JUDGMENT OF THE GENERAL COURT (Third Chamber)
29 March 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark +music – Earlier national figurative mark + – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Enhanced distinctiveness of the earlier mark acquired through use)
In Case T‑344/21,
Plusmusic AG, established in Dietikon (Switzerland), represented by M. Maier and A. Spieß, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Groupe Canal +, established in Issy-les-Moulineaux (France), represented by M. Georges-Picot and C. Cuny, lawyers,
THE GENERAL COURT (Third Chamber),
composed, at the time of the deliberations, of G. De Baere, President, G. Steinfatt (Rapporteur) and S. Kingston, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 31 May 2022,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Plusmusic AG, seeks the annulment in part of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 April 2021 (Case R 1236/2020‑5) (‘the contested decision’).
Background to the dispute
2        On 15 November 2017, the applicant filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3        The mark applied for covered goods and services in Classes 9, 11, 25, 35, 37, 38, 41 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, corresponding, for each of those classes, to the following description:
–        Class 9: ‘Electronic apparatus for stage and event technology, in particular motor controls, signal splitting equipment for control signals or audio frequency signals; Scientific research and laboratory apparatus, educational apparatus and simulators; Apparatus, instruments and cables for electricity; Recorded content; Information technology, multimedia and photographic apparatus; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Safety, security, protection and signalling devices; Scientific and laboratory devices for treatment using electricity; Information technology apparatus; Computer databases; Software; Antennas and aerials as communications apparatus; Computer networking and data communications equipment; Broadcasting equipment; Image scanners; Printers; Photocopiers; Peripherals adapted for use with computers; Computers and computer hardware; Calculators; Display devices, television receivers and film and video devices; Image capturing and developing devices; Electric and electronic components; Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for controlling electricity; Photovoltaic apparatus for generating electricity; Antennas and aerials as components; Electrical circuits and circuit boards; Cables and wires; Lasers; Glasses, sunglasses and contact lenses; Optical enhancers; Sunglasses; Measuring, counting, alignment and calibrating instruments; Controllers (regulators); Sensors and detectors; Monitoring instruments; Remote control apparatus for controlling lighting; Electric control apparatus; File servers; Interfaces for computers; Video processors; Mini beam projectors; Light emitting diode displays; LED monitors; Digital projectors; Portable projectors; Remote controls for projectors; USB cables; Electrical cabling; Cable adapters; Electrical adapters; Plug adaptors; Jack plugs; Power distributors [electrical]; Camera tripods; Stands for photographic apparatus; Storage racks for computer discs; Radios; Training software; Computer hardware for the control of lighting; Apparatus and instruments for accumulating electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for transforming electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for conducting electricity; Apparatus for the transmission of images; Apparatus for the reproduction of images; Apparatus for recording images; Computers; Data processing equipment; Computer software; Parts and accessories for all the aforesaid goods, included in this class’;
–        Class 11: ‘Lighting apparatus and installations and stands for lighting apparatus and installations; Lighting apparatus, Lighting devices, electronic controlled light apparatus, Lighting apparatus and LED installations for the construction of lighting, sound, image and stage installations; LED luminaires; LED lighting fixtures; LED light machines; Projector lamps; Lighting and lighting reflectors; Electric lamps; Stage lighting apparatus; HID [high-intensity discharge] stage lighting fixtures; Computer controlled lighting apparatus; Spotlights; Electric track lighting units; Electric fairy lights; Laser light projectors; Light diffusers; Light projectors; Lighting panels; Luminaires; Stage lighting apparatus; Lighting installations; Parts and accessories for all the aforesaid goods, included in this class’;
–        Class 25: ‘Clothing; Headgear; Footwear; Baseball caps; Bandanas [neckerchiefs]; Cycling caps; Head scarves; Caps [headwear]; Headbands [clothing]; Knitted caps; Printed t-shirts; Gloves [clothing]; Wrist warmers; Scarves; Hooded pullovers; Jackets [clothing]; Sweaters; Neck scarves [mufflers]; Tee-shirts; Sweat shirts; Stockings; Sneakers; Parts and accessories for all the aforesaid goods, included in this class’;
–        Class 35: ‘Advertising; Business management; Business administration; Office functions; Advertising, marketing and promotional services; Business assistance, management and administrative services; Trade show and commercial exhibition services; Public relations services; Product demonstrations and product display services; Provision of advertising space, time and media; Event marketing; Organization of exhibitions for commercial or advertising purposes; Shows (Conducting business -); Organisation of trade fairs for commercial or advertising purposes; Conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; Retailing, mail order and wholesaling in relation to electronic apparatus for stage and event technology, lighting technology, and parts and fittings for stage and event technology, lighting technology, cables, plugs, power distributors, power supply units, accumulators, batteries and chargers, and transformers; Retailing, mail order and wholesaling in relation to stage fittings, lighting installations and lighting apparatus, stage components, platforms, transport and protective cases, furniture, stands, tripods and mounts, crossbeams, computer hardware and software, all the aforesaid goods in particular for stage and event technology, lighting technology; Retailing, mail order and wholesaling in relation to cleaning and care preparations, clothing, footwear, headgear, recorded sound recording carriers, software; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class’;
–        Class 37: ‘Construction of lighting apparatus for theatrical sets or television studios; Construction of stage scenery; Construction of sound, image and lighting technology for theatrical sets; Installation of lighting systems; Advisory services relating to the installation of lighting apparatus; Repair or maintenance of electric lighting apparatus; Providing information relating to the repair or maintenance of electric lighting apparatus; Repair or maintenance of electronic machines and apparatus; Electric appliance installation and repair; Installation of electric light and power systems; Computer hardware and telecommunication apparatus installation, maintenance and repair; Rental and maintenance of work platforms; Installation of lighting apparatus; Construction and erection of exhibition stands, stages and booths; Installation of audio-visual equipment; Advisory services relating to the installation of audio-visual equipment; Erection of temporary constructions for outdoor events; Construction of exhibition stands; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class’;
–        Class 38: ‘Telecommunication services; Advisory and consultancy services relating to wireless communications and wireless communications equipment; Computer communication and Internet access; News agencies; Digital transmission of data; Telephone and mobile telephone services; Communication by electronic means; Provision and rental of telecommunications facilities and equipment; Providing access to websites on the Internet or any other communications network; Providing access to Internet forums; Providing user access to computer programmes in data networks; Providing access to multimedia content online; Providing internet chatrooms; Access to content, websites and portals; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class’;
–        Class 41: ‘Tuition; Providing of training; Sporting and cultural activities; Gambling; Organisation of conferences, exhibitions and competitions; Provision of training courses; Provision of training courses; Arranging of displays for cultural purposes; Rental of lighting apparatus for theatre; Special event planning consultation; Rental of lighting apparatus for theatre; Rental of lighting apparatus for theatrical sets or television studios; Production of stage shows; Rental of stage lighting equipment; Rental of show scenery; Organising of stage shows; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class’;
–        Class 42: ‘IT services; Design services; Science and technology services; Software development, programming and implementation; Computer hardware development; IT consultancy, advisory and information services; Hosting services and software as a service and rental of software; IT project management; Rental of computer hardware and facilities; IT security, protection and restoration; Installation, repair and maintenance of computer software; Design services for exhibitions; Design of lighting systems; Technical planning and consulting in the field of light engineering; Technical planning and technical project management for the development of lighting equipment; Conducting technical project studies; Engineering project management services; Technical project planning; Technical consultancy in the field of light engineering; Research relating to technology; Scientific services and design relating thereto; Technological services and design relating thereto; Research services; Industrial analysis services; Industrial research; Software design and development; Design and development of computer hardware; Technical project studies; Technological consultation services; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.’
4        On 3 January 2019, the intervener, Groupe Canal +, filed a notice of opposition, pursuant to Article 46 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), to registration of the mark applied for in respect, inter alia, of all of the goods and services referred to in paragraph 3 above.
5        The opposition was based, inter alia, on the French figurative mark filed on 16 March 2009, registered on 21 August 2009 under No 3 636 873 and duly renewed, for goods and services in Classes 9, 25, 35, 38, 41 and 42, reproduced below:
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.
7        By decision of 11 May 2020, the Opposition Division rejected the opposition in its entirety.
8        On 17 June 2020, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal upheld the appeal in part. It annulled the decision of the Opposition Division and upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 in respect of all of the goods and services referred to in the application for registration with the exception of ‘retailing and wholesaling in relation to cleaning and care preparations’ in Class 35, which it found to be dissimilar to the goods and services covered by the earlier mark. As regards those services, the Board of Appeal also rejected the opposition in so far as it was based on Article 8(5) of Regulation 2017/1001.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision in part in so far as it upheld the opposition;
–        order EUIPO and the intervener to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to bear the costs;
–        in the alternative:
–        annul the contested decision in so far as it found that there was a likelihood of confusion in respect of the goods and services in Classes 11, 25, 35, 37 and 42;
–        dismiss the action in so far as it is directed against the assessment of the likelihood of confusion made in the contested decision with regard to the goods and services in Classes 9, 38 and 41;
–        order EUIPO to bear only its own costs.
12      The intervener submits that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including those incurred in the proceedings before EUIPO.
Law
13      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea in law is divided into three parts, alleging, first, an erroneous visual comparison of the signs; second, an erroneous assessment of the distinctive character of the earlier mark; and, third, an erroneous assessment of the likelihood of confusion.
The second part of the single plea in law, alleging an error in the assessment of the distinctive character of the earlier mark
14      By the second part of its single plea in law, the applicant submits that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by finding that the earlier mark had acquired through use a very high degree of distinctiveness, at least with respect to a television channel and the services directly linked thereto in Classes 38 and 41 and with respect to apparatus and instruments for television programme selection and programming, in particular set-top boxes in Class 9.
15      EUIPO and the intervener dispute the applicant’s line of argument.
16      In the contested decision, the Board of Appeal concluded that the earlier mark had acquired a high degree of distinctiveness through use. In that regard, it relied on a body of evidence adduced by the intervener showing, in essence, that the use of the earlier mark had been intensive and had lasted for several decades, the intervener having adduced a considerable amount of evidence, including annual reports, magazine articles, photos and screenshots, showing its activities in the audiovisual sector under the earlier mark and other marks containing the sign ‘+’. Among that evidence – which it found to be extensive – the fact, in particular, that the intervener had approximately 10 million subscribers throughout Europe, with its main customer base in France, indicated that the earlier mark and other marks containing the sign ‘+’ had acquired enhanced distinctiveness through extensive use, since a significant percentage of the French population necessarily received television entertainment through the intervener’s services. In order to establish the highly distinctive character of the earlier mark, the Board of Appeal also referred to several market surveys carried out in 2006, 2007, 2014 and May 2017, the last of which was carried out only six months before the filing date of the mark applied for.
17      According to the applicant, in the first place, the evidence adduced by the intervener does not demonstrate that a significant part of the relevant public is familiar with the earlier mark. On the contrary, in May 2017, just a couple of months before the mark applied for was filed, consumer awareness of the earlier mark amounted to only around 4%. Further, the Board of Appeal itself acknowledged in paragraphs 141 and 142 of the contested decision that the market surveys of 2006 and 2007 were rather outdated and that the figures regarding awareness of the sign ‘+’ were not particularly high. Furthermore, neither the sample of a mere 200 people in 2014, 20 of whom spontaneously associated the sign ‘+’ with the intervener and 22 of whom associated the earlier mark, representing a cross, with the intervener, nor the 40 people from a total sample of 1002 in 2006 and 2017, who cited ‘CANAL+’ in the survey, and, when asked specifically about a trade mark, the 10% of respondents, can be regarded as sufficient and representative to demonstrate the enhanced distinctiveness of the earlier mark.
18      According to case-law, for the purposes of assessing the acquisition of enhanced distinctiveness through use, account should be taken of factors such as the inherent characteristics of the earlier mark concerned, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by that mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of that mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 23). It is not possible to establish the existence of a higher than normal level of distinctiveness in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark at issue within the relevant section of the public. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened (judgment of 15 October 2020, Decathlon v EUIPO – Athlon Custom Sportswear (athlon custom sportswear), T‑349/19, not published, EU:T:2020:488, paragraph 69).
19      As summarised in paragraph 16 above, the Board of Appeal based its assessment of the use of the earlier mark on a body of information and evidence, without confining itself solely to an analysis of the market surveys submitted. It took into account, first, a set of 56 annexes submitted by the intervener in the proceedings before EUIPO relating to the earlier mark and, second, at the applicant’s request, it took into account the findings set out in invalidity proceedings brought against another mark, which were based on a considerable amount of evidence spread across 102 annexes. The Board of Appeal came to the conclusion that the documents submitted by the intervener give the impression of a coherent story and show an impressive amount of use of the earlier mark. In particular, it found that the intervener was a major player in the television business, especially in France, and that it carried on its activities under, inter alia, the earlier mark.
20      The applicant’s line of argument relating to surveys is not convincing. First, as regards the applicant’s assertion that case-law requires the trade mark to be recognised by at least 50% of consumers, it is sufficient to note that that requirement does not in any way follow from the case-law cited by the applicant in the application. As regards, in particular, the judgment of 17 April 2008, Ferrero Deutschland v OHIM (C‑108/07 P, not published, EU:C:2008:234, paragraph 53), in which the Court of Justice held that if a mark has a level of renown of more than 80%, this was sufficient for it to be concluded that it had a reputation, that does not mean, as EUIPO correctly points out, that if that level of renown had been considerably lower, that level would not have been regarded as corresponding to a significant part of the relevant public and as being sufficient to establish the existence of a reputation. In that regard, the Court has found that it is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character (see judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 24 and the case-law cited).
21      Second, the applicant has not substantiated its assertion that the surveys submitted by the intervener are not representative. Both the 2006 market survey (Annex 26 in the file relating to the proceedings before EUIPO) and the 2017 market survey (Annex 27 in the file relating to the proceedings before EUIPO) were based on a sample of 1 002 respondents. The applicant does not call into question the composition of those samples, which is set out in detail in the annexes. Nor does it criticise the methodology used in those surveys, in the context of which the participants in the surveys did indeed associate the earlier mark with the intervener without that mark being presented in relation to the goods or services for which it was used. As regards the applicant’s criticism of the 2014 survey (Annex 24 in the file relating to the proceedings before EUIPO) the Court notes that its sample comprised ‘200 respondents aged 18 to 69 years [who were] representative of the French population in terms of age, sex [profession and socio-professional category] and region’. In any event, the 2014 survey did not play a decisive role. In order for the Board of Appeal to reach its conclusion in paragraph 142 of the contested decision, it relied solely on the figures from the other surveys with samples that were clearly larger, in particular the most recent survey in 2017, which showed, as the intervener rightly states, that 4% of the respondents spontaneously established the link between the sign ‘+’ and the earlier mark. In addition, the Board of Appeal corroborated that conclusion with a view to demonstrating the existence of continuous awareness of that mark by referring to the 2006 and 2007 market surveys.
22      Third, as regards the relevance of the figures from the market surveys carried out in 2006 and 2007, although the Board of Appeal correctly classified them as being, as such, rather outdated for the purpose of establishing the reputation of the earlier mark at the time of the application for registration of the mark applied for in 2017, it stated, in paragraph 141 of the contested decision, that a document drawn up some time before or after the relevant date of the application for registration at issue might contain useful information in view of the fact that the reputation of a mark was in general acquired progressively, which the applicant does not dispute. It should be borne in mind that the duration of the use of the mark concerned and the intensity of that use are among the factors which, according to the case-law cited in paragraph 18 above, must be taken into account in assessing the distinctive character acquired through use of the earlier mark. The survey carried out in May 2017, that is to say, six months before the filing of the application for registration of the mark applied for, led to the same conclusion as the December 2006 market survey, according to which the amount of people who had spontaneously associated the sign ‘+’ with the earlier mark was also 4%, when the question asked was very general, that rate of recognition of the earlier mark having even reached a level of 10% when the respondents were asked, in 2006, in a more targeted manner, which trade marks came to mind. Even though the figures corresponding to the awareness of the sign ‘+’ were not particularly high, the Board of Appeal stated that the 2006 and 2007 surveys could have probative value when combined with the 2014 and 2017 surveys, in so far as they established continuous awareness of the earlier mark by the relevant French consumers.
23      Accordingly, on the basis of those surveys in conjunction with the multitude of other evidence adduced by the intervener across 102 annexes, the Board of Appeal was entitled to conclude, in paragraph 143 of the contested decision, that the evidence adduced showed that the use of the earlier mark had been intensive and had lasted for several decades.
24      In the second place, the applicant submits that a large part of the evidence adduced by the intervener does not mention the earlier mark. Other evidence shows use of the earlier mark in conjunction with another word or figurative mark of the intervener on social media. Therefore, no decisive conclusion can be drawn as to the level of consumer recognition of the earlier mark as an independent mark or as to its function of identifying the goods or services in respect of which registration was sought. As regards the ‘Le Cube’ multimedia box, the evidence adduced shows that it is sold by the intervener under the combined mark ‘+ Le Cube’, which was itself the subject of a separate registration, namely the trade mark registered with EU trade mark No 8 699 291.
25      In that regard, EUIPO correctly contends that it follows from case-law that a trade mark may have enhanced distinctiveness acquired through use even if it was used as part of, or in conjunction with, other signs, without it necessarily having to be used on its own as a standalone trade mark (see, by analogy, judgments of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30; of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 27; and of 10 November 2021, VF International v EUIPO – National Geographic Society (NATIONAL GEOGRAPHIC), T‑518/20, not published, EU:T:2021:784, paragraph 41). It is sufficient that, as a consequence of such use, the relevant class of persons actually perceives the product or service, designated exclusively by the mark applied for, as originating from a given undertaking (see, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30). In the present case, the intervener provided evidence that the earlier mark was used in the context of its activities in the television business, either on its own or as a part of or in conjunction with other signs. It also proved that the earlier mark, when it was used in the context of its goods and services, was recognised by the relevant public as being the mark of which it was the proprietor. By producing the market surveys referred to in paragraph 21 onwards above, the intervener provided evidence relating to the recognition of the earlier mark as such by the relevant public. To the extent that the earlier mark is frequently used in conjunction with other elements, it is that mark which serves as the common element between the marks used, such that the overlap and repetition observed facilitate the recognition of the origin of the goods and services. It is clear from the evidence that the combined signs that the intervener uses to refer to different television channels that it markets each follows the same pattern in that they combine a descriptive word, such as ‘cinema’, ‘sports’ or ‘series’, in white on a square background in a darker colour with the earlier mark partially covering the start of the descriptive element or positioned at the end of it. Moreover, the earlier mark appears to be all the more decisive for the purposes of recognising the origin of a product or service given that the element accompanying it is descriptive.
26      In the third place, according to the applicant, the use of the earlier mark, as a title of a magazine, does not demonstrate enhanced distinctiveness. Similarly, the use of the earlier mark in the context of a few of the intervener’s local pop-up stores in 2014 and 2015 does not demonstrate enhanced distinctiveness vis-à-vis the goods and services referred to in paragraph 3 above at the time when the application for registration of the mark applied for was filed.
27      Although it is apparent from paragraph 136 of the contested decision that the Board of Appeal took into account the evidence in Annexes 1 to 56, the Court notes that Annexes 20, 23, 48 and 49, referred to in that regard by the applicant in the application, are not expressly mentioned, with the exception of a single reference to Annex 20 in paragraph 139 of the contested decision. It follows that there is no indication as to the extent to which that evidence was decisive in the assessment of the enhanced distinctiveness of the earlier mark, in respect of which the Board of Appeal relied, in accordance with the case-law cited in paragraph 18 above, on a body of evidence adduced by the intervener to prove use of the earlier mark.
28      In the light of the foregoing, it must be concluded that the Board of Appeal did not make an error of assessment in finding that the earlier mark had acquired enhanced distinctiveness through use in relation to the goods and services in Classes 9, 38 and 41. The second part of the single plea in law must therefore be rejected.
The first part of the single plea in law, alleging an incorrect visual comparison of the signs at issue
29      By the first part of the single plea in law, the applicant complains that the Board of Appeal erred in finding that the signs at issue were visually similar to an average degree.
30      EUIPO and the intervener dispute the applicant’s line of argument.
31      In that regard, in the contested decision, the Board of Appeal concluded that the signs at issue were visually similar to an average degree. It found that the signs at issue both featured a figurative element representing a cross, that the earlier mark was almost entirely reproduced in the mark applied for and that that figurative element appeared at the beginning of that mark, namely in the part which was generally liable to attract the consumer’s attention. It found that the resulting similarity was not counteracted by the presence of the word ‘music’ in the mark applied for.
32      In the first place, the applicant claims that the Board of Appeal did not correctly weight the elements of the mark applied for.
33      First, the Court finds that the applicant’s argument that there is a contradiction in paragraph 116 of the contested decision is due to a misreading by the applicant of that decision. In that paragraph, the Board of Appeal did not, as the applicant has claimed, conclude that the earlier sign played an independent role in the mark applied for. On the contrary, according to what the Board of Appeal stated in the contested decision, it was apparent ‘that in the [sign applied for] the cross device [did] not play an independent role, and that it [was] attached to the word “MUSIC” following it’. That finding is consistent with the fact that, according to case-law, the element which constitutes the only element of a national mark has some distinctive character because it has been registered (see judgment of 7 May 2019, Sona Nutrition v EUIPO – Solgar Holdings (SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA), T‑152/18 to T‑155/18, not published, EU:T:2019:294, paragraph 40 and the case-law cited).
34      Second, according to the applicant, the Board of Appeal failed to acknowledge the fact that the element ‘music’ in the mark applied for was, on account of its size, the dominant visual element of the corresponding sign, whereas the element ‘+’, which was smaller and had a weak level of distinctiveness, was overall negligible in the impression created by the mark applied for. The Board of Appeal also failed to take into account the relative position of the various elements within the arrangement of that composite mark.
35      In paragraph 116 of the contested decision, the Board of Appeal took into account the position of the elements of the mark applied for. In that paragraph, it stated that the element depicting a cross appeared at the beginning of the corresponding sign, namely in the part which, according to settled case-law resulting, inter alia, from the judgment of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY) (T‑328/19, not published, EU:T:2020:311, paragraph 66 and the case-law cited), is generally liable to attract the consumer’s attention.
36      While it is true that the element ‘music’ is larger than the element ‘+’, the applicant fails to explain why the difference in size between the two elements of the mark applied for would make the element ‘+’ negligible, given that its size is not insignificant and it is placed at the beginning of the mark applied for.
37      In so far as the applicant also relies on the weak distinctive character of the element ‘+’, the Court notes that the Board of Appeal did not disregard the weak inherent distinctive character of that element, but found, in paragraph 99 of the contested decision, that the mathematical sign ‘+’ had no material degree of distinctiveness. In paragraphs 115 to 117 of the contested decision, the Board of Appeal found that, in accordance with case-law, the element depicting the cross as a national mark nevertheless had some distinctive character and then emphasised the fact that the cross was entirely included in the mark applied for and at the same time constituted the entirety of the earlier mark. Consequently, the applicant has not shown that the Board of Appeal made an error of assessment in concluding that, also in view of the position of the cross at the beginning of the sign, the presence of the word ‘music’ cannot counteract the similarities arising from the presence, in the mark applied for, of the representation of the only element of which the earlier mark was composed.
38      Third, the applicant claims that, according to case-law, where a trade mark is composed of word and figurative elements, the word element of the mark at issue is, in principle, more distinctive than the figurative element of that mark. Even assuming that a word element must be considered to have a purely descriptive character, that character does not preclude that element from being acknowledged as dominant for the purposes of assessing the similarity of the signs at issue. Accordingly, the fact that the mark applied for is visually dominated by the meaningful word ‘music’ neutralises any potential visual similarities to the earlier mark based on the depiction of a cross in the mark applied for.
39      The Board of Appeal found in paragraph 108 of the contested decision that the word ‘music’ was descriptive or practically devoid of distinctive character in respect of the goods and services which were or could relate to music, namely almost all of the goods and services referred to in paragraph 3 above. The applicant does not challenge that finding.
40      Even if, as the applicant correctly points out, the descriptive character of the word element concerned does not necessarily preclude that element from being acknowledged as dominant (judgment of 19 March 2015, Mega Brands International v OHIM, C‑182/14 P, EU:C:2015:187, paragraph 34), the fact remains that, in determining the dominant element of a composite trade mark, account must be taken of the intrinsic qualities of each of its components by comparing them with those of the other components in question.
41      Although it is therefore not excluded from the outset that the element ‘music’ is dominant, the applicant has not sufficiently substantiated its claim that the mark applied for is visually dominated by the meaningful word ‘music’. The argument relating to the difference in size of the two elements of the mark applied for is not sufficient, as explained in paragraph 36 above. Even if the element ‘music’ were dominant, the fact remains that the comparison must relate to the marks taken as a whole and that the element ‘+’, which is not negligible, must be taken into consideration. Thus, the applicant has not established that the element ‘music’ counteracts the similarity resulting from the common element ‘+’.
42      In the second place, the applicant complains that the Board of Appeal incorrectly applied different criteria when comparing the signs on a visual and on a phonetic basis.
43      In that regard, it submits that the Board of Appeal completely ignored the low distinctive character of the element ‘+’ in the visual comparison of the signs, whereas it did not give much weight to the existence of the sign ‘+’ in the mark applied for when carrying out the phonetic comparison.
44      As regards the little weight given to the element ‘+’ in the phonetic assessment, the Court notes at the outset that the weighting of the elements of a sign at the various levels of comparison necessarily varies according to the relevant way in which that sign is perceived.
45      First, the Board of Appeal found that the majority of the relevant public will pronounce the element ‘+’.
46      Second, as regards the phonetic aspect, the Board of Appeal found, in paragraph 125 of the contested decision, that, due to the lack of relevant distinctive character of the ‘+’ sign, that sign could not be given too much weight in the context of the comparison of the signs. In paragraphs 97 to 105 of the contested decision, the Board of Appeal determined the inherent distinctive character of the ‘+’ sign from a visual point of view and also classified it as weak. Although the Board of Appeal did not repeat that finding concerning the distinctive character of the earlier sign in the part of the contested decision relating to the comparison of the signs ‘visually’, it nevertheless implicitly based that part on its earlier findings and it cannot be claimed that it used a different criterion. In paragraph 111 of the contested decision, the Board of Appeal confirmed that the weak distinctive character of an element that is common to the signs was relevant for the purposes of the assessment of the visual and phonetic similarities between those signs. Thus, there is no indication that the Board of Appeal applied different criteria for the different aspects of comparison, especially since, as the applicant claimed, it completely ignored the weak distinctive character of the earlier sign when comparing the signs visually.
47      The Board of Appeal concluded that the marks at issue were visually similar to an average degree and phonetically similar to a very low degree. In that regard, it must be borne in mind that the Board of Appeal correctly concluded that there was a certain similarity, both phonetically and visually, between those marks because the earlier mark was reproduced almost identically in the mark applied for. Moreover, it is only visually that the ‘+’ sign is characteristically presented in white on a black background, which reinforces the visual similarities. In that regard, the Board of Appeal notes, in paragraph 114 of the contested decision, when comparing the marks at issue, that the crosses present in the marks at issue have the same main characteristics, in the sense that each is a bold white cross on a black background. Phonetically, there are no such figurative characteristics.
48      In the light of the foregoing, the applicant’s argument that the Board of Appeal applied different criteria when comparing visually, on the one hand, and phonetically, on the other hand, is unfounded.
49      Consequently, the first part of the single plea in law, alleging an incorrect visual comparison of the signs at issue, must be rejected.
The third part of the single plea in law, alleging an error in the assessment of the likelihood of confusion
50      By the third part of its single plea in law, the applicant claims that, first, where the marks at issue share, as in the present case, a component with a weak inherent distinctive character, the impact of that element of similarity on the global assessment of the likelihood of confusion is itself low.
51      Second, according to the applicant, the Board of Appeal erred in finding that there was a likelihood of confusion in respect of the goods and services covered by the mark applied for in Classes 11, 25, 35, 37 and 42, in respect of which it had not found that the earlier mark had a high level of distinctiveness.
52      Third, the applicant alleges that there is a contradiction in the Board of Appeal’s reasoning in so far as it found, on the one hand, that there was a likelihood of confusion in respect of goods which were only remotely linked to the intervener’s activities, such as clothing, and, on the other hand, that there is no link between the signs at issue in respect of ‘retailing and wholesaling in relation to cleaning and care preparations’ in Class 35, notwithstanding the reputation of the earlier mark within the meaning of Article 8(5) of Regulation 2017/1001.
53      Fourth, the applicant disputes that there is a likelihood of confusion also in respect of the goods and services in Classes 9, 38 and 41, on account of the weak distinctive character of the earlier mark and the low degree of similarity between the signs at issue, in particular in view of their conceptual differences and the fact that the element ‘music’ is the dominant element of the mark applied for.
54      EUIPO contends that the contested decision can be interpreted in two different ways. According to EUIPO, either the Board of Appeal considered that there was a likelihood of confusion even taking into account the inherent level of distinctiveness of the earlier mark for goods and services in Classes 11, 25, 35, 37 and 42, or the Board of Appeal made an error by not distinguishing, as the applicant claims, the goods and services for which the earlier mark has enhanced distinctiveness from those for which it does not have such enhanced distinctiveness.
55      The intervener disputes the applicant’s arguments. It submits that the Board of Appeal did not err by not limiting the enhanced distinctiveness of the earlier mark solely to the goods and services in Classes 9, 38 and 41. According to case-law, the more distinctive the earlier mark, the greater the likelihood of confusion will be. The earlier mark has acquired and maintained a reputation through the extensive use of the large portfolio of its trade marks containing the sign ‘+’, which is sometimes combined with a suggestive term, such as in ‘+FAMILY’, ‘+DECALE’, ‘+SPORT’, ‘+CINEMA’ and ‘+DIGITAL’. The intervener infers from those facts that there is a reasonable risk that the mark applied for will be perceived by the relevant public as belonging to the same family of marks using the sign ‘+’, with the result that that public may think that those marks come from the same company or from related companies.
56      First, it is apparent from paragraph 147 of the contested decision that the Board of Appeal took into account the case-law according to which, where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists. However, it correctly pointed out, in paragraph 148 of the contested decision, that the global assessment of the likelihood of confusion had to take into account all factors relevant to the circumstances of the case, including the distinctive character of the earlier mark. The examination which followed in paragraph 149 onwards of the contested decision took all those factors into account, through the finding (i) that the marks at issue were visually similar to an average degree and phonetically and conceptually similar to a low degree, (ii) that the goods and services covered by the mark applied for and the goods and services covered by the earlier mark were identical or, to varying degrees, similar, (iii) that the earlier mark was practically fully included at the beginning of the mark applied for, and (iv) that the earlier mark had an enhanced degree of distinctiveness through use as regards the goods and services in Classes 9, 38 and 41 (see paragraph 14 onwards of the present judgment). The Board of Appeal also took into account the fact that the level of attention of part of the relevant public could be higher for some of the goods and services. Nevertheless, according to the Board of Appeal, that fact was not sufficient to exclude the possibility that that public might believe that the respective goods and services came from the same undertaking or from economically linked undertakings, since the presence of the white ‘+’ sign on a black background in the mark applied for may lead that public to believe that that mark covered a new line of goods and services, for example related to music, originating from the intervener or from a company economically linked to it. Consequently, in paragraph 152 of the contested decision, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for the relevant French public for all the goods and services found to be identical or similar (to various degrees).
57      Second, the Court notes that the Board of Appeal, on the one hand, found that the earlier mark had an enhanced level of distinctiveness only in respect of certain goods and services, which were in Classes 9, 38 and 41 and, on the other hand, without making a distinction, applied that finding to all the goods and services covered by the earlier mark in the context of its global assessment of the likelihood of confusion. It follows that, in the contested decision, the Board of Appeal did not explain why it had taken into account an enhanced distinctiveness acquired through use vis-à-vis all the goods and services concerned.
58      EUIPO’s argument that the contested decision can be interpreted as finding that there is a likelihood of confusion even taking into account the weak inherent distinctiveness of the earlier mark vis-à-vis the goods and services in Classes 11, 25, 35, 37 and 42 must be rejected. The Court observes that the contested decision does not contain any indication capable of substantiating such an interpretation. In that regard, it is clear from paragraph 152 of the contested decision that the Board of Appeal concluded that there was a likelihood of confusion taking into account the fact that the earlier mark had an enhanced level of distinctiveness. Thus, the Board of Appeal did not assess whether there was a likelihood of confusion as regards the goods and services for which enhanced distinctiveness had not been found to have been acquired through use.
59      Lastly, the Court rejects EUIPO’s argument that the Court will have to assess whether there is a likelihood of confusion between the marks at issue in respect of the goods and services for which the earlier mark does not enjoy enhanced distinctiveness.
60      In that regard, the Court notes that no such assessment appears in the contested decision. First, it is not for the Court, in its review of the legality of the contested decision, to carry out an assessment on which the Board of Appeal has not adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72) and, second, EUIPO cannot substantiate the contested decision with evidence that was not taken into account for the purposes of that decision (see judgment of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraph 64 and the case-law cited).
61      Lastly, the intervener’s argument that the earlier mark also has an enhanced level of distinctiveness vis-à-vis the goods and services in respect of which the Board of Appeal did not specifically establish such character is not convincing. The intervener refers to paragraph 18 of the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442) and submits that the mark with a reputation enjoys broader protection which extends beyond the principle of speciality and that, therefore, recognition of the reputation of the earlier mark, in so far as it designates goods and services in relation to media, audiovisual and entertainment, must lead to its establishment in absolute terms independently of the goods or services in question.
62      It does not follow in any way from the case-law cited by the intervener that the protection of a mark which has an enhanced level of distinctiveness acquired through use vis-à-vis certain goods and services which it covers must be extended to all the goods and services for which it has been registered. The Court of Justice merely held in paragraph 18 of the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442), that the more distinctive the earlier mark, the greater the risk of confusion, and that marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoyed broader protection than marks with a less distinctive character. Moreover, the intervener’s approach is not compatible with the distinction to be made between reputation within the meaning of Article 8(5) of Regulation 2017/1001 and enhanced distinctiveness in the context of Article 8(1)(b) of that regulation. The distinctive character of a mark, including that acquired through use, must always be assessed in relation to the goods or services concerned (see, to that effect, judgment of 18 June 2002, Philips, C‑299/99, EU:C:2002:377, paragraph 59).
63      Consequently, as regards the goods and services in Classes 11, 25, 35, 37 and 42, the Board of Appeal erred in finding that there was a likelihood of confusion without carrying out a global assessment taking into account the fact that enhanced distinctiveness acquired through use could not be found in respect of those goods and services.
64      Furthermore, the applicant’s argument that, even for the goods and services at issue in Classes 9, 38 and 41, taking into account all the relevant factors should have led to the conclusion that there was no likelihood of confusion must be rejected, since the Board of Appeal’s reasoning in its global assessment, which did take into account all the relevant factors (see paragraph 56 above) must be upheld as regards those goods and services.
65      Furthermore, in so far as the applicant reiterates its argument that the element ‘music’ constitutes the dominant element of the mark applied for, it is sufficient to reject that argument for the reasons set out in paragraphs 36 and 41 above.
66      Consequently, the Board of Appeal did not make an error of assessment in reaching the conclusion that there was a likelihood of confusion as regards the goods and services in Classes 9, 38 and 41.
67      It follows from the foregoing that the third part of the applicant’s single plea in law must be upheld in part and, consequently, the contested decision must be annulled in part, in so far as the Board of Appeal upheld the intervener’s opposition in respect of the goods and services in Classes 11, 25, 35, 37 and 42, and that the action must be dismissed as to the remainder.
Costs
68      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. Further, pursuant to Article 134(3) of the Rules of Procedure, the parties are to bear their own costs where each party succeeds on some and fails on other heads.
69      In the present case, the applicant, EUIPO and the intervener have each succeeded on some of their heads of claim and failed on others. In those circumstances, each party must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Annuls the decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 April 2021 (Case R 1236/2020‑5) in so far as it found that there was a likelihood of confusion in respect of the goods and services in Classes 11, 25, 35, 37 and 42;
2.      Dismisses the action as to the remainder;
3.      Orders Plusmusic AG, EUIPO and Groupe Canal + to bear their own costs.
De Baere
Steinfatt
Kingston
Delivered in open court in Luxembourg on 29 March 2023.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.