JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
15 October 2020 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark ROBOX – Earlier EU word mark OROBOX – Relative ground for refusal – Likelihood of confusion – Independent subcategory of goods – Taking into consideration of a descriptive element – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑49/20,
Rothenberger AG, established in Kelkheim (Germany), represented by V. von Bomhard and J. Fuhrmann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė, J.F. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Paper Point Snc di Daria Fabbroni e Simone Borghini, established in Arezzo (Italy),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 31 October 2019 (Case R 210/2019-1), relating to opposition proceedings between Paper Point and Rothenberger,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias and M. Kancheva (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 January 2020,
having regard to the response lodged at the Court Registry on 27 March 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 13 March 2017, the applicant, Rothenberger AG, 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 word sign ROBOX.
3        The goods covered by that application, as restricted on 8 August 2018 in the course of the proceedings before EUIPO, are in Class 20 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: ‘Boxes made of plastics materials for packaging of tools and machines as well as their parts and accessories; plastics components for packaging containers for tools and machines as well as their parts and accessories; boxes (packaging -) in made-up form [plastic] for tools and machines as well as their parts and accessories; display racks for the display of tools and machines as well as their parts and accessories for sale purposes; sales containers of plastic for tools and machines as well as their parts and accessories; electric boxes of plastic for tools and machines as well as their parts and accessories; plastic inserts [trays] for tool boxes; organisation systems of plastic for toolboxes; tool storage containers (non-metallic -) [empty]; sales packaging of plastic which also services as an organisation system for toolboxes’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin
No 2017/063 of 31 March 2017.
5        On 30 May 2017, the other party to the proceedings before EUIPO, Paper Point Snc di Daria Fabbroni e Simone Borghini, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier EU word mark OROBOX, which was filed on 10 September 1996 and registered on 19 November 1998 under the number 378950 in respect of goods in Class 20 corresponding to the following description: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 2 January 2018, the applicant requested proof of genuine use of the earlier mark. On 14 May 2018, within the time limit given after an extension, the other party to the proceedings before EUIPO provided various items of evidence of use.
9        By decision of 26 November 2018, the Opposition Division found, first of all, that the evidence provided proved genuine use of the earlier mark only in connection with ‘plastic safety boxes and plastic lids and locks/seals therefor’ and that those goods could be considered to form ‘an objective subcategory of goods made out of plastic’, namely ‘plastic boxes and plastic closures therefor’. Next, it found that there was a likelihood of confusion for the non-English-speaking part of the professional public and upheld the opposition in respect of all the goods covered by the mark applied for that it had considered to be identical or similar to those covered by the earlier mark as limited to the subcategory defined above, with the exception of ‘display racks for the display of tools and machines as well as their parts and accessories for sale purposes’, which had been found to be dissimilar to the goods in that subcategory.
10      On 28 January 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division, in so far as the Opposition Division had upheld the opposition in respect of almost all of the goods covered by the application for registration (‘the contested goods’), with the exception of the goods which had been found to be dissimilar.
11      By decision of 31 October 2019 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. It pointed out at the outset that ‘display racks for the display of tools and machines as well as their parts and accessories for sale purposes’ were not subject to the appeal. As regards proof of use, it endorsed the Opposition Division’s findings regarding the place, time and extent of use, which had not, moreover, been disputed by the parties. As regards the nature of use, it found that ‘plastic safety boxes’ was a more precisely and narrowly defined subcategory for boxes that guarantee safety and reliability for shipments and the transportation of valuables and that the earlier mark was used in connection with a specific type of plastic boxes, namely ‘plastic safety boxes and closures therefor’ (‘the goods covered by the earlier mark’).
12      As regards the analysis of the likelihood of confusion, first, the Board of Appeal found, regarding the relevant public, that the goods at issue were primarily aimed at the professional public for the transportation of valuable objects and that the relevant territory was the whole of the European Union. Secondly, regarding the comparison of the signs, it found that those signs, despite their different beginnings, were visually similar to at least an average degree, since the mark applied for was integrated in the earlier mark, and that, despite the difference in rhythm and intonation owing to the different number of syllables, they were phonetically similar to a high (or at least average) degree. It took the view that the signs were highly similar conceptually, but that that similarity ‘ha[d] less importance’ since the term in common ‘box’ was descriptive of the goods in question.
13      Thirdly, regarding the comparison of the goods at issue, the Board of Appeal found that most of the contested goods were identical because they overlapped with the ‘plastic safety boxes and closures therefor’ covered by the earlier mark, no matter whether or not they were for tools and machines, since their purposes overlapped and both types of boxes could have the same manufacturers and distribution channels. Other contested goods, essentially plastic accessories for toolboxes, were found to be similar for similar reasons and because they could be complementary. Fourthly, the Board of Appeal found that the inherent distinctiveness of the earlier mark was normal. Fifthly, the Board of Appeal concluded that there was a likelihood of confusion, even for the professional public, owing, first, to the overlap between the goods at issue, which had been found to be in part identical and in part similar, and, secondly, to the highly similar structure of the signs at issue, in which the only difference was confined to the initial letter ‘o’ in the earlier mark and which had been found to be ‘visually and aurally similar to an average degree’.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The application ratione temporis of the regulations on the European Union trade mark
16      It must be pointed out that, first, the application for registration of the mark applied for and the notice of opposition were filed on 13 March 2017 and 30 May 2017 respectively, under Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016 so far as concerns the provisions that are relevant with regard to the present case. Secondly, the Opposition Division’s decision and the contested decision were given on 26 November 2018 and 31 October 2019 respectively, under Regulation 2017/1001, which entered into force on 1 October 2017. In paragraph 12 of the contested decision, the Board of Appeal stated that all references to the ‘EUTMR’ in that decision referred, unless specifically stated otherwise, to Regulation 2017/1001, codifying Regulation No 207/2009, as amended. The parties, in their respective written pleadings, also refer to the provisions of Regulation 2017/1001 and, in particular, to Article 8(1)(b) of that regulation.
17      However, it must be borne in mind that, first, according to settled case-law, procedural rules are generally taken to apply from the date on which they enter into force, unlike substantive rules, which are usually interpreted as applying to situations existing before their entry into force only in so far as it follows clearly from their terms, their objectives or their general scheme that such an effect must be given to them (see judgment of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 19 and the case-law cited). Secondly, the date which is decisive for the purposes of identifying the substantive law applicable is the date on which the application for registration was filed (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 2).
18      Consequently, since it does not follow from the terms, objectives or general scheme of the relevant substantive rules in Regulation 2017/1001 that they apply to situations existing before their entry into force, the present case is governed, as to the substance, by the provisions of Regulation No 207/2009, as amended by Regulation 2015/2424.
19      It is true that both the Board of Appeal, in the contested decision, and the parties, in their written pleadings, refer to the provisions of Regulation 2017/1001. However, first, the references to Regulation 2017/1001 can be understood as referring to the corresponding provisions of Regulation No 207/2009, as amended, without that affecting the legality of the contested decision (see, by analogy, judgment of 6 June 2019, BATTISTINO, T‑221/18, not published, EU:T:2019:382, paragraph 22), since the content of those provisions was not affected by the entry into force of Regulation 2017/1001. Secondly, the Court must, according to the case-law, interpret the parties’ written pleadings in terms of their substance rather than their classification (see, by analogy, judgment of 6 June 2019, BATTISTINO, T‑221/18, not published, EU:T:2019:382, paragraph 23 and the case-law cited). Consequently, it must be held that the plea put forward by the applicant alleges infringement of Article 8(1)(b) of Regulation No 207/2009.
Substance
20      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it complains that the Board of Appeal erred in finding that there was a likelihood of confusion.
21      EUIPO disputes the applicant’s arguments and contends that there is a likelihood of confusion.
22      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, 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.
23      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
24      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).
25      In the present case, it must be pointed out at the outset, as observed by EUIPO, that the applicant does not dispute the Board of Appeal’s assessment, in paragraphs 16 to 32 of the contested decision, relating to the proof of use, according to which use of the earlier mark has been proved in connection with a specific type of plastic boxes, namely ‘plastic safety boxes and closures therefor’, which constitutes a more precisely and narrowly defined independent subcategory within the more general indication of the ‘goods of plastic’ in Class 20 covered by the earlier mark. That finding, which is correct, must be upheld.
26      Furthermore, the applicant agrees with the Board of Appeal’s assessment, in paragraphs 33 to 37 of the contested decision, relating to the relevant public, according to which the goods at issue are primarily aimed at the professional public for the transportation of valuable objects and the relevant territory is the whole of the European Union. Since the Board of Appeal first found that the consumer’s level of attention was likely to vary according to the category of goods concerned and then referred to a ‘professional or more attentive’ public (see paragraph 40 of the contested decision), it follows that it found, in essence, that that professional public had an above-average level of attention, as is submitted by the applicant. That finding, which is correct, must be upheld.
The comparison of the goods
27      The applicant submits that the goods at issue are dissimilar or only slightly similar. It argues that those goods, namely, on the one hand, toolboxes, containers and accessories for the transport and packaging of tools and machines and, on the other hand, plastic safety boxes and closures therefor, differ in their manufacturers, distribution channels and consumers and serve fundamentally different purposes. It submits that, by finding that their purposes overlap, the Board of Appeal failed to consider the intended use of the goods. It takes the view that, in finding that the goods covered by the earlier mark were ‘a specific type of plastic boxes’, the Board of Appeal disregarded their purpose, which is to guarantee safety and reliability for shipments and the transportation of valuables. The applicant argues that, in order to determine the similarity of goods, it is necessary to take an objective approach and consider the reality of the market, in particular as regards the use of the goods and the various groups of consumers at which the goods are aimed, which are so distinct that they would not coincide. It submits that, accordingly, the professionals, or even members of the general public, who purchase and make use of toolboxes (manual workers, plumbers, electricians, builders) are different from professionals for the transportation of valuable objects (retailers and manufacturers of fine jewellery and luxury goods, companies which transport and store money and valuables, precious metal refiners and traders).
28      EUIPO disputes the applicant’s arguments.
29      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
30      It is important to point out at the outset that the applicant, in disputing the comparison of the goods at issue, relies on a specific definition of the goods covered by the earlier mark. It seeks to limit those goods to plastic safety boxes intended for uses specifically connected with jewellery, precious metals or luxury goods.
31      In that regard, it must be borne in mind that the scope of protection of the earlier mark was defined by reference to an independent subcategory of goods following the assessment of the evidence of genuine use and that that is not disputed by the applicant (see paragraph 25 above).
32      According to settled case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45; of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23; and of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 24).
33       Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it must be observed that it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24; and of 30 January 2015, now, T‑278/13, not published, EU:T:2015:57, paragraph 25).
34      The criterion of the purpose or intended use is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29, and of 30 January 2015, now, T‑278/13, not published, EU:T:2015:57, paragraph 27).
35      If the goods concerned have several purposes and intended uses – as is often the case – determining whether there exists a separate subcategory of goods by considering in isolation each of the purposes that those goods may have will not be possible. Indeed, such an approach would not enable independent subcategories to be identified coherently and would have the effect of limiting excessively the rights of the proprietor of the earlier mark, inter alia in that that person’s legitimate interest in expanding his or her range of goods or services for which his or her trade mark is registered would not sufficiently be taken into consideration (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 51).
36      It must be pointed out that such an independent subcategory of goods must be coherent and homogeneous and be the result of a division which is significant and not arbitrary. Consequently, the Court of Justice dismissed the appeal brought against the judgment of the General Court which had refused to recognise the existence of an independent subcategory of goods in Class 25, consisting of ‘weather-protective outdoor clothing’, on the ground that all clothing has the same purpose or intended use, because it is intended to cover the human body, to conceal, adorn and protect it against the elements (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraphs 29 to 54).
37      In the present case, it is apparent from the case file that genuine use of the earlier mark has been proved in connection with a precise and narrowly defined independent subcategory of goods of plastic, namely ‘plastic safety boxes and closures therefor’ (see paragraph 32 of the contested decision). That coherent and homogeneous subcategory corresponds to a purpose of storage and transport.
38      It must be pointed out, as observed by EUIPO, that the applicant does not, before the Court, dispute the scope of the goods covered by the earlier mark, as limited to that subcategory, in connection with which genuine use has been proved. Consequently, it cannot limit the scope of those goods to plastic safety boxes intended for uses specifically connected with jewellery, precious metals or luxury goods.
39      In those circumstances, the earlier mark must be held to have been registered for a collection of goods forming a precise and narrowly defined subcategory of the category of ‘goods of plastic’ in Class 20, a subcategory which consists of ‘plastic safety boxes and closures therefor’. That independent subcategory established by the Board of Appeal must, for the purposes of the comparison of the goods at issue, serve as the indication in respect of the goods covered by the earlier mark.
40      In that regard, it must also be pointed out that, in order to assess whether the goods at issue are similar for the purposes of Article 8(1)(b) of Regulation No 207/2009, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed under those marks (judgments of 16 June 2010, Kureha v OHIM – Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, paragraph 71, and of 31 January 2013, Present-Service Ullrich v OHIM – Punt Nou (babilu), T‑66/11, not published, EU:T:2013:48, paragraph 45; see also, to that effect, judgment of 25 September 2018, Grendene v EUIPO – Hipanema (HIPANEMA), T‑435/17, not published, EU:T:2018:596, paragraph 35 and the case-law cited).
41      The Board of Appeal found, in paragraphs 51 and 52 of the contested decision, that the contested goods and the goods covered by the earlier mark, as defined by reference to the abovementioned subcategory, were identical or similar.
42      First, as regards the contested goods in Class 20 consisting of ‘boxes made of plastics materials for packaging of tools and machines as well as their parts and accessories; plastics components for packaging containers for tools and machines as well as their parts and accessories; boxes (packaging -) in made-up form [plastic] for tools and machines as well as their parts and accessories; sales containers of plastic for tools and machines as well as their parts and accessories; electric boxes of plastic for tools and machines as well as their parts and accessories; tool storage containers (non-metallic -) [empty]’, the Board of Appeal found that they overlapped with the ‘plastic safety boxes and plastic closures’ covered by the earlier mark, no matter whether or not they were for tools and machines, since tools and machines could be stored and transported in plastic safety boxes. It added that, since their purposes overlapped, both types of boxes could have the same manufacturers and distribution channels. The Board of Appeal concluded that those goods were identical.
43      Secondly, as regards the contested goods in Class 20 consisting of ‘plastic inserts [trays] for tool boxes; organisation systems of plastic for toolboxes; sales packaging of plastic which also services as an organisation system for toolboxes’, the Board of Appeal found that those goods, as plastic accessories for toolboxes, were similar to the plastic safety boxes covered by the earlier mark, which could be used as plastic toolboxes in the case of more valuable tools. According to the Board of Appeal, they could coincide in producer, relevant public and distribution channels and, furthermore, they could be complementary.
44      Those assessments are disputed by the applicant, which submits that there are differences between the goods at issue with regard to their purposes, manufacturers, distribution channels and consumers.
45      It must be stated that that line of argument on the part of the applicant is based on the incorrect premiss that the goods covered by the earlier mark are intended to be used exclusively for the storage and transport of jewellery, precious metals and luxury goods, and not tools and machines. However, that is not the case here, since the independent subcategory of goods covered by the earlier mark, in connection with which use has been proved and is not disputed by the applicant, does not refer to such an exclusive intended purpose. In that regard, it must be observed that it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration (see paragraph 33 above). Furthermore, the group of goods protected by the earlier mark must be taken into account, and not the goods actually marketed under that mark (see paragraph 40 above).
46      For the purposes of the comparison of the goods at issue, the goods covered by the earlier mark are therefore ‘plastic safety boxes and closures therefor’.
47      First of all, as regards the nature and purpose of the goods at issue, it must be stated that the contested goods and the goods covered by the earlier mark are boxes and containers for general use, which are intended to be used for the storage and transport of various valuable objects, including jewellery and precious metals or tools and machines.
48      Contrary to what the applicant claims, whether such boxes are sealable or not does not alter their nature as containers or their purpose of storage and transport. Moreover, the applicant admits that some toolboxes may, although rarely, be sealable, even though others are open on top.
49      In the light of their natures and their purposes which overlap, the goods at issue could also have the same manufacturers and the same distribution channels.
50      Furthermore, a potential difference between the distribution channels of the goods in Class 20 is not, in itself, an argument that is capable of negating the common purpose of the goods in that class (see, by analogy, judgment of 16 October 2018, M & K v EUIPO – Genfoot (KIMIKA), T‑171/17, not published, EU:T:2018:683, paragraph 71).
51      As regards the accessories for toolboxes, they may be complementary to ‘plastic safety boxes and closures therefor’, the nature and purpose of which overlap with those of toolboxes.
52      Lastly, it is necessary to reject as ineffective the applicant’s argument relating to the previous decision-making practice of the Opposition Division of EUIPO, which found that there was a difference between, on the one hand, ‘tool boxes of metal, empty’ and, on the other hand, ‘keys, padlocks, locks and safes’, since the legality of decisions of the Boards of Appeal must, in principle, be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of such a 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), without prejudice to the fact that safes have a purpose of storage rather than of transport.
53      The Board of Appeal was therefore right in finding that the contested goods were respectively identical, as regards, in essence, the toolboxes, or similar, as regards, in essence, the accessories for such boxes, to the goods covered by the earlier mark.
The comparison of the signs
54      The applicant claims, in essence, that the signs at issue are similar only to a very low degree. It submits, in particular, that the element ‘box’, which is common to both of the signs, is non-distinctive and purely descriptive with regard to boxes. It argues that, consequently, the relevant public will immediately regard those signs as being composed of two conjoined but distinct components, namely an initial part and a second entirely descriptive part consisting of that element ‘box’. It takes the view that that latter element must therefore be regarded as secondary, or even negligible, in the overall impression produced by those signs. According to the applicant, the prefixes ‘oro’ and ‘ro’ are the sole distinctive elements in the signs at issue and it is not an ‘artificial dissection’ to distinguish those prefixes from the suffix ‘box’, which ‘will not play a role’ in the perception of the relevant public. Claiming that the descriptiveness of the element in common ‘box’ must be taken into consideration in the visual, phonetic and conceptual comparison of the signs, the applicant submits that the Board of Appeal’s reasoning, according to which the descriptiveness of one of the components of a composite mark is a factor that ‘could only have an effect in the assessment of the conceptual similarity’, is vitiated by an error of law.
55      The applicant also states that the Board of Appeal’s ‘essential error’, which tainted its entire decision, was not to take into consideration the descriptiveness of the word element ‘box’ when assessing the similarity of the marks at issue, after having explicitly recognised that the word ‘box’ was ‘clearly descriptive for the goods in question’. In particular, it criticises the Board of Appeal for finding that ‘the descriptiveness of a word element can have no relevance to the assessment of visual and aural similarities’, which, in its view, clearly contradicts the established case-law of the Courts of the European Union.
56      EUIPO disputes the applicant’s arguments and ‘refers to the wisdom of the Court to rule on the methodology applicable when the distinctiveness of the elements of signs is to be assessed’.
57       According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30; of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 35 and the case-law cited; and of 23 May 2019, Dentsply De Trey v EUIPO – IDS (AQUAPRINT), T‑312/18, not published, EU:T:2019:358, paragraph 26).
58      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35; of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 36 and the case-law cited; and of 23 May 2019, AQUAPRINT, T‑312/18, not published, EU:T:2019:358, paragraph 27).
59      For the purposes of determining the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35; of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 38 and the case-law cited; and of 23 May 2019, AQUAPRINT, T‑312/18, not published, EU:T:2019:358, paragraph 37).
60      Lastly, even though the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a word sign, he or she will identify the elements which, for him or her, suggest a specific meaning or resemble words known to him or her (judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51; of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 38 and the case-law cited; and of 23 May 2019, AQUAPRINT, T‑312/18, not published, EU:T:2019:358, paragraph 28).
61      In the present case, the signs to be compared are the word sign applied for, ROBOX, and the earlier word sign, OROBOX.
62      The parties agree that the English term ‘box’ in each of the signs at issue is descriptive of the goods at issue, which consist, in essence, of boxes and of accessories therefor. When perceiving the signs at issue, the relevant professional public for the transportation of valuable objects will identify that word element ‘box’ which, for that public, suggests a specific meaning or resembles a word known to it, that of the English word ‘box’ (see paragraph 60 above).
63      However, the parties disagree as to the relevance of that descriptive element ‘box’, which is common to the sign at issue, for the purposes of the comparison of those signs with regard to their overall impressions.
–       The relevance of the element ‘box’ and of its descriptiveness
64      The Board of Appeal stated the following in paragraph 42 of the contested decision:
‘Both signs are word marks for which the words are allusive for the term “BOX” which is clearly descriptive for the goods in question. Even if by definition, the element “BOX” were descriptive, that factor could only have an effect in the assessment of the conceptual similarity. The descriptiveness of an element of a word sign depends, of necessity, on the capacity of the relevant public to understand the meaning of that element. By contrast, the descriptiveness of a word element can have no relevance to the assessment of visual and aural similarities, where the only factors which must be taken into consideration are those capable of having a specific effect on visual and aural impressions.’
65      The applicant submits, in essence, that the Board of Appeal erred in law in stating that ‘the descriptiveness of a word element can have no relevance to the assessment of visual and aural similarities’ and, consequently, in not taking into account the descriptiveness of the element in common ‘box’ in the visual and phonetic comparison of the signs.
66      In that regard, it must be borne in mind that, according to the case-law, the greater or lesser degree of distinctiveness of elements that are common to a mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgments of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 37 and the case-law cited, and of 7 November 2017, Mundipharma v EUIPO – Multipharma (MULTIPHARMA), T‑144/16, not published, EU:T:2017:783, paragraph 34 and the case-law cited).
67      Accordingly, the Court has held that the descriptiveness of an element which is common to two signs, such as ‘bio’, considerably reduces the relative weight of such an element in the comparison of those signs, including the visual and phonetic comparisons, even though its presence must be taken into account (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraphs 49 and 56). Likewise, the Court, after finding that the inherent distinctiveness of the element ‘aqua’, which meant ‘water’ and was common to the signs AQUAPRINT and AQUACEM, was weak with regard to the goods concerned and was neither dominant nor more visible than the elements ‘cem’ and ‘print’ in the signs at issue, with which it formed, in all of those signs, a single word, took that weak distinctive character into account for the purposes of the assessment of the visual, phonetic and conceptual similarities between those signs (see, to that effect, judgment of 23 May 2019, AQUAPRINT, T‑312/18, not published, EU:T:2019:358, paragraphs 40, 52, 61 and 70 to 80).
68      It is clear from that case-law that the descriptiveness or weakly distinctive character of a word element that is common to signs at issue is relevant for the purposes of the assessment of the visual and phonetic similarities between those signs, and not only of the conceptual similarity between those signs.
69      It must therefore be held that, in stating that ‘the descriptiveness of a word element can have no relevance to the assessment of visual and aural similarities’ and, consequently, in not taking into account the descriptiveness of element in common ‘box’ in the visual and phonetic comparison of the signs, the Board of Appeal erred in law.
70      However, such an error of law, even if established as in the present case, would justify the automatic annulment of the contested decision only in so far as it has any bearing on the outcome of the proceedings. That would not be the case if the outcome of the visual, phonetic and conceptual comparison of the signs at issue and of the global assessment of the likelihood of confusion were nevertheless to lead to the conclusion that there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, with regard to all of the contested goods, as the Board of Appeal found in paragraph 63 of the contested decision.
71      Furthermore, it is necessary to examine the applicant’s arguments that the descriptive element in common ‘box’ is negligible and should not be taken into consideration or does not play ‘a role’ in the comparison of the signs at issue. Consequently, the applicant claims that the prefixes ‘oro’ and ‘ro’ are the only elements to be taken into consideration for the purposes of the comparison of those signs.
72      According to the case-law, even though the relative weight of the element in common in the visual or phonetic comparison of the signs is, as a result of its descriptiveness, considerably reduced, the fact remains that its presence must be taken into account in the comparison and that it determines, to a not insignificant extent, the overall impression created by those signs (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraphs 49 and 56). Such an element cannot therefore be disregarded in the analysis of the visual and phonetic similarities of those signs (see, to that effect, judgment of 7 November 2017, MULTIPHARMA, T‑144/16, not published, EU:T:2017:783, paragraphs 42 and 49).
73      It is clear from that case-law that, contrary to what the applicant claims, the descriptive or weakly distinctive elements of signs at issue are not, for that reason alone, negligible in the overall impression created by those signs and that they must, in principle, be taken into consideration for the purposes of the comparison of those signs.
74      It follows that, in spite of the descriptiveness of the term ‘box’ with regard to the goods at issue, the element in common ‘box’ is not negligible in the overall impression created by the signs at issue, signs of which that element is part. Consequently, the applicant errs in claiming that the prefixes ‘oro’ and ‘ro’ are the only elements to be taken into consideration for the purposes of the comparison of those signs.
–       The visual comparison
75      The Board of Appeal found, in paragraphs 43 and 44 of the contested decision, that, visually, the signs at issue coincided in the element ‘-robox’, which comprised five out of the six letters of the earlier mark and the contested sign in its entirety, and differed in the additional first letter of the earlier mark, ‘o’. It concluded that, despite the different beginnings, the signs were visually similar to ‘at least an average’ degree, since the mark applied for was entirely integrated in the earlier mark. In paragraph 63 of that decision, when carrying out the global assessment of the likelihood of confusion, it stated, inter alia, that the signs at issue were visually similar ‘to an average degree’, since the mark applied for was entirely included in the earlier mark and there was only one letter at the beginning that marked the difference between those signs.
76      The applicant claims that the signs at issue are visually different because the relevant public will focus on the initial parts of those signs, ‘oro-’ and ‘ro-’, and will disregard the separable element ‘box’, which, since it is descriptive with regard to the goods at issue, plays no role in that public’s mind or recollection. It submits that the difference between the initial elements ‘oro’ and ‘ro’ is striking, in the light of the symmetry of the former element and their different lengths. It argues that the public would not perceive ‘orobox’ as consisting of ‘o’ and ‘robox’ but would perceive two marks consisting of two elements each, one of which (‘box’) is descriptive and the other of which (‘ro’ and ‘oro’ respectively), is the distinctive and dominant element. The applicant concludes that the visual similarity is very low in degree, because the initial element ‘oro’ is significantly different when compared with the initial element ‘ro’, and the endings ‘box’ in both marks will not play a role in the perception of the relevant public.
77      In that regard, it must be pointed out that the signs at issue coincide in a sequence of five letters, all of which are repeated in the same order, namely ‘r’, ‘o’, ‘b’, ‘o’ and ‘x’. They differ only in the additional first letter of the earlier mark, ‘o’.
78      Accordingly, it is important to point out that the signs at issue do not only have the descriptive element ‘box’ in common, but also have the letters ‘r’ and ‘o’ in the same order in common. Furthermore, the sign applied for ROBOX is included in its entirety in the earlier mark.
79      Although it is true that the first letter of the earlier mark, ‘o’, is not reproduced in the sign applied for, that difference alone cannot counteract the at least average degree of similarity arising from the identity of the last five letters of the two signs, ‘robox’, and their almost identical, apart from one letter, lengths (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 51 and the case-law cited). That is particularly so because the sequence of five letters in common, ‘robox’, constitutes the whole of the mark applied for.
80      The Board of Appeal was therefore right in finding that the signs at issue were visually similar to ‘at least an average’ degree.
–       The phonetic comparison
81      The Board of Appeal found, in paragraphs 45 and 46 of the contested decision, that, phonetically, irrespective of the different rules of pronunciation in the different parts of the relevant territories, the signs coincided in the sound of the letters in the element ‘-robox’, which consisted of five out of the six letters in the earlier mark and the sign applied for in its entirety, and differed in the sound of the additional first letter of the earlier mark, ‘o’. It stated that the earlier mark was a trisyllabic word, whereas the sign applied for was a disyllabic word, so their intonation and rhythm were somewhat different. It concluded that, despite the difference in rhythm and intonation, the signs were phonetically similar to a ‘high degree’. In paragraph 63 of that decision, when carrying out the global assessment of the likelihood of confusion, it stated, inter alia, that the signs at issue were phonetically similar ‘to an average degree’.
82      The applicant submits that, in the light of the differences in their first syllables, intonation and rhythm, the degree of phonetic similarity between the signs is very low or ‘at most low’, but not high. It argues that the Board of Appeal’s analysis did not do justice to the reduced impact of the descriptive element ‘box’ on the relevant public’s perception or to the importance of the beginnings of marks, the number of syllables and the intonation, by overestimating the importance of the coincidence in a final syllable, which is, moreover, descriptive of the goods at issue.
83      To begin with, as regards the apparent inconsistency between paragraphs 46 and 63 of the contested decision, which has not, however, been pointed out by the applicant, it must be held that that clerical error has no bearing on the legality of that decision. It is sufficient to state that it is apparent from those paragraphs that the Board of Appeal found, in any event, that there was an at least average degree of phonetic similarity. Consequently, that apparent inconsistency can be resolved and is not capable of altering the meaning of the decision in question, or the applicant’s understanding of that decision (see, to that effect and by analogy, judgment of 10 October 2019, Biasotto v EUIPO – Oofos (OO), T‑454/18, not published, EU:T:2019:735, paragraph 54 and the case-law cited).
84      Next, it must be pointed out that the signs at issue coincide in the sound sequence ‘robox’. They differ only in the additional first syllable of the earlier mark, ‘o’.
85      Accordingly, it is important to point out that the signs at issue do not only have in common the syllable corresponding to the descriptive element ‘box’, but also have the syllable ‘ro’ preceding that element in common. Furthermore, the sign applied for ROBOX is included in its entirety in the earlier mark.
86      It is true that the first letter ‘o’ in the earlier mark is pronounced differently and gives rise to minor differences in intonation and rhythm, due to the trisyllabic rather than disyllabic structure. However, those differences cannot suffice to counteract the at least average degree of phonetic similarity between the signs arising out of the identity of the two syllables in common ‘ro’ and ‘box’, which are pronounced almost identically.
87      The Board of Appeal was therefore right in finding that the signs at issue were phonetically similar to an at least average degree.
–       The conceptual comparison
88      The Board of Appeal found, in paragraph 47 of the contested decision, that, to the extent that the public understood that both marks referred to ‘box’, they were highly similar conceptually. However, it added that, since that term was descriptive for the goods in question, the conceptual similarity was of less importance.
89      The applicant submits that it is not possible to compare the meanings of the signs at issue and that the conceptual comparison remains neutral. It argues that the element in common ‘box’ is descriptive and negligible, that the mark applied for will be perceived as combination of fanciful words (a box called ‘ro’) and that the earlier mark refers to the idea of a golden box or a box that contains gold. Accordingly, it submits that the prefix ‘oro’, which means ‘gold’ in Italian and Spanish and is understood in the remaining Member States and definitely by professionals involved with jewellery and precious metals, is comprehensible and allusive and that the prefix ‘ro’, which derives from its own company name, has no meaning.
90      In that regard, it must be pointed out that the term ‘box’, which is common to the two signs at issue, is descriptive of the goods at issue, in particular of boxes. Consequently, the professional public will understand it as referring to the concept of ‘box’.
91      It must therefore be held that there is a conceptual similarity between the signs at issue on account of the element in common ‘box’ and that the degree of that similarity is high.
92      However, as in paragraph 47 of the contested decision, that similarity must be considered in the light of the fact that the element ‘box’ is descriptive of the goods at issue. Furthermore, the relevant public will not attribute any particular meaning to the signs taken as a whole. It follows that the conceptual similarity plays a limited role and is of less importance in the assessment of the likelihood of confusion (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 67 and the case-law cited).
93      As regards the element ‘oro’ in the earlier mark, the applicant submits that it conveys the concept of gold and alludes to the goods in connection with which that mark has been used. Without it being necessary to examine whether that argument is being put forward for the first time before the Court, it is sufficient to point out, as observed by EUIPO, that that mark has been put to genuine use in connection with ‘plastic safety boxes and closures therefor’, without any reference to jewellery or precious metals (see paragraphs 25 and 30 to 40 above). The argument that the mark in question has allegedly been used in connection with jewellery or precious metals is therefore irrelevant with regard to determining the concept which will be perceived by the relevant public. In addition, even if the relevant public were to understand ‘oro’ as ‘gold’, that element would also have a laudatory connotation, as referring to a superior quality, as the applicant itself has admitted.
94      The Board of Appeal did not therefore err when analysing the conceptual similarity between the signs at issue.
The global assessment of the likelihood of confusion
95      The applicant claims that there is no likelihood of confusion, given the low degree of similarity, if not the difference, between the goods at issue, the low degree of similarity and notable visual and phonetic differences between the signs, the descriptiveness of the element ‘box’, the high level of attention of the relevant public, which leaves little room for imperfect recollection, and, in the light of the objective circumstances in which the goods are marketed on the market, the lesser importance of the phonetic as opposed to the visual comparison. It concludes that there is no likelihood of confusion between the marks at issue in respect of the goods at issue, because the relevant consumer, who displays a particularly high level of attention at the time of purchase, will perceive the differences between those marks and will not think that the goods to which they are affixed have the same commercial origin.
96      According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 45).
97      The Board of Appeal found, in paragraph 63 of the contested decision, that, as the contested goods in Class 20 had been found to be in part identical and in part similar to the goods covered by the earlier mark and the signs at issue had been found to be ‘visually and aurally similar to an average degree’ since the mark applied for was entirely included in the earlier mark and there was only one letter at the beginning that marked the difference between those signs, there was a likelihood of confusion, even for the professional public, owing to the highly similar structure of the marks and their only difference being in the initial letter ‘o’.
98      First of all, it is necessary to reject the applicant’s claim that the visual aspect of the signs plays a more important role with regard to the purchase of the goods at issue than the phonetic aspect on account of the circumstances in which the goods are marketed, because that claim has not been substantiated and cannot, in any event, succeed in the present case, since the degree of both the visual and phonetic similarity has been held to be at least average (see paragraphs 80 and 87 above).
99      Furthermore, contrary to what the applicant submits, it must be pointed out that, according to settled case-law, the fact that the relevant public will be more attentive to the identity of the producer or supplier of the product or service that it wishes to purchase does not mean, however, that that public will examine down to the smallest detail the mark before it, or that it will compare that mark in minute detail to another mark. 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 (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26; of 16 July 2014, Endoceutics v OHIM – Merck (FEMIVIA), T‑324/13, not published, EU:T:2014:672, paragraph 48; and of 9 March 2018, Recordati Orphan Drugs v EUIPO – Laboratorios Normon (NORMOSANG), T‑103/17, not published, EU:T:2018:126, paragraph 80).
100    Lastly, it is important to point out, as observed by EUIPO, that, given the need to carry out a global assessment of marks composed of two or more elements, which applies  a fortiori to those marks which are not segmented and are all in one piece, the finding by the Court that there is a likelihood of confusion leads solely to the protection of a certain combination of elements, without, however, protecting as such a descriptive element that is part of that combination (see, to that effect, orders of 15 January 2010, Messer Group v Air Products and Chemicals, C‑579/08 P, not published, EU:C:2010:18, paragraph 73, and of 30 January 2014, Industrias Alen v The Clorox Company, C‑422/12 P, EU:C:2014:57, paragraph 45).
101    In the present case, given the identity or similarity of the goods at issue, the at least average degree of visual and phonetic similarity between the signs at issue and the lesser importance of the high degree of conceptual similarity, and having regard to the descriptiveness of the element in common ‘box’ and the normal degree of inherent distinctiveness of the earlier mark, which is not disputed by the applicant, it must be held, in a global assessment of those factors, in the light of the interdependence between them and of the imperfect recollection which the relevant public has of the signs at issue, that the Board of Appeal was right in finding that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, with regard to all of the contested goods, even for the professional public, which has a high level of attention.
102    It follows that the error of law which has been held to exist in paragraph 69 above does not have any bearing on the outcome of the proceedings and cannot result in the annulment of the contested decision.
103    In view of all of the foregoing considerations, the single plea in law must be rejected and the action must therefore be dismissed in its entirety.
Costs
104    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.
105    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Rothenberger AG to pay the costs.
Costeira
Gratsias
Kancheva
Delivered in open court in Luxembourg on 15 October 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.