JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
10 November 2021 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark REDELLO – Earlier EU figurative mark CADELLO 88 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑532/20,
Phi Group GmbH, established in Zug (Switzerland), represented by P. Campolini and L. Bidaine, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, V. Ruzek, and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Gruppo Cadoro GmbH, established in Eglisau (Switzerland),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 June 2020 (Case R 2677/2019‑4), relating to opposition proceedings between Gruppo Cadoro and Phi Group,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 21 August 2020,
having regard to the response lodged at the Court Registry on 16 November 2020,
further to the hearing on 25 June 2021,
gives the following
Judgment
I.      Background to the dispute
1        On 11 July 2018, the applicant, Phi Group GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to 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 REDELLO.
3        The goods for which registration was sought fall within Classes 32 and 33, within the meaning 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, for each of those classes, to the following description:
–        Class 32: ‘Non-alcoholic beverages; Preparations for making beverages’;
–        Class 33: ‘Alcoholic beverages (except beer); Preparations for making alcoholic beverages’.
4        On 17 December 2018, the intervener, Gruppo Cadoro GmbH, filed a notice of opposition, under Article 46 of Regulation 2017/1001, to the registration of the mark applied for in respect of all the goods referred to in paragraph 3.
5        The opposition was based on the following earlier rights:
–        the EU word mark CADELLO88, filed on 25 June 2015 and registered on 29 October 2015 under No 14299002 in respect of ‘Beverages (alcoholic), except beer’ in Class 33.
–        the earlier EU figurative mark (the ‘earlier mark’) in colours black, silver and dark grey, filed on 18 July 2017 and registered on 4 December 2017 under No 16990624, for ‘Alcoholic beverages except beer’ in Class 33, as reproduced below:
6        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation 2017/1001.
7        On 18 October 2019, the Opposition Division upheld the opposition on the basis of the earlier mark, reproduced in paragraph 5 above, for the ‘alcoholic beverages (except beer)’ in Class 33, and rejected the opposition for the other goods, in the absence of similarity between those goods and the goods covered by the earlier marks.
8        On 26 November 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision, in that it had upheld the opposition for the ‘alcoholic beverages (except beer)’ in Class 33.
9        By decision of 22 June 2020 (‘the contested decision’) and based on the earlier mark, the Fourth Board of Appeal of EUIPO confirmed the Opposition Division’s decision and dismissed the appeal.
10      Having stated that the goods ‘alcoholic beverages (except beer)’ in Class 33 and covered by the earlier mark were identical to the goods ‘alcoholic beverages (except beer)’ in Class 33 and covered by the mark applied for, the Board of Appeal considered that those marks displayed an average degree of visual similarity, a higher than average degree of phonetic similarity, and had no meaning in conceptual terms, so that the conceptual comparison remained neutral. The Board of Appeal took the view, moreover, that the relevant public, consisting of the general public, displayed a more or less average level of attention, and that the earlier mark had a normal level of intrinsic distinctiveness. In those circumstances, it found a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001, there being no need to examine the opposition presented on the basis of the earlier mark.
II.    Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition to registration of the mark applied for in its entirety or, alternatively, refer the case back to EUIPO for it to give a ruling, drawing all the appropriate conclusions from the Court’s forthcoming decision;
–        order the other party to bear the costs of the proceedings before the Board of Appeal;
–        Order EUIPO and, if necessary, the intervener, to bear the costs of the present proceedings.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
III. Law
13      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, which it formally divided into four parts. It claims, in essence, that the marks at issue are, first of all, visually different. Furthermore, they display only a lower than average degree of phonetic similarity. Next, in its global assessment of the risk of confusion, the Board of Appeal should have given more importance to the visual and conceptual comparisons than to the phonetic comparison. In those circumstances, there would be no likelihood of confusion within the meaning of that provision.
14      EUIPO disputes the applicant’s arguments.
15      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, an earlier trade mark and the identity or similarity of the goods or services covered by the two 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.
16      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).
17      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
18      It must also be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
19      It is in the light of those considerations that it must be assessed whether the Board of Appeal was right to find that the registration of the mark applied for could give rise to a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected.
20      As a preliminary point, it must be stated that the applicant is not calling into question the Board of Appeal’s findings as to the definition of the relevant public and its degree of attention, as referred to in paragraphs 13 and 27 of the contested decision, according to which the relevant public is that in the territory of all the EU Member States, consisting of the general public, whose level of attention is no higher than average.
21      Nor does the applicant dispute the Board of Appeal’s finding, in paragraph 14 of the contested decision, that the goods covered by the earlier mark are identical to those covered by the mark applied for, both corresponding to the ‘alcoholic beverages (except beer)’ in Class 33.
22      Moreover, there is no evidence in the file that justifies calling into question the Board of Appeal’s findings, which are likewise not disputed by EUIPO, as regards both the relevant public and its level of attention and the identity of the goods covered.
23      In those circumstances, and taking account of its arguments, such as they have been presented, in paragraph 13 above, the applicant must be regarded as disputing, first, the comparison of the signs at issue and, secondly, the global assessment of the risk of confusion.
A.      The comparison of the signs
24      It is apparent from the case-law that 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 that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited, and of 2 December 2020, inMusic Brands v EUIPO – Equipson (Marq), T‑687/19, not published, EU:T:2020:582, paragraph 54).
25      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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, 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, paragraph 43), and of 20 September 2019, The Logistical Approach v EUIPO – Idea Groupe (Idealogistic Compass Greatest care in getting it there), T‑716/18, EU:T:2019:642, paragraph 32).
26      In the present case, the mark applied for is a word mark consisting of the word ‘redello’.
27      The earlier mark is a figurative mark including word elements. It is in black, silver and dark grey colours and consists of a black or dark grey rectangle, in the centre of which the word ‘cadello’ is represented in standard type, in silver-coloured capital letters. A graphic of a small, silver-coloured dragon features above the word. The silhouette of a black-coloured mask appears in the centre of the mark, in the background of the word ‘cadello’ and the dragon graphic. At the bottom of the sign, a small, silver-coloured number ‘88’ is also represented.
1.      Distinctiveness or dominant character of the elements of the marks at issue
28      For the purposes of assessing the distinctive character of an element making up 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, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
29      In the present case, the Board of Appeal considered that the mark applied for had no particular meaning. It specified that the ending ‘-ello’ had no particular meaning, either in Italian or in any other EU language. Moreover, associating that group of letters with the English term ‘hello’ would be far-fetched.
30      As regards the earlier mark, the Board of Appeal considered that the word ‘cadello’ was the dominant and most distinctive element of that mark. It justified its assessment by reason of the small size of the dragon and the weak perception of the mask, if visible, the lack of meaning of that element regarding the goods covered by the earlier mark and the fact that, where a mark consists of figurative and textual elements, the consumer generally focuses his or her attention on the latter.
31      The Board of Appeal also considered that the number ‘88’ played a secondary role, whether or not it was perceived as the year of production of the goods, due to its small size and to its secondary position in the earlier mark.
32      The applicant claims, in essence, that those assessments are incorrect, by reason of, first, the visual importance of the black Venetian mask; and, secondly, the weak distinctiveness of the ending ‘-ello’ of the word element of the earlier mark.
33      EUIPO disputes the applicant’s arguments and claims that the documents presented in Annexes A.21 and A.23 are inadmissible, since they were presented for the first time before the Court.
(a)    Admissibility of certain evidence
34      The applicant presents two documents in Annexes A.21 and A.23, headed, respectively, ‘Analysis of the RGB codes of the colours used in the EU figurative trade mark No 16990624’ and ‘Document evidencing the diminutive meaning of the ending – ELLO in Italian’.
35      In response to a question raised by the Court during the hearing, the applicant indicated that it was not disputing the fact that the documents produced in Annexes A.21 and A.23 were presented for the first time before the Court. It specified, however, that those annexes were nonetheless admissible, since they had been produced in response to arguments relied on for the first time in the contested decision.
36      In the present case, it is common ground that it is not disputed that the documents presented in Annexes A.21 and A.23 were produced for the first time before the Court. They cannot therefore be taken into consideration.
37      The action before the Court seeks to review the legality of decisions of the Boards of Appeal of EUIPO, within the meaning of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. The fact that the Annexes A.21 and A.23 were produced by the applicant in response to evidence referred to for the first time in the contested decision is irrelevant in that regard since, in any event, the legality of the decisions of the EUIPO Boards of Appeal must be assessed on the basis of the information available to them at the time they took those decisions.
38      Moreover, and contrary to the applicant’s claim, the documents on which the applicant is relying could have been produced during the administrative procedure. It is indeed apparent from the contested decision, in particular from paragraphs 7 and 8, that the applicant had already relied, before the Board of Appeal, on arguments in support of which such documents were produced, and regarding first, the perception of the Venetian mask and the black, silver and dark grey colours of the earlier mark, an argument in support of which Annex A.21 was produced; and, secondly, the weak distinctiveness in Italian of the element ‘-ELLO’, an argument in support of which Annex A.23 was presented.
39      In those circumstances, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
(b)    Analysis of the distinctive and dominant elements
(1)    Perception of the figurative element consisting of a black mask
40      As a preliminary point, it must be stated that, contrary to the applicant’s submission, the Board of Appeal did not ‘simply’ ignore the representation of a black mask in the earlier mark, since it held that that mask, such as it had been registered, was ‘barely, or even not, perceivable’. Therefore it did indeed take account of such an element in the description of the mark.
41      This having been clarified, as regards the importance of the graphic of a black Venetian mask within the earlier mark, as alleged by the applicant, the comparison must be made between the signs such as they were registered or such as they appear in the application for registration, therefore the actual or potential use of the marks in another form cannot be taken into account in that comparison (see, to that effect, judgment of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraph 66 and the case-law cited). Therefore, the applicant’s argument that ‘the visibility of the Venetian mask [would be] finally confirmed by the use made of the earlier trade mark’, inter alia when that mark is depicted on bottles, is ineffective.
42      For the same reason, the fact that the mask is allegedly more or less visible according to how it appeared on a computer or smartphone screen or according to the technical settings used, in particular the screen’s brightness or contrast levels, or even that the mask, assuming that assertion be proved, is allegedly ‘clearly visible in the register under normal technical conditions’, which the applicant does not, moreover, define, is irrelevant to the assessment of intrinsic or dominant distinctiveness of the elements of the earlier mark, as registered, In any event, it is sufficient to state that the registration certificate of the earlier mark, as reproduced by the applicant in Annex A.20, cannot support the assessment advocated by the applicant. Accordingly, as the Board of Appeal correctly found, the mask is barely, or even not, perceivable and, by reason of its black colour, merges with the black or dark grey rectangle within which the various figurative elements of the earlier mark are incorporated.
43      In any event, if its representation were taken into account, as featured in the reproductions in the earlier mark, referred to in paragraph 11 of the application, and which would correspond, as the applicant claims, to its representation on a computer screen with its brightness set to standard, even higher than standard parameters, the mask cannot dominate the overall impression produced by that mark in the mind of the public in the territory in which it is protected.
44      The graphic of the mask has indeed a secondary role in the overall impression produced by the earlier mark, in so far as it is placed in the background of that mark, and is partially covered by the graphic of a small dragon and the word ‘cadello’ in capital letters, and as the silver colour of other elements of the mark is such as to produce a more striking visual effect than the black, even prominent, colour claimed for the mask. Moreover, the average consumer will have so much more difficulty perceiving the graphic of a black mask that he or she will not proceed to analyse the various details of the mark when making a purchase (see, to that effect, judgment of 24 February 2016, Tayto Group v OHIM – MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 75 and the case-law cited).
45      Furthermore, contrary to what the applicant alleges, there is no basis for concluding that the importance of the mask for the relevant public would be ‘increased by the lower contrast between its colour and the [dark grey] colour of the background’. Such an assertion, assuming it to be correct, would not diminish any less the contrast, more marked and therefore such as to attract more attention, between the silver colour of the other elements of the mark, in particular the word ‘cadello’ in capital letters in the centre of it, and the black colour claimed for the mask, since such a contrast is not disputed by the applicant.
46      The word ‘cadello’ will draw the relevant public’s attention more than the mask will, for the reason that the secondary position it occupies in the earlier mark will, in its most visible representation, look like a decoration, appearing in the background, of such a word element. The same will apply in so far as, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods or services in question by quoting the name of the trade mark than by describing its figurative element (see judgments of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 49 and the case-law cited, and of 29 January 2020, Vinos de Arganza v EUIPO – Nordbrand Nordhausen (ENCANTO), T‑239/19, not published, EU:T:2020:12, paragraph 30 and the case-law cited).
47      The applicant also cannot call into question the Board of Appeal’s assessment on the ground that, according to the analysis of the colours used in the graphic representation of the earlier mark, depending on their Red-Green-Blue Code, that would consist objectively of at least three different colours, so that the mask would not be the same colour as the background.
48      In so far as such an argument is based on the evidence contained in Annex A.21, the admissibility of which has been rejected, it cannot, in any event, be regarded as established, there being no need, as has been stated in paragraph 39 above, to examine the probative force of those items of evidence.
49      The argument that the visibility of the mask would be confirmed by the objective description of the earlier mark, in respect of which the registration certificate claims the three colours black, silver and dark grey, must also be rejected.
50      First, the Board of Appeal did not consider that the background of the earlier mark, which it defined as consisting of a ‘rectangle in black or very dark grey’ was only black. Therefore, the applicant cannot claim that, for such a reason, the Board of Appeal did not take account of the colours, such as they had been claimed.
51      Secondly, the simple fact that the colours that make up the mark, namely black, silver and dark grey, were expressly indicated in the application for registration obviously cannot, contrary to what the applicant claims, be sufficient to ‘confirm’ the visibility of the mask in question, the relevant public’s perception of which does not, in any event, depend only on its colour. The visibility of each component must in fact be assessed depending on all of the other components, taking account of the intrinsic quality of each and of its relative position in the configuration of the composite mark.
52      The arguments relied on by the applicant do not therefore either support a conclusion that the black mask is the more visible or dominant element of the earlier mark or, accordingly, invalidate the Board of Appeal’s assessment, according to which that element was barely, or even not, perceivable.
53      Having regard to all the foregoing, and while the other assessments by the Board of Appeal are not disputed, it must be held that the Board of Appeal rightly found, in paragraph 20 of the contested decision, that by reason of the small size of the dragon and the weak perception of the mask, if indeed it was visible, as well as the secondary role of the number ‘88’, and having regard also to the fact that where a mark is composed of figurative and textual elements, the consumer generally focuses his or her attention on the latter, the word element ‘cadello’ was the dominant and most distinctive element of the earlier mark, being devoid of any meaning in relation to the goods concerned.
(2)    Perception of the final part ‘-ello’ and its distinctiveness
54      The Board of Appeal found, as was noted in paragraph 29 above, that the final part ‘-ello’ of the mark applied for had no meaning on the part of the relevant public.
55      In calling this assessment into question, the applicant claims that the relevant public identifies the particle ‘-ello’ as a particle commonly used in Italian, so that that element was not distinctive or had only, more or less, a ‘very limited’ distinctiveness. Thus it played only a minor role in the comparison of the marks at issue.
56      In that regard, it must first of all be observed that the fact that the sequence of letters ‘-ello’ might be commonly used in an EU language, and in this case, that it might appear to be ‘[like] a typical Italian ending’, cannot suffice, in itself, to call into question the Board of Appeal’s assessment regarding the intrinsic distinctiveness of the signs at issue.
57      Contrary to the applicant’s submission, the assessment of the distinctiveness of a word element needs consideration of its meaning, since that concept means that, on the part of the relevant public, that element is capable of distinguishing the goods or services of one undertaking from those of other undertakings.
58      In that regard, the applicant cannot successfully claim that the Board of Appeal erred as to the facts in having found that the ending ‘ello’ had no meaning whereas in Italian it had a well-known, namely a diminutive, meaning. The lack of meaning of that ending upheld by the Board of Appeal necessarily corresponds to its inappropriateness for identifying, on the part of the relevant public, both in Italian and in any other EU language, the commercial origin of the goods covered by the marks at issue, rather than only its lack of meaning in the Italian language as such.
59      In any event, nothing in the file corroborates the applicant’s assertions that the ending ‘-ello’ would be devoid of any distinctiveness or have ‘very limited’ distinctiveness. The list of Italian words ending in the sequence of letters ‘ello’, which the applicant produces in Annex A.17 to the application, provides no evidence concerning the perception by the relevant public, namely the public in all the EU Member States, of that sequence of letters in relation to the goods covered, namely ‘Alcoholic beverages (except beer)’. The applicant cannot, moreover, in support of its argument, rely on Annex A.23, which would attest to the diminutive nature of the ending ‘ello’ in Italian, since such an annex is, in any event, inadmissible, as has been stated in paragraph 36 above.
60      In those circumstances, none of the applicant’s arguments is capable of calling into question the Board of Appeal’s assessment that the ending ‘ello’ has no meaning.
61      In those circumstances, and although the applicant does not dispute the assessment, as the Board of Appeal also rightly found, that the word sign applied for and the word element of the earlier mark have no meaning in any of the EU languages, their distinctiveness must be regarded as normal.
62      Having regard to all the foregoing, the applicant’s arguments must be rejected and the Board of Appeal’s assessments regarding the dominant and distinctive elements of the marks at issue must be approved.
2.      The visual similarity
63      As a preliminary point, it should be noted that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep), T‑20/19, EU:T:2020:309, paragraph 96 and the case-law cited).
64      In that regard, the presence in each of the marks at issue of several letters in the same order may be of some importance in the assessment of the visual similarity between them (see judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 93 and the case-law cited).
65      As regards the visual comparison of the signs at issue, the Board of Appeal found, in paragraph 21 of the contested decision, that the mark applied for ‘REDELLO’ and the dominant and most distinctive element of the earlier mark ‘cadello’ were both made up of seven letters, five of which were identical and placed in the same positions. Whilst it observed that the signs at issue differed by their first two letters, ‘r/e’ and ‘c/a’, by the figurative elements and by the number ‘88’ of the earlier mark, it did, however, consider that those elements played only a secondary role in the overall impression of that mark. In those circumstances, and after indicating that the consumer tends to pay more attention to the beginning of a mark, it found that, notwithstanding that last fact, the marks displayed an average degree of visual similarity.
66      In contesting that finding, the applicant submits that the lack of distinctiveness of the common word element ‘ello’ and the importance of the Venetian mask in the earlier mark, in addition to the presence of the number ‘88’, the graphic of a dragon in that mark, or the difference between the initial part ‘red’ of the mark applied for and the initial part ‘ca’ of the word element of the earlier mark, exclude all visual similarity between the signs at issue.
67      First of all, as was found in paragraphs 52 and 53 as well as in paragraphs 60 and 61 above, the Board of Appeal rightly considered that the black mask contained in the earlier mark was barely visible and that the ending ‘ello’ had no meaning, so that the applicant’s argument regarding the lack of distinctiveness of that ending had to be rejected.
68      Next, it must be stated that the applicant provides no evidence to justify its view that the figurative elements of the earlier mark prevent there being any visual similarity between the signs at issue.
69      In that regard, as the Board of Appeal rightly found, in view of the small size of the dragon graphic and of the number ‘88’, as well as its position at the bottom of the earlier mark, such figurative elements can only play a secondary role in the overall impression of the earlier mark.
70      Lastly, although it is true that the initial part of a word element is likely to retain the attention of the consumer more than the rest of the mark (see judgment of 20 September 2019, Idealogistic Compass Greatest care in getting it there, T‑716/18, EU:T:2019:642, paragraph 55 and the case-law cited), such a consideration cannot apply in every case (see judgment of 9 December 2020, Almea
v EUIPO – Sanacorp Pharmahandel (Almea), T‑190/20, not published, EU:T:2020:597, paragraph 35 and the case-law cited). However, in the present case, whilst the applicant provides no evidence to establish otherwise, the difference between the first two letters of the mark applied for and the first two letters of the earlier mark does not prevent the consumer from noticing the common element ‘dello’ and the initial letters ‘r/e’ and ‘c/a’ of the marks at issue do not retain the relevant public’s attention more than the letters ‘d/e/l/l/o’ that follow them.
71      In those circumstances, in so far as the word sign applied for and the word element of the earlier mark, of which it constitutes the dominant and most distinctive element, have the same number of letters, of which five placed in the same order are identical, the Board of Appeal was entitled to find that the marks at issue presented an average degree of visual similarity.
3.      The phonetic similarity
72      The Board of Appeal held, in paragraph 22 of the contested decision, that the figurative elements of the earlier mark did not play any phonetic role and that it was unlikely that the numeric element ‘88’ would be pronounced, due to its small size. In those circumstances, it considered that the mark applied for will be pronounced re/del/lo and the earlier mark ca/del/lo, according to their respective rules of pronunciation. Therefore, in view of the common rhythm and intonation in the pronunciation of the marks at issue, and of the identity of the second and the last syllables of the mark applied for and of the second and the last syllables of the word element of the earlier mark, the Board of Appeal found a higher than average degree of phonetic similarity between those marks.
73      The applicant’s arguments are not capable of calling such an assessment into question.
74      First, the argument alleging a lack of distinctiveness in the final part ‘ello’ of the mark applied for and of the word element of the earlier mark has already been rejected as unfounded, as is apparent from paragraphs 59 to 61 above. The applicant cannot therefore rely on such an argument to establish the error that the Board of Appeal allegedly made in its assessment of the phonetic similarity between the marks at issue. Moreover, the applicant neither establishes, nor even alleges, that the relevant public would pronounce those last four letters separately from the first two letters of the mark applied for and of the word element of the earlier mark.
75      Secondly, the applicant considers that the signs at issue are phonetically different due to the difference between the first two letters of the mark applied for and the first two letters of the word element of the earlier mark. It confines itself, in that respect, to relying on the case-law already noted in paragraph 70 above, according to which the initial parts of the word marks may be likely to retain the consumer’s attention more than the subsequent parts, and does not provide any solid evidence relating to the present case in support of its assertion. In particular, the applicant does not explain why the relevant public would focus only on the first two letters of the mark applied for and of the word element of the earlier mark and would ignore the common sequence ‘dello’ that follows, which, consisting of five letters out of the seven that make up the mark applied for and the word element of the earlier mark, represent the most significant part of it.
76      Moreover, there is no basis for the proposition that the average consumer who is reasonably well informed and reasonably observant and circumspect will systematically disregard the second part of the word element of a sign to the point of remembering only the first part (judgment of 18 December 2008, Torres v OHIM – Bodegas Peñalba López (Torre Albéniz),
T‑287/06, EU:T:2008:602, paragraph 56).
77      In those circumstances, notwithstanding the difference between the first syllable ‘re’ of the mark applied for and the first syllable ‘ca’ of the word element of the earlier mark, the Board of Appeal was fully entitled, by reason of the last five common letters ‘d/e/l/l/o’ that make up the second and third syllables of each of those signs and are pronounced according to the same rhythm and the same intonation, to find that the marks at issue displayed a higher than average degree of phonetic similarity.
4.      The conceptual similarity
78      Conceptually, the Board of Appeal found, in paragraph 23 of the contested decision, that the marks at issue had no meaning and that the conceptual comparison between those two marks was neutral.
79      The applicant does not explicitly dispute that finding but submits instead that there is no conceptual similarity between the marks at issue.
80      In that regard, it must be observed from the outset that, in the application, the applicant does not provide any evidence in support of its assertion that the marks at issue are not conceptually similar.
81      In response to a question put by the Court at the hearing, the applicant did, however, state that the marks at issue were not conceptually similar on the ground, in essence, that the earlier mark, due to its figurative elements and, in particular, to the presence of a black Venetian mask, evokes Italy, whereas the word element applied for, in the absence of such a figurative element, cannot have the same meaning.
82      In accordance with case-law, the conceptual differences can indeed be such as to counteract the visual and phonetic similarities if at least one of the marks at issue has, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (see judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 51 and the case-law cited).
83      However, in so far as the black mask is barely, or even not, perceivable, as the Board of Appeal rightly found, and, as has been indicated in paragraph 44 above, has a secondary role in the overall impression produced by the earlier mark in the minds of the relevant public, the meaning that, according to the applicant, would be attached to it, cannot be either sufficiently clear or sufficiently specified that the relevant public would able to grasp it immediately. If, moreover, the number ‘88’ of the earlier mark were perceived separately by the relevant public, as also the meaning of the small dragon, the earlier mark, considered as a whole, would be no less devoid of any intelligible conceptual content.
84      Therefore, the supposed conceptual difference alleged by the applicant, even if it were well founded, is not such as to counteract the visual and phonetic similarities of the marks at issue.
85      In those circumstances, it must be concluded that the Board of Appeal was entitled to find that the conceptual comparison remained neutral.
B.      The overall assessment of the likelihood of confusion
86      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion. The existence of a likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 51 and the case-law cited).
87      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and Others, T‑81/03, T‑82/03 and T‑103/03, EU: T:2006:397, paragraph 74).
88      In the present case, the Board of Appeal found, in paragraph 29 of the contested decision, that, taking into account the identity of the goods concerned, the average visual similarity and the above average phonetic similarity of the signs at issue, as well as the no more than average level of attention of the relevant public and the normal intrinsic distinctiveness of the earlier mark, there existed a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
89      The applicant’s arguments are not such as to call into question such a global assessment of the likelihood of confusion between the marks at issue.
90      In the first place, the applicant submits that, in so far as the goods designated by the two marks are sold in large shopping centres where consumers choose the product themselves from the shelves, that the product would be used essentially as an ingredient in mixed alcoholic beverages, the relevant public would rely primarily on the image of the earlier mark affixed to the product and not on the phonetic perception it would have of the earlier mark. Therefore the lack of visual and conceptual similarity between the marks at issue would override the weak phonetic similarity between the signs, which would exclude any risk of confusion between the earlier mark and the mark applied for.
91      In that regard, as has been stated in paragraphs 71 and 85 above, the marks at issue display an average degree of visual similarity and no conceptual comparison between them is possible. Moreover, it was found, in paragraph 77 above, that the marks at issue displayed a phonetic similarity to a higher than average degree. The premiss on which the applicant’s reasoning is based and according to which the lack of visual and conceptual similarity between the marks at issue would override the weak phonetic similarity between the signs is therefore incorrect, with the result that the first argument must be rejected.
92      In the second place, whilst the applicant claims that the relevant public ‘will not believe that the goods or services in question come from the same undertaking or from economically linked undertakings’ on the ground that the letters ‘ello’ common to the mark applied for and to the word element of the earlier mark would constitute ‘a commonly used ending’, such reasoning must be rejected, as was also found in paragraphs 60 and 61 above.
93      In the light of the foregoing, and since the applicant does not dispute the assessments made by the Board of Appeal as regards the normal intrinsic distinctiveness of the earlier mark, it must be concluded that the Board of Appeal was correct to find, in an overall assessment made in paragraphs 27 to 30 of the contested decision, that there existed a likelihood of confusion.
94      Since the opposition was upheld on the basis of figurative mark No 16990624, the Board of Appeal was entitled, for the purposes of assessing the likelihood of confusion, not to examine the opposition on the basis of the other earlier mark invoked without needing to consider whether, as the applicant claims, the Opposition Division had ‘implicitly but certainly’ held that that other mark was ‘even more dissimilar’ than the earlier figurative mark.
95      In view of all the foregoing, the applicant’s single plea must be dismissed and, therefore, the action in its entirety, there being no need to consider the admissibility of the second head of claim asking the Court to dismiss the intervener’s opposition or to refer the case back to EUIPO (see, to that effect, judgment of 9 September 20202020, Gothe and Kunz v EUIPO – Aldi Einkauf (FAIR ZONE), T‑589/19, not published, EU:T:2020:397, paragraph 80 and the case-law cited).
Costs
96      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
97      The applicant’s subsidiary plea, to order the intervener to bear the costs of the present proceedings, must be rejected. The Rules of Procedure do not provide for the possibility of ordering a party which has not been involved in the proceedings before the Court to bear the costs (judgment of 11 July 2006, Caviar Anzali v OHIM – Novomarket (Asetra), T‑252/04, EU:T:2006:199, paragraph 49).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Phi Group GmbH to pay the costs.
Marcoulli
Frimodt Nielsen
Iliopoulos
Delivered in open court in Luxembourg on 10 November 2021.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.