JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
4 May 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark ASI ADVANCED SUPERABRASIVES – Earlier EU figurative and word marks ADI – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Remittal of the case to the Opposition Division – Article 71(1) of Regulation 2017/1001 – Article 27(3)(b) of Delegated Regulation (EU) 2018/625)
In Case T‑4/21,
Advanced Superabrasives, Inc., established in Mars Hill, North Carolina (United States), represented by D. Piróg and A. Rytel, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Adi Srl, established in Thiene (Italy), represented by B. Saguatti, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 23 October 2020 (Case R 2713/2019-2), relating to opposition proceedings between Adi and Advanced Superabrasives,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and P. Zilgalvis, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 5 January 2021,
having regard to the response of EUIPO lodged at the Court Registry on 13 May 2021,
having regard to the response of the intervener lodged at the Court Registry on 7 May 2021,
further to the hearing on 20 January 2022,
gives the following
Judgment
Background to the dispute
1        On 31 August 2017, the applicant, Advanced Superabrasives, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Class 7 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Diamond and cubic boron nitride grinding wheels in resin bond, metal bond, vitrified bond and plated formats for use with cutting, grinding and polishing machines; power-operated diamond dressers, hones, and abrasive sticks; power saw blades; thread and gear grinding wheels’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 182/2017 of 25 September 2017.
5        On 22 December 2017, the intervener, Adi Srl, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        the EU figurative mark reproduced below, which was filed on 18 June 2004, registered on 3 October 2005 under the number 3877991 and renewed on 28 April 2014 and covers goods in Class 7 corresponding to the following description: ‘Grindstones, milling machines, discs, calibrators, grinding machines, polishing machines, drilling machines, monitors, drilling bits and quadrants for the stone, ceramic, mechanical, optical and glass industries’:
–        the EU word mark ADI, which was filed on 7 June 2004, registered on 29 July 2005 under the number 3859171 and renewed on 28 April 2014 and covers goods in Class 7 corresponding to the following description: ‘Grindstones, mills, discs, calibrators, grinders, polishers, drills, honing devices, rims and sectors for the stonemasonry, ceramics, mechanical, optical and glass sectors’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001. In particular, the intervener claimed that its earlier marks enjoyed an enhanced degree of distinctiveness in the European Union.
8        On 19 July 2018, the applicant requested that the intervener furnish proof of use of the earlier marks in accordance with Article 47(2) of Regulation 2017/1001. On 4 October 2018, the intervener submitted such evidence of use within the period specified.
9        On 12 November 2019, the Opposition Division rejected the opposition in its entirety. It took the view in particular that
the intervener had not explicitly claimed that its marks were particularly distinctive by virtue of intensive use or reputation and found that the distinctiveness of the earlier marks, including the earlier figurative mark which included a diamond with ‘very limited’ distinctiveness, was ‘normal’.
10      On 29 November 2019, 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.
11      By decision of 23 October 2020 (‘the contested decision’), the Board of Appeal upheld the intervener’s appeal and annulled the Opposition Division’s decision.
12      First, the Board of Appeal found that the Opposition Division had infringed essential procedural requirements in not examining, in the light of the evidence submitted by the intervener, the argument that the earlier marks enjoyed an enhanced degree of distinctiveness.
13      Secondly, the Board of Appeal found that the Opposition Division had been right in finding that the relevant territory for the purposes of the assessment of the likelihood of confusion was the whole of the European Union. It also, like the Opposition Division, found that the goods covered by the earlier marks were aimed exclusively at a professional public in different specialised sectors, whereas some of the goods covered by the mark applied for could target both the general public and professionals, the level of attention of which would be relatively high. However, the Board of Appeal took the view that a more specific evaluation of the relevant public had to be made following the assessment of the evidence of use of the earlier marks.
14      Thirdly, as regards the distinctiveness of the elements comprising the marks at issue, the Board of Appeal found, like the Opposition Division, that the element ‘advanced superabrasives’ in the mark applied for was not distinctive with regard to the goods at issue, at least as far as the English-speaking relevant public was concerned. Furthermore, according to the Board of Appeal, the word elements in upper-case letters ‘ADI’ in the earlier mark and ‘ASI’ in the mark applied for would be perceived as meaningless and were therefore distinctive. Lastly, the Board of Appeal found that the figurative elements representing a diamond in the earlier figurative mark and in the mark applied for had a limited degree of distinctiveness, since the diamonds referred to the material of which the goods at issue were made and were laudatory with regard to their hardness.
15      Fourthly, as regards the comparison of the signs, first, the Board of Appeal took the view that the Opposition Division had been right in finding that the earlier word mark and the mark applied for were visually and phonetically similar to a low degree, but that they were not conceptually similar. Secondly, it found that the Opposition Division had been right in finding that the earlier figurative mark was phonetically similar to a low degree to the mark applied for. However, according to the Board of Appeal, the Opposition Division had erred in finding that there was a ‘below-average’ or low degree of visual similarity and a low degree of conceptual similarity between the earlier figurative mark and the mark applied for. In that regard, the Board of Appeal took the view that there was an ‘at least average’ and not low degree of visual similarity between those marks and that they were conceptually identical to the limited extent that they both referred to the concept of a diamond, in spite of the weak distinctiveness of that concept.
16      On the basis of the foregoing, the Board of Appeal remitted the case to the Opposition Division, in accordance with Article 71(1) of Regulation 2017/1001, to examine the evidence of use of the earlier mark and, if necessary, compare the goods at issue, assess the intervener’s claim of enhanced distinctiveness of its earlier marks and assess the likelihood of confusion taking into account all the relevant factors and the comparison of the signs carried out by the Board of Appeal, which was binding on the Opposition Division.
Forms of order sought
17      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs;
–        order the intervener to bear its own costs.
18      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
19      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by the intervener at all stages of the proceedings.
Law
20      In support of its action, the applicant relies on four pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001, secondly, infringement of Article 27(3)(b) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), thirdly, infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, and, fourthly, infringement of Article 71(1) of Regulation 2017/1001, read in conjunction with Article 27(3)(b) of Delegated Regulation 2018/625.
21      Given the date on which the application for registration at issue was filed, namely 31 August 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).  Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001 and of Delegated Regulation 2018/625.
22      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward, by the intervener and by EUIPO to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
23      The Court takes the view that it is appropriate to examine, first of all, the first plea, then the second and fourth pleas taken together and, lastly, the third plea.
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
24      By the first plea, the applicant disputes the Board of Appeal’s assessments regarding the visual and conceptual comparisons between the earlier figurative mark and the mark applied for (‘the marks at issue’).
25      In the first place, as regards the visual comparison, the applicant submits that the Board of Appeal erred in finding that there was an ‘at least average’ degree of visual similarity between the earlier figurative mark and the mark applied for. According to the applicant, the degree of visual similarity between those two marks should be held to be low or lower than average, since the differences between those marks outweigh the similarities between them.
26      In particular, the applicant claims that, since the figurative element representing a diamond is weakly distinctive in relation to the goods at issue, the perception of the marks at issue is dominated by their word elements. In that regard, the applicant agrees with the Board of Appeal’s finding that the element ‘advanced superabrasives’ in the mark applied for is non-distinctive. However, it takes the view that the word elements in upper-case letters ‘ADI’ and ‘ASI’ in the marks at issue are sufficient for it to be held that there is no similarity between those marks.
27      First of all, the applicant submits that a similarity between two letters in short trade marks is not sufficient to conclude that those marks are similar, because a difference in only one letter is sufficient to distinguish them from each other. It relies on a number of previous decisions of the Board of Appeal in that regard. Next, the applicant states that the word elements of the marks at issue are in different fonts and are arranged in a different way in relation to the element representing a diamond. It submits that the relevant public will thus notice that, in the element in upper-case letters ‘ADI’ in the earlier mark, the upper-case letters ‘A’, ‘D’ and ‘I’ are placed on the diamond itself, whereas, in the element in upper-case letters ‘ASI’ in the mark applied for, the upper-case letters ‘A’, ‘S’ and ‘I’ are not placed inside the figurative element, but in front of it. Furthermore, it contends that the element ‘ADI’ in the earlier mark is written in a normal-sized serif font and is not situated in the foreground. By contrast, it submits that the element ‘ASI’ in the mark applied for is written in a bold sans-serif font and is situated in the foreground. Lastly, the applicant contends that, even assuming that the public’s attention will focus on the figurative element in the form of a diamond in the marks at issue, as the Board of Appeal found, that element is different in each of those marks, inasmuch as, in the earlier mark, the diamond is two-dimensional and is situated in the foreground, whereas, in the mark applied for, the diamond is three-dimensional and is hidden by the word element.
28      In the second place, as regards the conceptual comparison, the applicant claims, in essence, that the Board of Appeal overestimated the concept arising from the figurative elements representing a diamond in the marks at issue. The applicant submits that that element has only a weak distinctive character, with the result that the Board of Appeal’s finding that those marks were conceptually identical to a limited extent is incorrect. As far as the applicant is concerned, the degree of conceptual similarity between those marks should be regarded as being, at most, low.
29      EUIPO and the intervener dispute those arguments.
30      Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
31      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).
32      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
33      It must be pointed out at the outset that the applicant does not dispute the Board of Appeal’s assessments regarding the comparison between the earlier word mark and the mark applied for. Those assessments do not therefore form the subject matter of the present proceedings.
34      Furthermore, since the Board of Appeal did not rule on the comparison of the goods at issue (see paragraph 16 above), that comparison also does not form the subject matter of the present proceedings.
35      In the first place, as regards the relevant public, the Board of Appeal found, in paragraph 22 of the contested decision, that the Opposition Division had been right in finding that the relevant territory for the purposes of the assessment of the likelihood of confusion was the whole of the European Union, because the earlier marks were EU trade marks. It also, like the Opposition Division, found that the goods covered by the earlier marks were aimed exclusively at a professional public in different specialised sectors, whereas some of the goods covered by the mark applied for could target both the general public and professionals, the level of attention of which would be relatively high.
36      Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld. Even if, as the Board of Appeal pointed out in paragraph 23 of the contested decision, the definition of the relevant public were to be more limited following the Opposition Division’s assessment of the evidence of use of the earlier marks, that assessment as regards the relevant public remains valid for the purposes of examining the two aspects which the applicant disputes in the context of the present plea, namely the visual and conceptual comparisons of the marks at issue.
37      In the second place,
as regards the comparison of the marks at issue, it must be borne in mind that, according to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements.
The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
38      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark.
On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43).
39      In the present case, the signs to be compared are the figurative mark applied for ASI ADVANCED SUPERABRASIVES, which has been reproduced in paragraph 2 above, and the earlier figurative mark ADI, which has been reproduced in paragraph 6 above, respectively.
40      Accordingly, it must be stated that the earlier figurative mark consists of a three-letter word element and a large figurative element representing a two-dimensional diamond. In particular, it must be pointed out that the upper-case letters ‘A’, ‘D’ and ‘I’ in the word element are situated on the figurative element and that each of them is located within the three facets of the diamond. The mark applied for consists of a three-letter word element, namely the upper-case letters ‘A’, ‘S’ and ‘I’, which are situated in the foreground of a figurative element representing a three-dimensional diamond. The mark applied for also consists of a second word element, made up of the terms ‘ADVANCED SUPERABRASIVES’, which are written in smaller upper-case letters.
41      As regards the distinctive and dominant elements of the marks at issue, the Board of Appeal found, in paragraph 26 of the contested decision, first, that the word element ‘advanced superabrasives’ in the mark applied for was not distinctive with regard to the goods at issue, at least for the English-speaking part of the relevant public, secondly, that the word elements in upper-case letters ‘ADI’ and ‘ASI’ were distinctive, because they would be perceived as meaningless, and, thirdly, that the figurative elements representing a diamond in the marks at issue had only limited or weak distinctiveness, since the diamonds referred to the material of which the goods at issue were made and were laudatory with regard to their hardness.
42      Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant in the context of the present plea, must be upheld.
43      In that regard, it must be borne in mind that, according to settled case-law, the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgments of 28 April 2016, Gervais Danone v EUIPO – Mahou (B’lue), T‑803/14, not published, EU:T:2016:251, paragraph 25 and the case-law cited, and of 8 November 2017, Pempe v EUIPO – Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS), T‑271/16, not published, EU:T:2017:787, paragraph 51 and the case-law cited; see also, to that effect, judgment of 11 April 2019, Užstato sistemos administratorius v EUIPO – DPG Deutsche Pfandsystem (Representation of a bottle and an arrow), T‑477/18, not published, EU:T:2019:240, paragraph 39).
44      That is the case here with regard to the figurative element representing a diamond which the marks at issue have in common, an element which is not negligible in relation to the respective word elements ‘ADI’ and ‘ASI’ and is likely to be remembered by the relevant public on account of its size and position.
45      As regards the phonetic comparison, the Board of Appeal’s assessment, which is not, moreover, disputed by the applicant, that there is a low degree of phonetic similarity between the marks at issue must also be upheld.
46      By contrast, the applicant disputes the Board of Appeal’s assessments relating to the visual and conceptual comparisons of the marks at issue. In paragraph 32 of the contested decision, the Board of Appeal found, first, that there was an ‘at least average’ degree of visual similarity between the earlier figurative mark and the mark applied for and, secondly, that those marks were conceptually identical to the limited extent that they both referred to the same weakly distinctive concept of a diamond.
47      As regards the visual comparison, first of all, it must be stated that, as is apparent from paragraph 28 of the contested decision, the marks at issue have in common a three-letter word element, the distinctiveness of which is not disputed.
That word element contains two identical letters in the same position, namely the upper-case letter ‘A’, as the first letter, and the upper-case letter ‘I’, as the last letter. The only difference between the word elements in the marks at issue is not therefore
in the beginning or end of the words, as pointed out by the intervener, but in the letter in the middle of those words, namely the upper-case letter ‘D’ in the earlier mark and the upper-case letter ‘S’ in the mark applied for.
48      Accordingly, even though it is true that a similarity between two letters in short trade marks is not as such sufficient to conclude in all cases that those marks are similar (see, to that effect, judgment of 20 June 2019, Nonnemacher v EUIPO – Ingram (WKU), T‑389/18, not published, EU:T:2019:438, paragraph 59), in the present case, the fact that the distinctive three-letter word elements in the marks at issue contain two identical letters at the beginning and at the end of the words confers on those word elements a degree of visual similarity which cannot be regarded as low and must be regarded as average. In that regard, it must be stated that the slight stylistic differences in the word element in each of the marks at issue, which are highlighted by the applicant, are not sufficient to call that finding into question.
49      It must also be pointed out that the respective word elements of the marks at issue, namely ‘ADI’ and ‘ASI’, are placed in a similar position on the figurative element of each mark, with the result that, even though there are some differences in the positions of those word elements, as is submitted by the applicant, it must be held, as the Board of Appeal found, that the similarities outweigh those differences. In that regard, it must be borne in mind that, as is apparent from paragraph 28 of the contested decision, noting the specific details which differentiate the marks at issue would, in the present case, require a detailed examination on the part of consumers. However, according to settled case-law, even with regard to a public displaying a high level of attention, it remains the case that the average consumer only rarely has a chance to compare the various marks directly and must therefore rely on his or her imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26; see, also, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 99 and the case-law cited).
50      Furthermore, the marks at issue have in common a large figurative element representing a diamond. In spite of the weak distinctive character of that element in both marks (see paragraph 44 above), the high degree of similarity between those two figurative elements in common representing a diamond accentuates the fact that there is an average degree of visual similarity between the marks at issue which goes beyond a low degree of visual similarity, it being, however, understood that that similarity is mainly due to the distinctive word elements in those marks, namely ‘ADI’ and ‘ASI’.
51      Lastly, although the applicant submits that the word element ‘advanced superabrasives’ in the mark applied for contributes towards differentiating it from the earlier figurative mark, it must be held that, given its non-distinctive character, which is not, moreover, disputed by the applicant, and its very secondary, if not negligible, position in the mark applied for, that element is unlikely to hold the public’s attention.
52      Furthermore, as regards the previous decisions of the Board of Appeal on which the applicant has relied in support of its line of argument, it is sufficient to state that, according to settled case-law, the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited). In any event, it must be pointed out that the decisions relied on do not concern the analysis of trade marks which are characterised by three-letter terms combined with a highly similar figurative element, with the result that they cannot be directly compared with the present case.
53      The Board of Appeal was therefore right in finding that there was an ‘at least average’ degree of visual similarity between the marks at issue.
54      As regards the conceptual comparison, first, it must be stated that the distinctive word elements in the marks at issue, namely ‘ADI’ and ‘ASI’, do not, as acronyms of the respective names of the intervener and the applicant, have any clear meaning for the relevant public.
55      Secondly, in so far as the marks at issue have in common a figurative element representing a diamond, which, as has been established in paragraph 44 above, is not negligible in the overall visual impression on account of its size and position, it must be held, as the Board of Appeal found in paragraph 30 of the contested decision, that those marks are conceptually identical to the limited extent that they refer to the same concept of a diamond.
56      In that regard, it must be borne in mind that, where a conceptual similarity is based on a weakly distinctive, or even descriptive, element, it plays a limited role and has less impact on the assessment of the likelihood of confusion (see, to that effect, judgment of 15 October 2020, ROBOX, T‑49/20, not published, EU:T:2020:492, paragraph 92 and the case-law cited).
57      In the present case, in view of the weak distinctive character of the figurative element representing a diamond, the outcome of the conceptual comparison between the marks at issue can have only a limited impact on the global assessment of the likelihood of confusion.
58      It follows that the Board of Appeal did not make any error of assessment in finding, in paragraph 32 of the contested decision, that the marks at issue were conceptually identical to the limited extent that they both referred to the same weakly distinctive concept of a diamond, in spite of the weakness of that concept. The Board of Appeal thus found, in essence, that, in view of the weak distinctive character of the figurative element representing a diamond, the outcome of the conceptual comparison between the marks at issue could have only a limited impact on the global assessment of the likelihood of confusion.
59      In the light of the foregoing, it must be held that the Board of Appeal did not make any error of assessment in finding that, first, the degree of visual similarity between the marks at issue was ‘at least average’ and, secondly, that those marks were conceptually identical, but that that identity had only a limited impact on the global assessment of the likelihood of confusion.
60      The first plea must therefore be rejected.
The second and fourth pleas, alleging infringement of Article 71(1) of Regulation 2017/1001 and of Article 27(3)(b) of Delegated Regulation 2018/625
61      By its second and fourth pleas, which it is appropriate to examine together, the applicant criticises, in essence, the Board of Appeal for not having examined, in the contested decision, the intervener’s arguments as regards the enhanced distinctiveness of the earlier marks and for having decided, on the contrary, to remit the case to the Opposition Division in order for that issue to be re-examined.
62      The applicant submits, in particular, that the intervener based its opposition on the enhanced distinctiveness of the earlier marks and that that claim was reiterated in the context of its appeal against the Opposition Division’s decision. Accordingly, the Board of Appeal was, according to the applicant, obliged, in accordance with Article 71(1) of Regulation 2017/1001 and Article 27(3)(b) of Delegated Regulation 2018/625, to examine not only the similarity between the marks at issue, but also the alleged enhanced distinctiveness of the earlier marks. The applicant argues that, in remitting the case to the Opposition Division, the Board of Appeal made a procedural error which resulted in the opposition proceedings being unduly prolonged. It also states that, according to the case-law, the review undertaken by the Boards of Appeal requires a reappraisal of the dispute as a whole, since the Boards of Appeal must re-examine in full the initial case and take into account evidence produced in due time. Lastly, the applicant concludes by submitting that, if the Board of Appeal had examined the enhanced distinctiveness of the earlier marks, it should have found that those marks did not have enhanced distinctiveness.
63      EUIPO and the intervener dispute those arguments.
64      Article 71(1) of Regulation 2017/1001 provides that:
‘Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.’
65      Article 27(3)(b) of Delegated Regulation 2018/625 provides that:
‘The examination of the appeal shall include the following claims or requests provided that they have been raised in the statement of grounds of the appeal or, as the case may be, in the cross appeal and provided that they were raised in due time in the proceedings before the instance of [EUIPO] which adopted the decision subject to appeal:
…
(b)      recognition of the earlier trade mark on the market acquired through use for the purposes of Article 8(1)(b) of Regulation (EU) 2017/1001;
…’
66      It must be observed at the outset that it is apparent from the use of the verb ‘may’ in Article 71(1) of Regulation 2017/1001 that the Board of Appeal of EUIPO has a broad discretion for the purposes of ‘either exercis[ing] any power within the competence of the department which was responsible for the decision appealed or remit[ting] the case to that department for further prosecution’.
67      In the present case, in the first place, it must be pointed out that, in the context of the appeal brought under Articles 66 to 71 of Regulation 2017/1001 by the intervener against the Opposition Division’s decision, the Board of Appeal found, in paragraphs 16 and 17 of the contested decision, that the Opposition Division had infringed essential procedural requirements in not examining, in the light of the evidence submitted by the intervener, the argument that the earlier marks had enhanced distinctiveness.
68      In the second place, it must be pointed out that, on the basis of the foregoing considerations, the Board of Appeal decided to annul the Opposition Division’s decision in its entirety and to remit the case to the Opposition Division, stating in paragraph 36 of the contested decision that:
‘Given the parties’ legitimate interest that the case be examined by both instances of [EUIPO], the case is remitted to the Opposition Division, in accordance with Article 71(1), second sentence, [of Regulation 2017/1001], to examine the evidence of use and if necessary compare the goods and services, assess the opponent’s claim of enhanced distinctiveness of its earlier marks … and assess globally the likelihood of confusion taking into account all the relevant factors in the present case and taking into account the comparison of the signs made [by the Board of Appeal in the contested decision,] which is binding upon the Opposition Division.’
69      It must be stated that the Board of Appeal therefore exercised the broad discretion which Article 71(1) of Regulation 2017/1001 confers on it (see paragraph 66 above) for the purposes of, inter alia, remitting the case to the first instance (see, to that effect, judgment of 28 April 2021, Nosio v EUIPO – Tros del Beto (ACCUSÌ), T‑300/20, not published, EU:T:2021:223, paragraph 62). In so doing, the Board of Appeal decided to remit the case to the Opposition Division for further consideration and, in particular, for that division to examine the incomplete or incorrect aspects of its annulled decision
in order globally to assess, in the light of all the relevant factors, the likelihood of confusion in the present case.
70      Consequently, in the absence of any arguments on the part of the applicant against the specific grounds which were relied on in order to remit the case to the Opposition Division in the present case, in particular the parties’ legitimate interest that the case be examined by both instances of EUIPO, it cannot be maintained that the Board of Appeal made any error on the basis of Article 71(1) of Regulation 2017/1001.
71      That finding is not capable of being called into question on the basis of Article 27(3)(b) of Delegated Regulation 2018/625. As EUIPO correctly submits, the aim of that article, which is entitled ‘Examination of the appeal’, is to delimit the scope of appeals before the Boards of Appeal of EUIPO and not to circumscribe the discretion of the Boards of Appeal to remit the case to the Opposition Division. Moreover, in the light of the hierarchy of norms, a provision of Delegated Regulation 2018/625 cannot circumscribe a discretion which is conferred on the Boards of Appeal of EUIPO by a provision of the basic Regulation 2017/1001.
72      In the light of the foregoing, it must be held that the Board of Appeal did not infringe either Article 71(1) of Regulation 2017/1001 or Article 27(3)(b) of Delegated Regulation 2018/625.
73      The second and fourth pleas must therefore be rejected, without it being necessary to examine the merits of the applicant’s line of argument seeking a declaration that the earlier marks do not have enhanced distinctiveness.
The third plea, alleging infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625
74      By its third plea, the applicant claims that the Board of Appeal misapplied Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, in finding that the evidence which had been submitted in order to prove use of the earlier mark also had to be taken into consideration in assessing the intervener’s argument that the earlier marks had enhanced distinctiveness.
75      The applicant states that, even though the intervener claimed that the earlier marks had enhanced distinctiveness before the Opposition Division, it did not submit evidence other than that which was intended to prove use of its marks. According to the applicant, it was only at the stage of the appeal against the Opposition Division’s decision that the intervener claimed that that evidence showed that its marks had enhanced distinctiveness. It submits that consequently that evidence was belated for the purposes of showing that those marks have enhanced distinctiveness.
76      The applicant also claims that the evidence submitted
by the intervener does not satisfy either of the conditions laid down in Article 27(4) of Delegated Regulation 2018/625.
First, it argues that it is irrelevant with regard to the assessment of whether the earlier marks have enhanced distinctiveness since it does not consist of opinion polls, awards, industry press articles, and so forth. Secondly, it submits that the Board of Appeal did not give any valid reason to justify the belated taking into consideration of the evidence relating to use as evidence relating to the enhanced distinctiveness of those marks.
77      EUIPO and the intervener dispute those arguments.
78      Article 95(2) of Regulation 2017/1001 provides that ‘[EUIPO]
may disregard facts or evidence which are not submitted in due time by the parties concerned’.
79      Article 27(4) of Delegated Regulation 2018/625 provides the following:
‘In accordance with Article 95(2) of Regulation (EU) 2017/1001, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a)      they are, on the face of it, likely to be relevant for the outcome of the case; and
(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
80      As regards the intervener’s claim that its earlier marks have enhanced distinctiveness, the Board of Appeal found, in paragraphs 35 and 36 of the contested decision, that, pursuant to Article 95(2) of Regulation 2017/1001, it was appropriate for the Opposition Division to take into consideration not only the evidence which the intervener had submitted on 8 May 2018 during the opposition proceedings before EUIPO, but also the evidence which had been submitted on 4 October 2018 and which was intended to prove use of the earlier marks in response to the applicant’s request to that effect.
81      In that regard, it must be borne in mind that, according to settled case-law, which the Board of Appeal referred to in paragraph 35 of the contested decision, proof of use and proof of enhanced distinctiveness or of reputation are indissociably linked, with the result that, in finding that only an excessive and illegitimate formalism would dictate that the evidence of use could not be adduced as proof of enhanced distinctiveness or of reputation, a Board of Appeal exercises its discretion under Article 95(2) of Regulation 2017/1001 in deciding that it is appropriate to take that evidence into consideration and in finding that that evidence is genuinely relevant for the purposes of assessing whether the earlier trade mark has enhanced distinctiveness or a reputation (see, to that effect, judgments of 2 December 2015, Tsujimoto v OHIM – Kenzo (KENZO ESTATE), T‑414/13, not published, EU:T:2015:923, paragraph 23 and the case-law cited, and of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 65).
82      It follows that, contrary to what the applicant claims, both the evidence which the intervener submitted on 8 May 2018 in the context of its opposition and that submitted on 4 October 2018 in response to the applicant’s request for proof of use (see paragraph 8 above) are relevant and must be taken into consideration by the Opposition Division, in accordance with point 2 of the operative part of the contested decision, for the purposes of examining, in the context of the remittal to it, the intervener’s claim that its earlier marks have enhanced distinctiveness. That evidence cannot therefore necessarily be considered to be belated or irrelevant for that purpose, as the applicant claims.
83      Moreover, it must be stated that Article 27(4) of Delegated Regulation 2018/625 is not applicable in the present case, as there are no ‘facts or evidence submitted for the first time before [the Board of Appeal]’, since the evidence of use (or of enhanced distinctiveness) in question was submitted before the Opposition Division.
84      It must therefore be held that the Board of Appeal did not infringe Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, in finding that the evidence submitted in order to prove use of the earlier marks also had to be taken into consideration in assessing the intervener’s argument that those marks had enhanced distinctiveness.
85      The third plea must therefore be rejected.
86      In the light of all of the foregoing considerations, the action must be dismissed in its entirety.
Costs
87      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.
88      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
89      Furthermore, in so far as the intervener has claimed that the applicant should also be ordered to pay the costs incurred by the intervener at all stages of the proceedings, it is sufficient to state that, since the present judgment is dismissing the action brought against the contested decision, it is points 3 and 4 of the operative part of that decision which continue to determine the costs incurred in the opposition proceedings and in the appeal proceedings before EUIPO (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Advanced Superabrasives, Inc. to pay the costs.
Costeira
Kancheva
Zilgalvis
Delivered in open court in Luxembourg on 4 May 2022.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.