term ‘post’ has a weak distinctive character, there would still be a likelihood of confusion.
77      Admittedly, a finding that the earlier mark has a weak distinctive character would not preclude a finding that there is a likelihood of confusion.
78      However, in the present case, the Board of Appeal rightly found that the word element ‘post’ in the mark applied for, when combined with the element ‘in’, was understood by the relevant public as a reference to ‘postal/post services’. Unlike the word ‘post’, the word element ‘in’ does not allude to the services in question. In addition, the element ‘in’ is dominant by virtue of its position at the beginning of the mark applied for, in accordance with the case-law that the relevant public normally attaches more importance to the first part of words (see, to that effect, judgments of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 10 December 2008, METRONIA, T‑290/07, not published, EU:T:2008:562, paragraph 50).
79      Furthermore, the applicant submits that the colours black and yellow are an integral part of the applicant’s corporate identity and that it follows that the public will associate the figurative element of the mark applied for with the applicant. That argument, which also concerns the applicant’s assertion that there is a family of marks with the colour yellow as the common element, is not, however, as the Board of Appeal argues, substantiated by any relevant evidence.
80      In view of the foregoing, it must be concluded that, as the Board of Appeal found, no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, may be established in the present case between the mark applied for and the earlier national word mark POST.
(b)    Likelihood of confusion between the mark applied for and the earlier EU figurative mark INFOPOST
(1)    The relevant public
81      The Board of Appeal’s assessment that the relevant public is composed of consumers in the European Union, since the earlier EU figurative mark INFOPOST is an EU trade mark, must be confirmed. Moreover, it must be pointed out that the Board of Appeal’s definition of the relevant public is not, in any event, contested by the parties.
(2)    The comparison of the services
82      In this respect, it should be noted that the Board of Appeal found that, with the exception of ‘publication of publicity texts’ covered by the mark applied for and included in Class 35 and ‘storage information, transport information’ covered by the mark applied for and included in Class 39, the other services included in Classes 35 and 39 covered by the mark applied for were identical to the services covered by the earlier European Union figurative mark INFOPOST. Those services are as follows: ‘advertising agencies, business enquiries, research surveys, direct mail advertising, dissemination of advertising matter, organisation of exhibitions for advertising or commercial purposes, sales promotion, online advertising on a computer network, rental of advertising space, publication of publicity texts, radio and television advertising, outdoor advertising’ included in Class 35, and ‘transport, packing, storage and delivery of mail and parcels, courier services, postal services — delivery of addressed mail, delivery of goods by mail order’, included in Class 39.
83      That conclusion of the Board of Appeal should be confirmed, which, moreover, is not disputed by the applicant.
(3)    The comparison of the signs
84      The Board of Appeal considered, in paragraphs 48 to 56 of the contested decision, that the mark applied for InPost and the earlier EU figurative mark INFOPOST were similar to a certain extent but that they showed significant visual, aural and conceptual differences, despite the fact that they both contained the element ‘post’. According to the Board of Appeal, those differences are even greater than those between the earlier national word mark POST and the mark applied for, since the word element ‘info’ at the beginning of the earlier EU figurative mark INFOPOST will be understood by the relevant public as meaning ‘information’, which thus creates a conceptual difference between it and the mark applied for.
85      The applicant argues, however, that the mark applied for and the earlier EU figurative mark INFOPOST are highly similar visually and aurally and are of at least average conceptual similarity.
86      EUIPO and the interveners dispute the applicant’s arguments.
87      In that respect, it is necessary to confirm the Board of Appeal’s conclusion that the mark applied for and the earlier EU figurative mark INFOPOST are similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences.
88      Visually, although the marks share the element ‘post’ and the letters ‘in’, the overall visual impression is different. The signs differ on account of the black and yellow envelope symbol and the fact that the first word element of the earlier EU figurative mark INFOPOST is ‘info’, whereas the first word element of the mark applied for is ‘in’. Furthermore, there are visual differences resulting from the different colours and typefaces used and the way in which those elements of the figurative marks are arranged.
89      As regards the aural comparison, the signs coincide in the pronunciation of the word elements ‘in’ and ‘post’ and differ in the pronunciation of the second additional syllable ‘fo’ in the earlier figurative European Union mark INFOPOST. That syllable, contrary to what the applicant claims, is not ‘drowned’ because of its position in the middle of the earlier European Union figurative mark INFOPOST. As an additional syllable, it changes the pronunciation from a word with two syllables to a word with three syllables, forming the independent word ‘info’ which conveys its own meaning.
90      Conceptually, the word element ‘info’ in the earlier EU figurative mark INFOPOST will be understood by the relevant public as meaning ‘information’, which represents a conceptual difference between it and the mark applied for.
91      In the light of the foregoing, it must be concluded that the Board of Appeal rightly considered that the signs at issue were similar to a low degree, since, despite their common element ‘post’, they showed significant visual, aural and conceptual differences.
(4)    The likelihood of confusion
92      The Board of Appeal considered that, although the distinctive character of the two word elements ‘info’ and ‘post’ in the earlier EU figurative mark was weak, since they alluded to the services in Classes 35 and 39, for which the earlier EU figurative mark INFOPOST was registered, that mark nevertheless possessed a certain degree of distinctiveness in relation to the relevant services, as a result of the way those elements were arranged. It nevertheless concluded that, even for identical services, the differences between the signs were enough to rule out any likelihood of confusion.
93      The applicant submits, however, that in view of the high degree of visual and aural similarity of the signs at issue, and their at least average conceptual similarity, the Board of Appeal should have found, with regard to identical services, a likelihood of confusion between the mark applied for and the earlier EU figurative mark INFOPOST. Both marks are dominated by the element ‘post’, which refers to the applicant’s trade marks of the same name that, for the German public, are associated exclusively with the applicant and enjoy a very high degree of recognition. On the other hand, the distinctive character of the elements ‘in’ and ‘info’ is weak. Even if it were assumed that the shared element ‘post’ has a low degree of distinctive character, that element would still have an independent distinctive role.
94      EUIPO and the interveners dispute the applicant’s arguments.
95      It is necessary, in the first place, to confirm the Board of Appeal’s assessment that the distinctive character of the two word elements ‘info’ and ‘post’ of the earlier EU figurative mark INFOPOST is weak, since they allude to the services in Classes 35 and 39 in respect of which that mark is registered. The distinctive character of the earlier EU figurative mark INFOPOST lies in the specific combination of individually non-distinctive elements. Consequently, and contrary to the applicant’s assertion, the element ‘post’ is not the foremost element which the German public, or the relevant European public, will retain conceptually in their memory. On the contrary, the word elements ‘info’ and ‘in’ at the beginning of the signs at issue particularly need to be taken into account, since the relevant public normally attaches more importance to the first part of words (judgments of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 10 December 2008, METRONIA, T‑290/07, not published, EU:T:2008:562, paragraph 50).
96      As regards, in the second place, the likelihood of confusion with the earlier EU figurative mark INFOPOST, it must be pointed out at the outset, first, that the applicant seeks annulment of the contested decision in so far as it rejects its appeal in respect of the identical services in Classes 35 and 39 for which the earlier national word mark POST is registered and those in the same classes covered by the mark applied for. In addition, the signs at issue are similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences.
97      The Board of Appeal correctly concluded that there was no likelihood of confusion. In view of the different overall impression given by the marks on account of additional word and figurative elements which have no counterparts in the other mark, the common element ‘post’, which has a weak distinctive character, is not enough to support the conclusion that there is a likelihood of confusion.
98      In that respect, the conclusion that there is no likelihood of confusion cannot be called into question by the applicant’s argument that the mark applied for as well as the earlier EU figurative mark INFOPOST are dominated by the element ‘post’, since it refers to the applicant’s mark of the same name which, for the German public, is exclusively associated with the applicant’s company and has a high degree of recognition. As already demonstrated in paragraph 75 above, the common element ‘post’ in the two marks does not play the same role in the marks at issue. By virtue of the different overall impression given by the marks, that entirely descriptive element in the mark applied for is not likely to bring to mind an association with the applicant. Although it must be acknowledged, in the light of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 47), that the element ‘post’ has some independent distinctive character because of the registration of the sign POST as an earlier national word mark, that does not mean, however, that that element has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that element (judgments of 13 May 2015, TPG POST, T‑102/14, not published, EU:T:2015:279, paragraph 43, and of 27 June 2017, Deutsche Post v EUIPO — Media Logistik (PostModern), T‑13/15, not published, EU:T:2017:434, paragraph 45).
99      For the same reasons, since the term ‘post’ is likely to be seen as a mere reference to postal services in the mark applied for, that entirely descriptive element does not have an independent distinctive role within the meaning of the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594).
100    It follows from all the foregoing that the first plea must be rejected.
2.      Concerning the second plea, alleging an infringement of Article 8(5) of Regulation No 207/2009
101    The applicant submits that the Board of Appeal wrongly concluded that the relevant public would not establish any link between the mark applied for and the earlier national word mark POST.
102    EUIPO and the interveners dispute the applicant’s arguments.
103    Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2 of that article, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
104    For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM — Minoronzoni(TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).
105    More specifically, the fourth of the conditions for the application of Article 8(5) of Regulation No 207/2009 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
106    The existence of a link between the mark applied for and the earlier mark is an essential condition for the application of Article 8(5) of Regulation No 207/2009. The harm referred to in that provision, where it occurs, is the consequence of a certain degree of similarity between the mark applied for and the earlier mark, by virtue of which the public concerned makes a connection between them, that is, establishes a link between them. The existence of that link must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 47 and the case-law cited).
107    In that respect, in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655, paragraph 42), the Court of Justice stated, as regards Article 4(4)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which is essentially identical to Article 8(5) of Regulation No 207/2009, that the factors mentioned in paragraph 106 above included:
–        the degree of similarity between the conflicting marks;
–        the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
–        the strength of the earlier mark’s reputation;
–        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
–        the existence of the likelihood of confusion on the part of the public.
108    In the judgment of 10 December 2015, El Corte Inglés v OHIM (C‑603/14 P, EU:C:2015:807, paragraph 43), the Court of Justice stated that, if the examination of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 shows that there is some similarity between the signs at issue, the General Court must, in order to ascertain whether the conditions for the application of paragraph 5 of that article are satisfied, examine whether, on account of the presence of other relevant factors such as the renown or reputation of the earlier mark, the relevant public is capable of establishing a link between those signs.
109    The Board of Appeal considered that the relevant public would not establish any link between the mark applied for and the earlier national word mark POST, given that the German word ‘post’ was a generic term widely used to denote postal services and related services. It then referred, in that respect, to the finding that there was no likelihood of confusion between the mark applied for and the earlier national word mark POST.
110    The applicant argues that the Board of Appeal did not assess globally, in the sense indicated in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), the issue of the link between the earlier national word mark POST and the mark applied for. Repeating, in that respect, its line of argument concerning the likelihood of confusion between the mark applied for and the earlier national word mark POST, the applicant submits that it is hardly conceivable that the relevant public will not make any link between those marks. It maintains that the description of the term ‘post’ as a generic term fails to have regard to the fact that the earlier national word mark POST is a mark which was registered on account of the distinctive character which it acquired through use, the longstanding nature of which use also confers enhanced distinctive character on that mark, and that the spelling of the term ‘post’ with a capital letter ‘P’ in the mark applied for means that that term is emphasised as an independent concept in that mark.
111    EUIPO and the interveners dispute the applicant’s arguments.
112    In the present case, it must first of all be noted that the comparison of the signs at issue shows that there is some similarity between them. As stated in paragraph 56 above, the mark applied for and the earlier national word mark POST are similar to a low degree, since, despite their common element ‘post’, they show significant visual, aural and conceptual differences. In view of those significant differences and in view of the weak distinctive character of the common element ‘post’, it is necessary to confirm the Board of Appeal’s conclusion that the relevant public will not make any link between the mark applied for and the earlier national word mark POST, since the term ‘post’, in the context of the mark applied for, is likely to be perceived merely as a reference to postal services.
113    The applicant’s complaint, according to which the Board of Appeal, by describing the term ‘post’ as a generic term, did not take account of the trade mark value of the applicant’s earlier national word mark POST, overlooks the fact that the Board of Appeal rightly made a distinction between the German term ‘post’ and the earlier national word mark POST. It has already been pointed out that the registration of that mark at the national level does not mean that that term, which, moreover, is also used as a prefix meaning ‘after’, has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that term (see paragraph 67 above). The applicant’s argument is intended, wrongly, to limit the use of the term ‘post’ to only those postal services covered by the earlier national word mark POST. Furthermore, EUIPO submits, without being contradicted by the other parties, that that intention is incompatible with the aims of national or EU legislation in the field of trade marks.
114    Since the applicant criticises the Board of Appeal for not carrying out the global assessment required by the case-law, it should be pointed out that all of the other factors which had to be evaluated as regards the link between the mark applied for and the earlier national word mark POST were examined in the context of the examination of the likelihood of confusion between those marks, namely the degree of similarity between the marks and the services as well as the degree of distinctive character of the earlier national word mark POST, which was considered to be weak. Furthermore, the link between the respective trade marks, including the issue of an encroachment on the reputation of the earlier national word mark POST, was analysed in detail by the Opposition Division, the reasoning of which was endorsed by the Board of Appeal in the contested decision.
115    Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.
IV.    Costs
116    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.
117    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the interveners.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Deutsche Post AG to pay the costs.
Kanninen
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 26 June 2018.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.