JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
5 March 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark Enedo RESHAPING ELECTRICITY – Earlier EU word mark ENEDIS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Restriction of the goods and services covered in the trade mark application )
In Case T‑1144/23,
Enedo Oyj, established in Vantaa (Finland), represented by H.-M. Elo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Enedis, established in Paris (France), represented by C. Verneret and J.‑B. Micard, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, I. Dimitrakopoulos and B. Ricziová (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Enedo Oyj, seeks the annulment and the alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 September 2023 (Case R 191/2023-4) (‘the contested decision’).
Background to the dispute
2        On 29 November 2019, the predecessor in law to the applicant, Efore Oyj, filed an application for registration as an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covered the goods and services in Classes 9, 37, 40 and 42 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, which correspond, for each of those classes, to the following description:
–        Class 9: ‘Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for controlling electricity; Electric and electronic components; Measuring, detecting and monitoring instruments, indicators and controllers’;
–        Class 37: ‘Maintenance, repair and installation of apparatus and equipment for electricity charging and storage, electricity control devices and equipment, electrical and electronic components, measuring devices, monitoring and surveillance devices, sensors and controls; Charging of electric vehicles’;
–        Class 40: ‘Sub-assembly of components; Custom assembling of materials for others’;
–        Class 42: ‘Science and technology services; Technological research; Scientific services and design relating thereto; Technological services and design relating thereto; Scientific research; Software design and development; Design and development of computer hardware; Industrial analysis and research services’.
4        In the application for registration, the applicant claimed the following colours: dark blue and red.
5        On 10 March 2020, the intervener, Enedis, filed a notice of opposition 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, inter alia, earlier EU word mark No 15 300 536, ENEDIS, filed on 4 April 2016 and registered on 12 August 2019, covering goods and services in, inter alia, Classes 9, 12, 37, 40 and 42 relating, in particular, to the field of energy and electricity.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).
8        On 29 November 2022, the Opposition Division upheld the opposition.
9        On 24 January 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion for a non-negligible part of the relevant public.
Forms of order sought
11      The applicant claims that the General Court should:
–        annul the contested decision and reject the opposition in its entirety;
–        order EUIPO to pay the costs incurred by the applicant, including those incurred in the proceedings before the Board of Appeal.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that an oral hearing is convened.
13      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant alleges an infringement of Article 8(1)(b) of Regulation 2017/1001, in so far as the Board of Appeal considered that there was a likelihood of confusion.
15      It is appropriate, as a preliminary point, to examine the impact of the restriction of the list of goods and services covered by the mark applied for.
The restriction of the goods and services covered by the mark applied for
16      On 7 December 2023, the applicant submitted to EUIPO a request to restrict the list of goods and services covered by the mark applied for.
17      On 16 January 2024, EUIPO notified the applicant that its request to restrict the list of goods and services covered by the mark applied for could not be granted since the disclaimer sought lacked clarity and precision.
18      On 8 February 2024, following an additional request for restriction, EUIPO approved the restriction of the list of goods and services covered by the mark applied for.
19      The applicant requests, in essence, that the Court take into account the restriction of the list of the goods and services in question. Since the restriction has been approved, the mark applied for covers the following goods:
–        Class 9: ‘Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for controlling electricity; Electric and electronic components; all of the aforesaid goods only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’;
–        Class 37: ‘Maintenance, repair and installation of apparatus and equipment for electricity charging and storage, electricity control devices and equipment, electrical and electronic components; all of the aforesaid services only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’;
–        Class 40: ‘Sub-assembly of components; Custom assembling of materials for others; all of the aforesaid services only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’;
–        Class 42: ‘Technological services and design relating thereto; all of the aforesaid services only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’.
20      EUIPO submits that the restriction of the list of goods and services covered by the mark applied for does not consist of mere deletions and it is possible that the narrowing down of the relevant public to a professional public might have an impact on the assessment of the case. Accordingly, in its view, that restriction must not be taken into consideration for the purpose of reviewing the legality of the contested decision, since that would change the subject matter of the dispute in the course of the proceedings before the Court. EUIPO adds that, by the same token, all of the applicant’s arguments that are based on that restriction must be considered ineffective. The intervener also submits, in essence, that the restriction in question cannot be taken into account in the proceedings before the Court.
21      In that regard, it should be recalled that, under Article 49(1) of Regulation 2017/1001, the applicant may at any time withdraw its EU trade mark application or restrict the list of goods or services contained therein.
22      In accordance with 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 for the trade mark 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 EU 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 not affected by that restriction (see judgment of 21 February 2024, Hoffmann v EUIPO – Moldex/Metric (Holex), T‑767/22, not published, EU:T:2024:108, paragraph 21 and the case-law cited).
23      Where, in contrast, 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 v OHIM – Ensinger (TECALAN), T‑100/14, not published, EU:T:2015:251, paragraph 32 and the case-law cited).
24      In the present case, it is appropriate to note that the restriction of the list of goods and services covered by the mark applied for has two aspects. The first aspect of that restriction concerns Classes 9, 37 and 42 and consists in a mere withdrawal of certain goods and services from that list, namely ‘Measuring, detecting and monitoring instruments, indicators and controllers’ in Class 9, ‘[Maintenance, repair and installation of] measuring devices, monitoring and surveillance devices, sensors and controls; Charging of electric vehicles’ in Class 37 and ‘Science and technology services; Technological research; Scientific services and design relating thereto; Scientific research; Software design and development; Design and development of computer hardware; Industrial analysis and research services’ in Class 42. In accordance with the case-law cited in paragraph 22 above, that withdrawal may be taken into consideration by the Court.
25      The second aspect of the restriction concerns all of the classes covered in the trade mark application, namely Classes 9, 37, 40 and 42, and consists in the addition of the indication that all the goods and services referred to in those classes, after the withdrawal referred to in paragraph 24 above, are only for professionals in certain sectors, thus limiting the target public to professionals in specific sectors. That second aspect of the restriction is therefore such as to change the factual context, within the meaning of the case-law cited in paragraphs 22 and 23 above, to which the Board of Appeal’s examination related. Consequently, that second aspect of the limitation cannot be taken into account by the Court in the present case for the purpose of examining the legality of the contested decision.
26      Accordingly, it is necessary to take into account the restriction at issue only to the extent that the applicant, in essence, no longer seeks the annulment of the contested decision in so far as it relates to the goods and services referred to in paragraph 24 above.
The single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
27      The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 in finding that there was a likelihood of confusion within the meaning of that provision. The applicant alleges, in essence, an incorrect assessment, first, of the relevant public and its level of attention, secondly, of the comparison of the goods and services in question, thirdly, of the comparison of the signs at issue, fourthly, of the distinctive character of the earlier mark, and fifthly, of the likelihood of confusion in the context of the global assessment.
28      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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.
29      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
30      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public and its level of attention
31      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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).
32      In the present case, the Board of Appeal found that the goods and services in question targeted mainly the specialised public and also the general public, whose level of attention might vary from average to higher than average. More specifically, as regards the goods in question in Class 9, the Board of Appeal stated that they are most often aimed at a professional public which displays a higher degree of attention, however, occasionally, some consumers from the general public also purchase those goods. According to the Board of Appeal, the goods in question in Class 9 relate to two categories of goods, for the first of which, included in the general term of measuring instruments, the level of attention of the general public is average. The remainder of the goods in Class 9 requires a higher level of attention, from both the general public and the professional public. In respect of the goods covered by the earlier mark in Class 12, the Board of Appeal stated that they targeted the general public and the professional public, whose level of attention is particularly high. Lastly, as regards the services in question in Classes 37, 40 and 42, it found that they were aimed at the professional public which displays a high level of attention. Furthermore, in its view, the relevant territory is the territory of the European Union and the Board of Appeal bases its assessment on a non-negligible part of the English-speaking professional public in the European Union.
33      The applicant alleges that, following the restriction of the list of goods and services covered by the mark applied for, only the professional public in the field of goods and services related to the energy sector which displays a significantly high level of attention with regard to the marks at issue must be taken into consideration when assessing the likelihood of confusion. Therefore, the findings in paragraphs 34, 62, 65, 71, 87, 90, 92, 97, 99 and 104 of the contested decision, relating to the general public or (average) consumers, regardless of their level of attention, would no longer be relevant in the assessment. Moreover, the applicant’s argument concerns the perception or understanding of the relevant public throughout the European Union, and not only in the English-speaking part.
34      EUIPO and the intervener dispute the applicant’s arguments.
35      It should be observed that, for the reasons set out in paragraphs 21 to 26 above, the second aspect of the restriction of the list of goods and services covered by the mark applied for, which limited the target public to professionals in specific sectors, cannot be taken into account by the Court.
36      Furthermore, the terms ‘consumer’ or ‘average consumer’ in paragraphs 62, 65, 71, 87, 90, 92, 97, 99 and 104 of the contested decision, which follow paragraph 37 of the contested decision, which limits the assessment to the non-negligible part of the English-speaking professional public of the European Union with an above-average level of attention in all cases, are not used in the sense of ‘general public’ but in the sense of ‘relevant public’.
37      Consequently, the applicant’s arguments concerning the relevant public and its level of attention, based solely and completely on that second aspect of the restriction, must be rejected as ineffective.
38      Furthermore, in so far as the applicant’s argument could be interpreted as challenging the limitation of the Board of Appeal’s assessment to a non-negligible part of the English-speaking professional public of the European Union, suffice it to point out that it does not follow from Article 8(1)(b) of Regulation 2017/1001 that, for an EU trade mark to be refused registration under that provision, the likelihood of confusion must exist in all Member States and in all the linguistic areas of the European Union (see, to that effect, judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraph 56). Therefore, 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 2017/1001 exists in part of the European Union (judgment of 11 February 2020, Dalasa v EUIPO – Charité – Universitätsmedizin Berlin (charantea), T‑732/18, not published, EU:T:2020:43, paragraph 16). Therefore, the applicant’s argument must be rejected.
Comparison of the goods and services in question
39      According to the contested decision, the goods covered by the mark applied for in Class 9 are either identical or highly similar to those covered by the earlier mark in the same class. The services covered by the mark applied for in Class 37 are either at least highly similar or similar to an average degree to the goods and services covered by the earlier mark in the same class or in Class 12. The services covered by the mark applied for in Class 40 and the services covered by the earlier mark in Class 37 are similar to an average degree. The services covered by the mark applied for in Class 42 are identical or at least highly similar or similar to an average degree to the services covered by the earlier mark in the same class.
40      The applicant submits that, after the restriction of the list of goods and services covered by the mark applied for, the marks at issue cover only partly identical and partly similar goods in Class 9 and only similar services in Classes 37, 40 and 42, with most of the compared services being similar only to an average degree. It claims that the goods and services covered by the mark applied for are aimed at and sold only to professionals.
41      EUIPO and the intervener dispute the applicant’s arguments.
42      It should be noted that the applicant’s arguments are entirely based on the restriction of the list of goods and services covered by the mark applied for. However, to the extent that, on the one hand, the first aspect of the restriction must be interpreted as a statement that the applicant no longer seeks annulment of the contested decision in so far as it relates to the goods and services referred to in paragraph 24 above and, on the other hand, the second aspect of that restriction, for the reasons set out in paragraphs 21 to 26 above, cannot be taken into account by the Court, those arguments must be rejected as ineffective.
43      In any event, it must be found, as EUIPO did, that the applicant’s unsupported and undeveloped arguments are not capable of calling into question the comparison of the goods and services covered by the marks at issue carried out by the Board of Appeal.
44      Accordingly, the applicant’s arguments concerning the comparison of the goods and services in question must be rejected.
Comparison of the signs at issue
45      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks 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 this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
46      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. 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, paragraphs 41 and 42).
47      In the present case, before addressing the question of the visual, phonetic and conceptual comparison of the marks at issue, it is necessary to examine the assessment of the distinctive and dominant elements of those marks carried out by the Board of Appeal.
–       The distinctive and dominant elements of the marks at issue
48      The Board of Appeal observed that, since the earlier mark was written as a single word without any visual separations ‑ such as a hyphen ‑ and was perceived as a whole, a significant part of the relevant public will perceive it as a single unit which has no particular meaning to that part of the public, and that, accordingly, that mark was distinctive to a normal degree. In addition, in its view, the meaning of the elements ‘ene’ and ‘dis’ will not be grasped immediately, at least for the vast majority of the relevant public, and the evidence submitted by the applicant does not show at all how the relevant public perceives the elements ‘ene’ and ‘dis’ and their potential meanings.
49      However, according to the Board of Appeal, it is apparent from the evidence submitted that part of the professional public in the energy sector could be led, on account of the very specific goods and services, to perceive the prefix ‘ene’ in the signs at issue as referring to the English term ‘energy’. Therefore, a certain part of the English-speaking relevant public might break down the earlier mark into two elements, ‘ene’ and ‘dis’, especially in relation to goods and services relating to the distribution of energy, and perceive them as meaningful elements alluding to the terms ‘energy’ and ‘distribution’. For that part of the relevant public, the earlier mark will therefore have a weak distinctive character in relation to the goods and services in question.
50      Nevertheless, according to the contested decision, the applicant failed to demonstrate that the whole of the relevant public would adopt an identical approach without exception and perceive the meanings of the word elements ‘ene’ and/or ‘dis’. The Board of Appeal found that at least a non-negligible part of the English-speaking professional public in the European Union will not see any of the abovementioned meanings in the signs at issue and will perceive the words ‘enedis’ of the earlier mark and ‘enedo’ of the mark applied for as meaningless distinctive words.
51      Since a likelihood of confusion for a non-negligible part of the relevant public is sufficient to reject the application for registration, the Board of Appeal focused the comparison of the signs on that part of the relevant public for which the signs and their parts are meaningless and distinctive. That part of the public is not likely, according to the Board of Appeal, to break down the elements ‘enedo’ and ‘enedis’ into two or more elements. In addition, those elements have no element that could be considered as dominant.
52      According to the Board of Appeal, the word element ‘enedo’ does not convey any meaning for the relevant public, just as the red figurative element of the mark applied for conveys no meaning in relation to the goods and services concerned. They are therefore distinctive to a normal degree. Given their size and prominent position, the Board of Appeal considers that they are co-dominant in the mark applied for.
53      The Board of Appeal also considered that the slight stylisation, font type and blue colour of the word elements of the mark applied for are fairly standard and serve a rather decorative function. Therefore, they do not add any particular distinctive character. The Board of Appeal considers that the word elements ‘reshaping electricity’, placed below the other elements of the mark applied for, are smaller in size than the other two elements and difficult to read, that the words ‘reshaping’ and ‘electricity’ will be perceived by the English-speaking public as a whole as having a meaning, and that, because they are placed on one line and are of the same size, the relevant public will perceive them as one and the same unit. Furthermore, first, since the products and services in question are related to or require electricity for their operation and, secondly, since the term ‘reshaping’ is understood as the gerund of the verb ‘to reshape’ meaning ‘to shape something new or differently’, the expression ‘reshaping electricity’ as a whole is understood as a promotional laudatory message. The purpose is to highlight the positive aspects of the goods and services in question, namely that they consist in reformulating electricity. The Board of Appeal therefore attributed a weak distinctive character to that expression.
54      In that regard, the applicant claims, first, that the Board of Appeal failed to consider that the relevant public, in all of the European Union and not only in the English-speaking part, will perceive the prefix ‘ene’ in the signs at issue as referring to the word ‘energy’ for the goods and services in question, in all relevant languages used within the European Union, and that that prefix therefore has low distinctive character, so that the findings relating to a non-negligible part of the professional public not comprehending that meaning in the signs are clearly incorrect.
55      Secondly, according to the applicant, it has not failed to demonstrate that the highly aware professional public in the field of goods and services relating to the energy sector in the territory of all the Member States, and not only in the English-speaking part thereof, will perceive, at least, the meaning of the word element ‘ene’ as referring to the word ‘energy’, regardless of the language, if not also the meaning of the element ‘dis’, present in the earlier mark, as referring to the word ‘distribution’, so that the impact of such elements on the assessment is limited. Accordingly, the element ‘ene’ would be weakly distinctive. In addition, it argues, the list of goods and services covered by the mark applied for is now restricted to covering only the goods and services relating to energy or electricity.
56      In that regard, according to the applicant, in the present case, the general public is no longer the relevant public and the opposite conclusion should therefore be drawn as regards the relevant public that is common to the goods and services in question, namely the professional public in the field of goods and services relating to the energy or electricity sector. The findings regarding the non-negligible part of the professional public would no longer be relevant in the Court’s assessment. The highly attentive professional public should be regarded as perceiving the components in question as separate elements, since the element ‘ene’ would have, in the present case, a clear and evident meaning for the professional public as referring to energy or electricity, while the element ‘do’ would mean ‘to do’ or ‘to act’ in English and the element ‘dis’ would refer to ‘distribution’ in many languages used within the European Union. The elements ‘ene’ and ‘dis’ would have, therefore, a low degree of distinctive character. Furthermore, the applicant claims that those different endings ‘dis’ and ‘do’ attract more attention from the professional public and are sufficient to safely distinguish the signs at issue in the minds of the highly attentive professional public, even in the case of identical goods or services.
57      As regards other elements of the mark applied for, the applicant submits that the Board of Appeal correctly stated that the red figurative element is not related to the goods and services in question and is, therefore, distinctive. According to the applicant, since that element is presented in a bright red colour and is the same size as the word ‘enedo’, the figurative element dominates the perception of the sign at least as much as the word element. It disputes that the remaining word elements ‘reshaping electricity’ of the mark applied for would be perceived as a promotional laudatory message. It submits that the word ‘electricity’ is coupled with the word ‘reshaping’ which is not commonly used to express the qualities of the goods and services in question. Accordingly, the applicant submits, in essence, that that element is distinctive.
58      EUIPO and the intervener dispute the applicant’s arguments.
59      As a preliminary point, in so far as the applicant’s arguments could be interpreted as challenging the limitation of the Board of Appeal’s assessment to a non-negligible part of the English-speaking professional public of the European Union, it is sufficient to refer to paragraph 38 above.
60      Next, when considering the applicant’s arguments concerning the distinctiveness of the elements of the marks at issue taken as a whole, it must be noted that they are based largely on the restriction of the list of goods and services covered by the mark applied for. The applicant claims in particular that ‘now the list of goods and services covered by the [mark applied for] is limited to covering only goods and services related to energy [or] electricity’, that ‘[i]n this case, the [general public] is, however, no longer the relevant public and thus the conclusion should be opposite concerning the relevant public that is common to the goods and services at issue, i.e. the professional public within the field of goods and services relating to energy sector’ and that ‘the considerations regarding the non-negligible part of the professional public no longer have relevance in the assessment’. However, as apparent from paragraphs 21 to 26 above, the first aspect of the restriction must be interpreted as a statement that the applicant no longer seeks the annulment of the contested decision in so far as it relates to the goods and services referred to in paragraph 24 above and the second aspect of that restriction cannot be taken into account by the Court.
61      The latter finding concerning the second aspect of the restriction also applies for the arguments relating to the dominant character of the word elements of the marks at issue, where the applicant claims that ‘contrary to what is stated in the Contested Decision (paragraph 87) [, the principle that] “consumers generally take more note of the beginning of a sign rather than of its end”, does not apply to the current circumstances where the relevant public consisting solely of professionals pay more attention to the different endings of the compared signs in the current case’, that ‘[t]his highly attentive professional public should be considered as analysing a mark in [its] various details and will perceive the components in question as separate elements’; that ‘[t]he different endings “dis” [and] “do” are sufficient to safely distinguish the signs in the minds of the highly attentive professional public’, or that, ‘especially for such professionals[,] the component “ene” has […] limited relevance in the assessment[,] so the different endings “dis” [and] “do” are sufficient to safely distinguish the signs’.
62      In addition, it must be noted, first, as EUIPO observed, that, as regards the elements ‘ene’ and ‘dis’, the applicant has submitted neither specific and supported argument nor any evidence supporting the conclusion that the relevant part of the relevant public will immediately perceive those elements as references to the terms ‘energy’ and ‘distribution’. The applicant’s arguments listing the translations of the words ‘energy’ and ‘distribution’ in various languages or stating that the word ‘energy’ has a common Latin origin in many EU languages demonstrate nothing as regards the relevant public’s understanding of the elements ‘ene’ and ‘dis’.
63      Secondly, concerning the group of letters ‘do’ in the mark applied for, the applicant merely indicates its meaning in English which, in its view, is widely understood within the professional public which speaks at least a basic level of English, without, however, referring to any evidence in that regard.
64      Thirdly, the applicant relies, in support of its arguments, on examples of decisions of the Boards of Appeal of EUIPO; examples of registered marks containing the elements ‘ene’ or ‘dis’ in the energy or electricity sector or examples of various company names in the energy sector. However, on the one hand, it should be borne in mind that the legality of the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation 2017/1001, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO (see, to that effect, judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 48; and of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
65      On the other, the examples referred to in paragraph 64 above are either very distinct from the marks at issue or, like those of marks and company names beginning with the letters ‘ene’ or containing the element ‘dis’, not conclusive in so far as they do not necessarily reflect the situation in the market.
66      In that regard, it should be recalled that the relevant factor for the purposes of disputing the distinctive character of an element is its actual presence on the market and not its having been entered in registers or databases (see, to that effect, judgment of 30 January 2018, Arctic Cat v EUIPO – Slazengers (Representation of a member of the cat family jumping to the right), T‑113/16, not published, EU:T:2018:43, paragraph 55). The registration of a trade mark does not in itself imply that it is actually used on the market or that it is used in respect of all the goods covered by the registration in question, which is why additional evidence demonstrating its actual use on the market is essential in that context (see, to that effect, judgment of 6 March 2024, Drinks Prod v EUIPO – Coolike-Regnery (VIVIASEPT), T‑796/22, not published, EU:T:2024:153, paragraph 46). In the present case, the evidence submitted by the applicant does not establish the presence on the market of the marks it relies on as examples or that, on the basis of those marks and company names, the relevant public would perceive the groups of letters ‘ene’ and ‘dis’ as referring, respectively, to the words ‘energy’ and ‘distribution’.
67      Fourthly, it should be noted that the applicant does not contest, in essence, the Board of Appeal’s assessment that the red figurative element has a normal distinctive character and is co-dominant with the word element ‘enedo’.
68      Fifthly, the applicant’s arguments are not capable of calling into question the Board of Appeal’s finding that the word elements ‘reshaping electricity’ in the mark applied for would be perceived as a promotional laudatory message. There is no reason why the word ‘reshaping’ could not be used in conjunction with the word ‘electricity’ to express the qualities of the goods and services in question. Since an advertising slogan normally has only a weak distinctive character (judgment of 30 March 2022, SFD v EUIPO – Allmax Nutrition (ALLNUTRITION DESIGNED FOR MOTIVATION), T‑35/21, not published, EU:T:2022:173, paragraph 63), it must be concluded that that is also the situation in the present case as regards the word elements ‘reshaping electricity’.
69      In the light of the foregoing, the applicant has not succeeded in calling into question the findings of the Board of Appeal in paragraphs 71 to 86 of the contested decision.
70      Accordingly, the applicant’s arguments concerning the distinctive and dominant character of the elements of the marks at issue must be rejected.
–       The visual similarity
71      The Board of Appeal found that the marks at issue are visually similar to an average degree. It relied, in that regard, on various elements, namely the first four letters ‘e’, ‘n’, ‘e’ and ‘d’ of the elements ‘enedo’ and ‘enedis’, which are common to both and are placed in the same position at the beginning of the earlier mark and of the element ‘enedo’, and on the fact that the difference between the final part of those word elements was not such as to attract the consumer’s attention any more than the part appearing at the beginning and the end of the marks at issue. As regards the other elements of the mark applied for, the Board of Appeal relies, first, on the fact that the word elements ‘reshaping electricity’ are depicted in a much smaller size, below the word element ‘enedo’ and the red figurative element, and that, therefore, they play a much less important role than the word element ‘enedo’ in the overall impression created by the mark applied for. Next, as regards the presence of the red figurative element of the mark applied for, it notes that, where a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by citing their name than by describing the figurative element of the mark. Finally, the Board of Appeal finds that the difference between the marks at issue stemming from the presence in the mark applied for of a figurative element does not make it possible to rule out, in itself, a visual similarity between the signs at issue, in particular, in the light of the similarities relating to certain word elements of those marks.
72      The applicant states that the marks at issue coincide in their initial part ‘ene’ meaning ‘energy’, but that they have different final parts, namely ‘dis’ and ‘do’, and that their length is also different. According to the applicant, in respect of word marks which are relatively short, the central elements are as important as the elements at the beginning and end of the sign. In addition, in the present case, the relevant public, consisting solely of professionals, would pay more attention to the different endings.
73      The applicant also submits that the marks at issue differ as regards their word elements ‘reshaping electricity’ and their figurative elements, including the font of the word elements ‘enedo’ and ‘enedis’. The Board of Appeal failed to take proper account of the impact of the red figurative element on the overall perception of the sign, which is presented in a bright red colour, creating a contrast with the word elements of the sign, which are dark blue. It states that previous EUIPO practice has established that differing visual elements can contribute to creating an overall differing visual impression that should be taken into account in the assessment of the likelihood of confusion. The red figurative element is presented in the same size as the word ‘enedo’ as a result of which the figurative element dominates the perception of the sign at least as much as the word element. The stylisation, position and colour of the figurative element of the sign, along with the other differences between the marks at issue, create an overall differing visual impression that would be remembered by the relevant consumers. Thus, according to the applicant, taking into account the fact that the relevant professional public in this case is considered to be very attentive and will recognise the descriptive concept in the marks at issue, the visual difference created by the figurative element is likely to be alone sufficient to distinguish the signs. It further submits that the word elements ‘reshaping electricity’ could not be regarded as wholly insignificant in the overall impression produced by the mark applied for. The marks at issue are visually different.
74      EUIPO and the intervener dispute the applicant’s arguments.
75      In the present case, as the Board of Appeal states in the contested decision, the marks at issue have in common and in the same position the first four letters ‘e’, ‘n’, ‘e’ and ‘d’ of the elements ‘enedo’ and ‘enedis’. The earlier mark and the first word element of the mark applied for differ only in their shorter final section, the earlier mark adding the two letters ‘i’ and ‘s’ to those first four letters and the first word element of the mark applied for adding a single letter, namely ‘o’. Therefore, while the applicant refers to the case-law concerning the central elements of marks, it must be observed that the earlier mark and the first word element of the mark applied for share not only the first two letters but also the two letters which make up the central part, namely the letters ‘e’ and ‘d’.
76      In addition, even though the length of the earlier mark differs from that of the first word element of the mark applied for, it differs by only one letter since they are composed of six and five letters respectively.
77      It must be noted that the similarities set out in paragraph 75 above prevail over the differences between the marks at issue.
78      First, the differences between the elements ‘enedo’ and ‘enedis’ are limited to the shorter final parts. They are not such as to attract more attention from the relevant public than the longer common initial part.
79      Secondly, it should be noted, as the Board of Appeal submits, that the light stylisation, font and blue colour of the word elements of the mark applied for are relatively standard and serve rather a decorative function, and thus do not add any particular distinctive character.
80      Thirdly, it should be noted, as the Board of Appeal also submits, that the word elements ‘reshaping electricity’ are presented in a much smaller size, below the word element ‘enedo’ and the red figurative element. They are therefore of apparently secondary importance in the overall impression created by the mark applied for.
81      Fourthly, as regards the red figurative element of the mark applied for, it should be borne in mind that, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name of the trade mark than by describing its figurative element (judgment of 10 November 2021, AC Milan v EUIPO – InterES (ACM 1899 AC MILAN), T‑353/20, not published, EU:T:2021:773, paragraph 83). Accordingly, even though the red figurative element and the word element ‘enedo’ both constitute co-dominant elements of the mark applied for with normal distinctive character, the fact remains that the word element is likely to have a more pronounced impact on the relevant public’s perception of the mark (see, to that effect, judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31), particularly since the element ‘enedo’ occupies the most space in the mark applied for and appears at the beginning of the sign.
82      Furthermore, in addition to the fact that the decision-making practice of EUIPO is not binding on the Court (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65), the example put forward by the applicant, where different visual elements may contribute to creating an overall differing visual impression, is far removed from the present case.
83      In the light of the foregoing and the fact that the applicant’s arguments concerning the relevant public and its level of attention and the distinctive and dominant character of the elements of the marks at issue, on which it also relies in part in the visual comparison, have been rejected in paragraphs 35 to 38 and 59 to 70 above, the applicant has not succeeded in calling into question the Board of Appeal’s finding that the marks at issue are visually similar to an average degree.
84      Accordingly, the applicant’s arguments concerning the visual comparison must be rejected.
–       The phonetic similarity
85      According to the Board of Appeal, the figurative and stylised element of the mark applied for will not be pronounced and the public will generally pay more attention to the beginning of the signs. It concludes that the fact that no account is taken of the figurative element in the phonetic comparison of the signs at issue makes the similarities between the signs stand out more clearly than in the visual comparison. It also notes that the marks at issue coincide in the sound of their first four common letters, namely ‘e’, ‘n’, ‘e’ and ‘d’. They differ in the sound of the fifth letter ‘o’ in the first word element of the mark applied for and in the sound of the fifth and sixth letters ‘i’ and ‘s’ in the earlier mark. As regards the word elements ‘reshaping electricity’, they would not be pronounced by a significant part of the relevant public due to their size and position within the mark applied for, since consumers tend to shorten signs and only refer to the dominant elements in a mark. Even if the English-speaking part of the relevant public were to pronounce them, the resulting phonetic differences would not offset the similarities linked to the common sound of the letters ‘e’, ‘n’, ‘e’ and ‘d’, which would be pronounced identically. However, according to the Board of Appeal, any phonetic differences are not of such importance that they could prevail over the phonetic similarities between the marks at issue. It concludes that the marks have an above-average degree of phonetic similarity.
86      The applicant states that the signs coincide as regards their initial part ‘ene’ meaning ‘energy’, but they differ as regards their endings, namely ‘dis’ and ‘do’, as well as the word elements ‘reshaping electricity’. Their length and pronunciation are different. The marks at issue were phonetically different.
87      EUIPO and the intervener dispute the applicant’s arguments.
88      It should be noted, first, that the figurative and stylised element of the mark applied for is not pronounced. Likewise, it must be noted, as the Board of Appeal argues, that the word elements ‘reshaping electricity’ will not be pronounced by a significant part of the relevant public due to their size and position in the mark applied for since consumers will tend to shorten the signs (see, to that effect, judgments of 11 January 2013, Kokomarina v OHIM – Euro Shoe Group (interdit de me gronder IDMG), T‑568/11, not published, EU:T:2013:5, paragraph 44, and of 3 July 2013, GRE v OHIM – Villiger Söhne (LIBERTE american blend against a red background), T‑206/12, not published, EU:T:2013:342, paragraphs 43 and 44).
89      Secondly, the first word element of the mark applied for and the earlier mark have an identical syllabic structure consisting of three syllables, namely ‘e’, ‘ne’ and ‘dis’ for the earlier mark and ‘e’, ‘ne’ and ‘do’ for the first word element of the mark applied for. They have a sequence of similar vowels (e-e-i) and (e-e-o), of which the first two are common and coincide in the pronunciation of their common first four letters, namely ‘e’, ‘n’, ‘e’ and ‘d’.
90      Thirdly, the applicant’s arguments concerning the distinctive and dominant character of the elements of the marks at issue, on which it also partially relied for the phonetic comparison, have been rejected in paragraphs 59 to 70 above.
91      The applicant has therefore not succeeded in calling into question the Board of Appeal’s finding that the phonetic differences between the marks at issue are not of such a significance that they could prevail over their similarities, or that board’s conclusion that those marks have an above-average degree of phonetic similarity.
92      Accordingly, the applicant’s arguments concerning the phonetic comparison must be rejected.
–       Conceptual similarity
93      According to the Board of Appeal, the earlier mark does not convey any meaning for the relevant public and, in the mark applied for, the relevant public would understand the concept conveyed by the expression ‘reshaping electricity’, albeit weakly. The Board of Appeal concluded that the marks at issue were not conceptually similar. However, since the expression ‘reshaping electricity’ was only weakly distinctive, it would have very little impact on the conceptual perception for the English-speaking part of the relevant public.
94      The applicant claims that the signs at issue are conceptually different. In its view, the letter combination ‘dis’ may be perceived to mean ‘distribution’ in many languages used within the European Union. Furthermore, the part ‘do’ is a very basic English word meaning ‘to do something’ or ‘to act’ and is widely understood within the professional public which speaks at least a basic level of English. It adds, in essence, that the word elements ‘reshaping electricity’ contribute to making the marks at issue conceptually different.
95      EUIPO and the intervener dispute the applicant’s arguments.
96      In that regard, it must be recalled that the applicant’s arguments concerning the distinctive and dominant character of the elements of the marks at issue, on which it also partially relied for the conceptual comparison, have been rejected in paragraphs 59 to 70 above. In particular, the applicant has not succeeded in calling into question the Board of Appeal’s finding that, first, a significant part of the relevant public will perceive the earlier mark as a single unit which has no particular meaning to that part of the public, and the earlier mark is therefore distinctive to a normal degree, secondly, at least a non-negligible part of the English-speaking professional public in the European Union will perceive the words ‘enedis’ of the earlier mark and ‘enedo’ of the mark applied for as meaningless distinctive words and, thirdly, that part of the relevant public is not likely to break down the elements ‘enedo’ and ‘enedis’ into two or more elements.
97      The earlier mark must therefore be regarded as conveying no meaning for the relevant public.
98      On the other hand, it must be held, as the Board of Appeal submits, that in the mark applied for, the word elements ‘reshaping electricity’ convey a concept that will be understood by the relevant public. Consequently, the marks at issue are not conceptually similar. The applicant does not contest, in essence, those findings.
99      However, it is necessary to add, as did the Board of Appeal, that since the expression ‘reshaping electricity’ is only weakly distinctive, it has very little impact on the conceptual perception by the English-speaking part of the relevant public.
Distinctive character of the earlier mark
100    According to the Board of Appeal, the intervener had not explicitly claimed that its earlier mark had acquired reputation or enhanced distinctiveness through intensive use. The earlier mark as a whole would not convey any meaning in relation to the goods and services that it covers from the perspective of the public under analysis, that is to say, a non-negligible part of the English-speaking professional public that would not perceive the elements ‘ene’ and ‘dis’ as referring to ‘energy’ and ‘distribution’ in relation to the goods and services in question and would perceive the words ‘enedis’ of the earlier mark and ‘enedo’ in the mark applied for as meaningless distinctive words. Therefore, according to the Board of Appeal, the inherent distinctiveness of the earlier mark must be seen as normal, despite the fact that the remaining part of the relevant public may perceive the element ‘ene’ and potentially also the element ‘dis’ as having a low distinctive character due to the reference to the nature of the goods and services in question.
101    According to the applicant, for the professional part of the relevant public that understands the whole meaning of the earlier mark as ‘distribution of energy [or] electricity’, the right conferred by the earlier mark must be regarded as very limited due to its considerably low distinctive character. That public would break the earlier mark ENEDIS down into two elements, namely ‘ene’, which would be associated with energy, and ‘dis’, which would be associated with distribution. The earlier mark would therefore have a particularly low distinctive character.
102    EUIPO and the intervener dispute the applicant’s arguments.
103    In that regard, it is sufficient to note that, in so far as the applicant’s arguments concerning the distinctive and dominant character of the elements of the marks at issue were rejected in paragraphs 59 to 70 above, it is also necessary to reject, for the same reasons, its arguments concerning the distinctiveness of the earlier mark.
The likelihood of confusion
104    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).
105    The distinctive character of the earlier mark is also one of the relevant factors which must be taken into account in the context of the global assessment of the likelihood of confusion (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
106    In the present case, the Board of Appeal found that the inherent distinctiveness of the earlier mark must be seen as normal; that the goods and services in question were in part identical, in part highly similar and in part similar to an average degree; that the signs at issue were visually similar to an average degree, phonetically similar to an above-average degree and conceptually not similar. However, with regard to the latter aspect, it stated that, taking into account their weak distinctive character, the differing word elements ‘reshaping electricity’ had only a very limited impact on the conceptual perception for the English-speaking part of the relevant public.
107    The Board of Appeal therefore concluded that there was a likelihood that at least the part of the relevant public for which the earlier mark and the first word element of the mark applied for are meaningless and distinctive might believe that the goods and services covered by the earlier mark and those covered by the mark applied for are provided by the same undertaking or, as the case may be, by economically linked undertakings. It found, accordingly, that a likelihood of confusion could not be excluded, at least for that part of the relevant public, despite its higher level of attention for all the goods and services covered by the mark applied for.
108    The applicant disputes the existence of a likelihood of confusion. In its view, it cannot be accepted that the professional public within the relevant field of the goods and services in question, for which the word elements ‘enedo’ and ‘enedis’ have understandable meanings and are, therefore, not particularly, if at all, distinctive, might believe that the goods and services covered by the earlier mark and those covered by the mark applied for are provided by the same undertaking or by economically linked undertakings.
109    EUIPO and the intervener dispute the applicant’s arguments.
110    It must be observed that the applicant’s complaint is based on the premise that the Board of Appeal made multiple errors regarding the definition of the relevant public and its level of attention, the comparison of the goods and services in question, the comparison of the signs at issue and the assessment of the distinctive character of the earlier mark. However, as is apparent from the examination of the applicant’s arguments in paragraphs 31 to 103 above, those arguments do not make it possible to call the analysis of the Board of Appeal into question in that regard.
111    Therefore, the applicant has not presented any argument capable of invalidating the global assessment of the likelihood of confusion carried out by the Board of Appeal in the contested decision. In so far as, first, the goods and services covered by the mark applied for and those covered by the earlier mark are identical or at least very similar, very similar or similar to an average degree and, secondly, the marks at issue are visually similar to an average degree, phonetically similar to an above-average degree and conceptually not similar, but with a very limited impact of the different word elements ‘reshaping electricity’ on the conceptual perception for the English-speaking part of the relevant public, the inherent distinctiveness of the earlier mark being normal, it must be concluded, in accordance with the principle of interdependence, as the Board of Appeal observes, that there is a likelihood of confusion in the minds of part of the relevant public, despite that public’s high level of attention.
112    In the light of the foregoing, the applicant’s arguments concerning the global assessment of the likelihood of confusion should be rejected and, consequently, the action should be dismissed in its entirety, without it being necessary to rule on the applicant's arguments concerning the second earlier mark.
Costs
113    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.
114    Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, as applied for by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Enedo Oyj to bear its own costs and to pay those incurred by Enedis;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs;
Kowalik-Bańczyk
Dimitrakopoulos
Ricziová
Delivered in open court in Luxembourg on 5 March 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.