JUDGMENT OF THE GENERAL COURT (Second Chamber)
29 November 2023 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark Claro – Earlier EU word mark CLARANET – Relative ground for invalidity – Likelihood of confusion – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001))
In Case T‑661/22,
Claro SA, established in São Paulo (Brazil), represented by J. Ferreira Sardinha, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Claranet Europe Ltd, established in Saint Helier (Jersey), represented by M. Forde, Solicitor,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Claro SA, seeks, in essence, the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 August 2022 (Case R 1674/2021-5) (‘the contested decision’).
Background to the dispute
2        On 6 January 2020, the intervener, Claranet Europe Ltd, filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the applicant on 16 December 2016, 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)), in respect of the following figurative sign:
3        The goods and services covered by the contested mark in respect of which a declaration of invalidity of that mark was sought were in Classes 9 and 38 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 corresponded, for each of those classes, to the following description:
–        Class 9: ‘Telephone apparatus, peripherals and fittings (included in this class)’;
–        Class 38: ‘Telecommunication services’.
4        The application for a declaration of invalidity was based on, inter alia, the EU word mark CLARANET, which was registered on 11 December 2009 under the number 8272957 and covers goods and services in Classes 9, 16, 35, 37, 38, 41 and 42 corresponding, with regard to Class 42 to, inter alia, the following description: ‘Computer services’.
5        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of that regulation (now Article 8(1)(b) and (5) of Regulation 2017/1001).
6        On 27 July 2021, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, basing its assessment, as regards the earlier mark, on the ‘computer services’ which have been referred to in paragraph 4 above.
7        On 27 September 2021, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
8        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
9        The applicant claims that the Court should:
–        revoke the contested decision;
–        maintain the validity of the contested mark.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is scheduled.
11      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, and, secondly, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation.
13      Given the date on which the application for registration at issue was filed, namely 16 December 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Moreover, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
14      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to the provisions of Regulation 2017/1001 must be understood as referring to the identically worded provisions of Regulation No 207/2009.
The scope of the applicant’s first head of claim
15      By its first head of claim, the applicant requests that the General Court revoke the contested decision.
16      In that regard, it must be pointed out that, in accordance with Article 72(3) of Regulation 2017/1001, the Court has jurisdiction only to annul or to alter decisions of the Boards of Appeal. The revocation of a decision taken by EUIPO is provided for by Article 103 of Regulation 2017/1001, which states that the department which took a decision may revoke it within one year of its adoption in the event of an obvious procedural error (judgments of 26 June 2018, Jumbo Africa v EUIPO – ProSiebenSat.1 Licensing (JUMBO), T‑78/17, not published, EU:T:2018:383, paragraph 13, and of 14 July 2021, JT v EUIPO – Carrasco Pirard (QUILAPAYÚN), T‑197/20, not published, EU:T:2021:429, paragraph 22).
17      However, although the applicant’s first head of claim is worded as seeking the revocation of the contested decision, it is clear from the body of the application that the purpose of the action is to obtain the annulment of the contested decision. The applicant states that it is bringing its action in accordance with Article 72 of Regulation 2017/1001 and relies on an alleged infringement of the provisions of that regulation. Consequently, it must be held that, by its first head of claim, the applicant is in fact seeking the annulment of the contested decision.
The plea of inadmissibility put forward by the intervener in the response
18      Without formally putting forward a plea of inadmissibility pursuant to Article 130 of the Rules of Procedure of the General Court, the intervener submits that the action is inadmissible because the applicant merely repeats the same arguments as those which it has already put forward before the Cancellation Division and the Board of Appeal, without explaining how and why the Board of Appeal made an error which could lead to the annulment of the contested decision.
19      It must be borne in mind that, according to settled case-law, the purpose of Article 72(2) of Regulation 2017/1001 is a review of the legality of decisions of the Boards of Appeal. Consequently, there is nothing to preclude the applicant from requesting, in essence, that the Court, on the basis of the same arguments as those put forward before the Cancellation Division and the Board of Appeal, review the legality of the contested decision (see, to that effect, judgment of 9 November 2016, Gallardo Blanco v EUIPO – Expasa Agricultura y Ganadería (Representation of a branding iron (shape of an H-shaped horse bit)), T‑716/15, not published, EU:T:2016:649, paragraph 28).
20      It follows that the plea of inadmissibility put forward by the intervener in the response must be rejected.
Substance
The second plea, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation
21      The applicant claims that there is no risk of unfair advantage being taken of, or detriment to, the distinctive character or the repute of the earlier mark, in accordance with Article 8(5) of Regulation No 207/2009.
22      EUIPO contends that that plea is ineffective, because the Board of Appeal did not examine Article 8(5) of Regulation No 207/2009.
23      It must be stated that, as is apparent from paragraph 99 of the contested decision, the Board of Appeal upheld the application for a declaration of invalidity solely on the basis of Article 8(1)(b) of Regulation No 207/2009, without ruling on the ground for invalidity based on Article 8(5) of that regulation.
24      Consequently, a plea alleging infringement of the latter provision cannot lead to the annulment of the contested decision, quite apart from the fact that none of the arguments put forward in the application can be linked to such a plea.
25      It follows that the second plea must be rejected as ineffective.
The first plea, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
26      The applicant submits that there is no likelihood of confusion and disputes the Board of Appeal’s comparison of the signs at issue.
27      EUIPO and the intervener dispute the applicant’s arguments.
28      Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, provides that, upon application by the proprietor of an earlier mark, an EU trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
29      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
30      For the purposes of applying Article 8(1)(b) of Regulation 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).
31      It must be pointed out at the outset that the applicant does not dispute the Board of Appeal’s definition of the relevant public and of the relevant territory. The Board of Appeal found that, although the relevant public consisted of the professional public and the general public, it was necessary to take into account the perception of the general public, which displayed a lower level of attention than professionals did. In particular, the Board of Appeal took the view that the general public displayed a level of attention which varied from average to ‘higher’ with regard to the goods at issue in Class 9, was ‘not necessarily … high’ with regard to the services at issue in Class 38 and varied from ‘normal’ to ‘higher than normal’ with regard to the services at issue in Class 42. As regards the relevant territory, after finding that it was that of the European Union, the Board of Appeal stated that it would focus in its assessment on the English-speaking public in the European Union and on the Benelux public.
32      Likewise, the applicant also does not call into question the Board of Appeal’s finding that the goods and services covered by the contested mark were similar to an average degree to the ‘computer services’ covered by the earlier mark.
33      Moreover, there is nothing in the case file that makes it possible to call those assessments into question.
–       The comparison of the signs
34      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
35      The applicant’s arguments concern, in essence, first, the distinctive and dominant elements of the signs at issue and, secondly, the similarity of those signs.
36      As regards, in the first place, the distinctive and dominant elements of the signs at issue, the Board of Appeal, referring to the judgment of 14 November 2017, Claranet Europe v EUIPO – Claro (claranet) (T‑129/16, not published, EU:T:2017:800), found, in the contested decision, that the earlier mark would be broken down by the relevant public into the word elements ‘clara’ and ‘net’, the former of which did not have a clear meaning for the relevant public, even though part of that public could perceive it as a female first name, whereas the latter was perceived as a descriptive or highly evocative indication of the internet or other communication networks. According to the Board of Appeal, that latter element could not, however, be ignored, because it had an influence, albeit weak, on the perception of the earlier mark, and was weakly distinctive. As regards the contested mark, the Board of Appeal found that the word element ‘claro’ did not have any clear meaning for the relevant public, even though some might associate it with a type of cigar, whereas its figurative elements were purely decorative.
37      The applicant submits that the word elements ‘claro’, ‘clara’ and ‘net’ are weakly distinctive, because, first of all, ‘clara’ and ‘claro’ are common terms in Spanish and Portuguese meaning ‘luminous’ or ‘bright’, secondly, ‘clara’ corresponds to a well-known female name in several Member States and, lastly, ‘net’ is commonly used internationally as an abbreviation for the internet. Furthermore, it argues that numerous other registered trade marks contain the word elements ‘claro’ and ‘claranet’.
38      First of all, it must be noted that, as is submitted by the applicant, the Board of Appeal found that the word element ‘net’ was weakly distinctive.
39      Next, as regards the word elements ‘clara’ and ‘claro’, it must be pointed out that the applicant’s arguments relating to their meaning in Spanish and Portuguese cannot call into question the Board of Appeal’s assessments relating to the perception of the relevant English-speaking and Benelux public, the definition of which public is not disputed by the applicant. Furthermore, the applicant has not established, or even claimed, that that public would know those Spanish or Portuguese words. Consequently, the Board of Appeal did not make any error of assessment in finding that a large part of the relevant public would not attribute a clear meaning to those words.
40      Furthermore, since those word elements do not evoke any clear meaning in relation to the goods and services at issue for the relevant public, including for any part of that public which might perceive a female first name in the word element ‘clara’, the name of a cigar in the word element ‘claro’ or words meaning ‘luminous’ or ‘bright’ in Spanish or Portuguese in both word elements, the Board of Appeal did not make any error of assessment in not finding that those word elements were weakly distinctive in relation to the goods and services at issue.
41      Lastly, the applicant’s argument regarding other registered trade marks which contain the word elements ‘claro’ and ‘claranet’ lacks any precision and is in no way substantiated. It cannot therefore be accepted. In any event, since the applicant merely relies on the coexistence of registered trade marks containing those elements, it must be pointed out that the relevant factor for the purposes of disputing the distinctive character of an element is its actual presence on the market and not its presence in registers or databases (see, to that effect, judgment of 8 March 2013, Mayer Naman v OHIM – Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77).
42      As regards, in the second place, the similarity of the signs at issue, the Board of Appeal found that the signs at issue were visually similar to a below-average degree and phonetically similar to an average degree. The Board of Appeal also found that the conceptual comparison of those signs was ‘neutral’.
43      The applicant submits that, compared as a whole, the signs at issue can easily be distinguished by their word and figurative elements, in the light of the composition and size of those word elements and in the light of the figurative elements of the contested mark.
44      It must be stated at the outset that the applicant does not call into question the Board of Appeal’s assessment that the conceptual comparison of the signs at issue is ‘neutral’.
45      The applicant also does not expressly dispute the Board of Appeal’s visual and phonetic comparison or the degrees of similarity which the Board of Appeal found to exist in those respects. It merely relies generically on certain differences between the signs at issue, regarding the composition and length of their word elements and regarding the figurative elements of the contested mark.
46      In that regard, it must be stated that, as is apparent from paragraphs 76 to 78 of the contested decision, the Board of Appeal did not fail to take into consideration the length and composition of the word elements of the signs at issue and the presence of the figurative elements of the contested mark in the context of the visual comparison of the signs at issue, or, as is apparent from paragraphs 81 and 84 of the contested decision, the length and composition of the word elements of those signs in the context of the phonetic comparison of the signs. On the contrary, it was by taking account of, inter alia, all those factors that the Board of Appeal found that there was a below-average degree of visual similarity and an average degree of phonetic similarity.
47      Moreover, the differences on which the applicant relies do not make it possible to conclude that the signs at issue are not similar. From a visual standpoint, although the word element ‘claranet’ in the earlier mark (eight letters) is slightly longer than the word element ‘claro’ in the contested mark (five letters), the two signs coincide in the initial part of those elements, ‘clar’, which is common to both of them, and differ only in the fifth letter (‘a’ or ‘o’) of those elements, in the weakly distinctive element ‘net’ in the earlier mark and in the decorative figurative elements in the contested mark. The Board of Appeal did not therefore make an error of assessment in thus finding that they were visually similar to a below-average degree. From a phonetic standpoint, although the word element in the earlier mark is pronounced as three syllables, whereas that in the contested mark is pronounced as two syllables, the fact remains that the pronunciation of the two word elements coincides in that of their initial part ‘clar’ and differs only in the final vowel of their second syllable and in the presence, in the earlier mark, of a third syllable, which, however, corresponds to a weakly distinctive word element. The Board of Appeal did not therefore make any error of assessment in also finding that the signs at issue were phonetically similar to an average degree.
48      Consequently, the applicant’s arguments relating to the comparison of the signs at issue must be rejected as unfounded.
–       The likelihood of confusion
49      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
50      The applicant submits that the contested mark and the earlier mark are not confusingly similar. It argues that the distinctive character of the contested mark is strengthened by its figurative elements. It contends that the differences between the marks prevent any confusion, with the result that the consumer will not be misled.
51      It must be pointed out at the outset that, in the contested decision, the Board of Appeal found that the inherent distinctiveness of the earlier mark was normal, stated that the goods and services at issue were similar to an average degree, pointed out that, even if the relevant public’s level of attention was higher than normal, it did not analyse each mark in minute detail and took the view that, even if that public could distinguish between the marks at issue, it could be led to believe that the contested mark was a variation or a sub-brand of the earlier mark for another range of goods and services. Taking into account all those factors and their interdependence, the Board of Appeal concluded that there was a likelihood of confusion.
52      It must be stated that the applicant’s arguments in no way call those assessments into question. First of all, it must be pointed out that the Board of Appeal did not fail to take the differences between the marks at issue into account, but found that, even if the relevant public could distinguish between those marks, that was not sufficient to rule out a likelihood of confusion. Next, it must be stated that, contrary to what the applicant claims, the figurative elements of the contested mark do not make it possible to rule out such a likelihood of confusion, since those elements are purely decorative. As the Board of Appeal correctly found, the visual and phonetic similarities between the marks at issue are such that, in the light of the average degree of similarity between the goods and services at issue, the relevant public might be led to believe that the contested mark is indicative of the same commercial origin as the earlier mark, particularly as a variation or sub-brand of that mark.
53      Consequently, the Board of Appeal did not make any error of assessment in finding that, in the light of all the relevant factors, there was a likelihood of confusion.
54      It follows from the foregoing that the first plea must be rejected as unfounded.
55      In view of all of the foregoing considerations, since none of the pleas relied on by the applicant in support of its claims is to be upheld, the action must be dismissed in its entirety.
Costs
56      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
57      Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is scheduled, EUIPO must, since no hearing has been arranged, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Claro SA to bear its own costs and to pay those incurred by Claranet Europe Ltd;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Marcoulli
Schwarcz
Tomljenović
Delivered in open court in Luxembourg on 29 November 2023.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.