JUDGMENT OF THE GENERAL COURT (Second Chamber)
14 July 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark DriCloud — Earlier international word marks ICLOUD — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Submission of evidence out of time — Article 76(2) of Regulation No 207/2009)
In Case T‑223/16,
Massive Bionics, SL, established in Madrid (Spain), represented by M. Galindo Martens, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Apple Inc., established in Cupertino, California (United States), represented by J. Olsen, P. Andreottola, Solicitors, and G. Tritton, Barrister,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 3 March 2016 (Case R 339/2015-5), relating to opposition proceedings between Apple and Massive Bionics,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 May 2016,
having regard to the response of EUIPO lodged at the Court Registry on 14 October 2016,
having regard to the response of the intervener lodged at the Court Registry on 21 October 2016,
having regard to the fact that no request for a hearing was submitted by the main 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 9 April 2013, the applicant, Massive Bionics, SL, 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).
2        Registration as a mark was sought for the following figurative sign:
3        The services in respect of which registration was sought are in Classes 35, 42 and 44 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 35: ‘Advertising; Business management; Business administration; Office functions; Procurement services for others (purchasing goods and services for other businesses); Updating of advertising material; Import-export agencies; Commercial information agencies; Publicity agencies; Rental of vending machines; Rental of advertising space; Rental of photocopying machines; Office machines and equipment rental; Publicity material rental; Rental of advertising time on communication media; Cost price analysis; Advisory services for business management; Business management assistance; Business auditing; Data search in computer files for others; Marketing research; Sponsorship search; Business research; Commercial or industrial management assistance; Price comparison services; Compilation of information into computer databases; Layout services for advertising purposes; News clipping services; Business management consultancy; Personnel management consultancy; Business organization consultancy; Business management and organization consultancy; Professional business consultancy; Accounting; Telephone answering for unavailable subscribers; Publicity columns preparation; Tax preparation; Shop window dressing; Demonstration of goods; Dissemination of advertising matter; Distribution of samples; Relocation services for businesses; Drawing up of statements of accounts; Marketing studies; Outsourcing services (business assistance); Invoicing; Organization of trade fairs for commercial or advertising purposes; Business management of hotels; Commercial administration of the licensing of the goods and services of others; Computerized file management; Business management of performing artists; Business inquiries; Business information; Commercial information and advice for consumers (consumer advice shop); Business investigations; Marketing; Typing; Modelling for advertising or sales promotion; Payroll preparation; Employment agencies; Organization of fashion shows for promotional purposes; Organization of exhibitions for commercial or advertising purposes; Arranging newspaper subscriptions for others; Psychological testing for the selection of personnel; Presentation of goods on communication media, for retail purposes; Economic forecasting; Production of advertising films; Sales promotion for others; Publication of publicity texts; Advertising; On-line advertising on a computer network; Bill-posting; Direct mail advertising; Advertising by mail order; Radio advertising; Television advertising; Compilation of statistics; Writing of publicity texts; Public relations; Document reproduction; Secretarial services; Personnel recruitment; Business efficiency expert services; Photocopying services; Business management of sports people; Telemarketing services; Systemization of information into computer databases; Opinion polling; Arranging subscriptions to telecommunication services for others; Shorthand; Administrative processing of purchase orders; Transcription; Word processing; Business appraisals; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Auctioneering’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Updating of computer software; Hosting computer sites (web sites); Computer rental; Rental of web servers; Rental of computer software; Computer system analysis; Water analysis; Analysis for oil-field exploitation; Chemical analysis; Computer virus protection services; Architecture; Information technology (IT) consulting services; Energy auditing; Authenticating works of art; Calibration (measuring); Construction drafting; Consultancy in the field of energy-saving; Architectural consultation; Web site design consultancy; Consultancy in the design and development of computer hardware; Computer software consultancy; Monitoring of computer systems by remote access; Quality control; Oil-well testing; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data (not physical conversion); Creating and maintaining web sites for others; Design of interior decor; Digitization of documents (scanning); Packaging design; Graphic arts design; Dress designing; Computer system design; Computer software design; Industrial design; Duplication of computer programs; Material testing; Textile testing; Clinical trials; Styling (industrial design); Technical project studies; Quality evaluation of wool; Quality valuation of standing timber; Underwater exploration; Server hosting; Weather forecasting; Engineering; Vehicle roadworthiness testing; Installation of computer software; Bacteriological research; Biological research; Scientific research; Cosmetic research; Physics (research); Research in the field of environmental protection; Mechanical research; Geological research; Chemical research; Technical research; Research and development of new products for others; Land surveys; Maintenance of computer software; Oil-field surveys; Geological surveys; Surveying; Urban planning; Computer programming; Geological prospecting; Oil prospecting; Providing search engines for the internet; Chemistry services; Recovery of computer data; Handwriting analysis (graphology); Provision of scientific information, advice and consultancy in relation to carbon offsetting; Scientific laboratory services; Cloud seeding; Software as a service (SaaS)’;
–        Class 44: ‘Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services; Farming equipment rental; Medical equipment rental; Rental of sanitation facilities; Pet grooming; Aromatherapy services; Flower arranging; Pharmacy advice; Health counseling; Medical assistance; Veterinary assistance; Blood bank services; Public baths for hygiene purposes; Turkish baths; Rest homes; Health centers; Tree surgery; Plastic surgery; Medical clinic services; Wreath making; Animal breeding; Animal grooming; Landscape design; Vermin exterminating for agriculture, horticulture and forestry; Weed killing; Nursing, medical; Pharmacists’ services to make up prescriptions; In vitro fertilization services; Physiotherapy; Horticulture; Hospices; Hospitals; Hair implantation; Artificial insemination services; Gardening; Landscape gardening; Manicuring; Lawn care; Massage; Dentistry; Midwife services; Hairdressing salons; Tree planting for carbon offsetting purposes; Services of a psychologist; Aerial and surface spreading of fertilizers and other agricultural chemicals; Chiropractics; Rehabilitation for substance abuse patients; Nursing homes; Beauty salons; Health care; Sanatoriums; Sauna services; Aquaculture services; Alternative medicine services; Opticians’ services; Speech therapy services; Solarium services; Health spa services; Tattooing; Telemedicine services; Therapy services; Visagists’ services; Plant nurseries’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 2013/082 of 2 May 2013.
5        On 1 August 2013, the intervener, Apple Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6        The opposition was based on the following earlier rights:
–        international registration No 970388, designating the European Union, of the word mark ICLOUD, covering Classes 9 and 42;
–        international registrations No 1081721, No 1106373 and No 1087010, designating Cyprus, of the word mark ICLOUD, together protecting goods and services in Classes 9, 35, 38 to 42 and 45;
–        Community figurative trade mark registration No 7439607, reproduced below, in respect of Classes 9, 35, 38, 41 and 42:
–        international registration No 1062105, designating the European Union, of the figurative mark reproduced below, covering goods and services in Classes 9 and 42:
–        the well-known word mark ICLOUD and the figurative mark reproduced below, also well known (within the meaning of Article 6 of the Paris Convention), covering a wide range of goods and services in Classes 9, 28, 35, 38 and 40 to 42:
–        the earlier non-registered word sign ICLOUD and the earlier non-registered figurative sign, reproduced below, used in the course of trade in all the Member States of the European Union and covering a wide range of goods and services in Classes 9, 28, 35, 38 and 40 to 42:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.
8        On 8 December 2014, the Opposition Division rejected the opposition in its entirety.
9        On 6 February 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 3 March 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially annulled the Opposition Division’s decision in so far as the opposition had been rejected in respect of the services in Class 35 and certain services in Class 42.
11      The Board of Appeal found that, notwithstanding their belated submission, the excerpts from the Romarin database attesting to the validity of the intervener’s international marks No 970388 and No 1062105 could be taken into account.
12      Furthermore, the Board of Appeal began to examine the four ICLOUD word marks referred to in the first two indents of paragraph 6 above.
13      The Board of Appeal found that the relevant public consisted of consumers in the European Union and, in particular, in Cyprus. Furthermore, having regard to the specification of the marks at issue, which cover a wide range of goods and services in Classes 9, 35, 38, 40, 41, 42, 44 and 45 aimed both at the general public and at specialists, the Board of Appeal found that the relevant public had to be deemed to consist of average consumers, who were reasonably well informed and reasonably observant and circumspect. However, it pointed out that the average consumer’s level of attention was likely to vary from average to high according to the category of goods or services in question.
14      As regards the comparison of the goods and services covered by the marks at issue, although the Opposition Division, for reasons of procedural economy had not undertaken a full comparison of the goods and services concerned, having carried out its examination as if all the services concerned were identical, and although none of the parties had put forward a complaint in that respect before the Board of Appeal, the Board of Appeal found it appropriate, in accordance with the case-law resulting from the judgment of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN) (T‑57/03, EU:T:2005:29, paragraph 21), to carry out such an examination. The Board of Appeal found that all the contested services in Class 35 were identical or similar to services in that class covered by earlier international registration No 1087010. It likewise found that many of the contested services in Class 42 were identical or similar to services in that class covered by registrations No 970388 and No 1087010 or to services in Class 38 covered by registration No 1087010. By contrast, it found that the remaining services in Class 42 and all the contested services in Class 44 were dissimilar to the goods or services covered by the earlier marks.
15      As regards the comparison of the signs, the Board of Appeal took the view that the signs at issue were similar.
16      The Board of Appeal also found that the earlier ICLOUD marks had an average degree of inherent distinctiveness.
17      The Board of Appeal then reached the conclusion that there was a likelihood of confusion between the marks at issue in respect of the services which were identical or similar. By contrast, it found that a likelihood of confusion could not be established with regard to the dissimilar services in Classes 42 and 44 covered by the contested sign.
18      Lastly, the Board of Appeal examined the opposition on the basis of the other marks listed in paragraph 6 above. It found that the opposition on the basis of registrations No 1062105 and No 7439607 could not succeed. Likewise, it found that the opposition could not be upheld on the basis of Article 8(4) or (5) of Regulation No 207/2009 or on the basis of the marks which are allegedly well known within the meaning of Article 6bis of the Paris Convention.
Forms of order sought
19      The applicant claims that the Court should:
–        annul the contested decision and confirm the Opposition Division’s decision of 8 December 2014;
–        order EUIPO to pay the costs.
20      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
21      The intervener contends that the Court should dismiss the action.
The documents submitted for the first time before the Court
22      EUIPO submits that Annexes A6, A13 and A14 to the application are new documents inasmuch as they were not produced before it. It maintains that those documents are therefore inadmissible.
23      It must be pointed out that Annex A13 concerns written pleadings submitted by the applicant in the course of proceedings pending before the Tribunal Superior de Justicia de Madrid (High Court of Justice, Madrid, Spain). Annex A14 is a list of trade marks which co-exist in the European Union.
24      The documents in Annexes A13 and A14 to the application, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need 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).
25      By contrast, there is no need to declare Annex A6 inadmissible. Annex A6 reproduces a decision of the Opposition Division regarding the marks DRIPHONE/IPHONE. Although produced for the first time before the Court, it is not strictly evidence but relates to EUIPO’s decision-making practice, to which a party has the right to refer, even after the procedure before EUIPO is complete (judgments of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 20, and of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 16).
Substance
26      In support of the action, first of all, the applicant puts forward a number of arguments which may be reformulated as two pleas in law alleging, first, infringement of Article 76(2) of Regulation No 207/2009 and, secondly, infringement of Article 8(1)(b) of that regulation.
27      Secondly, it must be pointed out that the applicant has an interest in having the contested decision annulled only in so far as the Board of Appeal upheld the intervener’s opposition. Consequently, it must held that the action is seeking, in reality, the annulment of the contested decision only in so far as it upheld the opposition and that its first head of claim must be interpreted as a claim for partial annulment of the contested decision.
28      Furthermore, it must be observed that, as the opposition was not based on the intervener’s mark registered under the number 1111497, the applicant’s remarks relating to that mark are ineffective.
29      Lastly, the Court considers it appropriate, in the present case, to examine first the plea alleging that evidence was submitted out of time.
The alleged infringement of Article 76(2) of Regulation No 207/2009
30      In the application, the applicant expressed its disagreement with the Board of Appeal’s acceptance of the intervener’s submission out of time of the excerpts from the Romarin database attesting to the validity of international marks No 970388 and No 1062105, on the ground that that acceptance infringes procedural safeguards.
31      EUIPO and the intervener dispute that argument put forward by the applicant.
32      In that regard, according to settled case-law, it follows from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late, that is to say, outwith the time limit set by the Opposition Division and, as the case may be, for the first time before the Board of Appeal (judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 30; see also judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 44 and the case-law cited).
33      In stating that EUIPO ‘may’ decide to disregard facts and evidence submitted or produced out of time, Article 76(2) of Regulation No 207/2009 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take them into account (see judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 45 and the case-law cited).
34      It must therefore be established whether the Board of Appeal exercised its discretion properly and whether it provided an adequate statement of reasons.
35      In the present case, the Board of Appeal referred, in paragraph 20 of the contested decision, to the criteria laid down by case-law which it has to consider in exercising that discretion, namely:
–        whether the evidence presented for the first time before it is supplementary and intended to strengthen or to clarify the content of the initial evidence;
–        whether the stage of the proceedings at which the late submission takes place and the circumstances surrounding it do not preclude such matters being taken into account;
–        whether the new evidence is prima facie likely to be genuinely relevant to the outcome of the proceedings;
–        whether the additional evidence made it possible for it to decide on the basis of all the relevant facts and evidence;
–        whether the party wishing to adduce additional evidence has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence.
36      Furthermore, the Board of Appeal found that the conditions for accepting the belated evidence submitted by the intervener had been satisfied.
37      In that regard, it explained in paragraph 21 of the contested decision that the registration excerpts might be relevant for the outcome of the proceedings, that the intervener had already submitted documents with the aim of showing the validity of the earlier marks on 25 February 2014, and that the Romarin excerpts only confirmed the information already given in the previously submitted excerpts, with the result that they were merely additional and supplementary documents. The Board of Appeal likewise found that the applicant had not contested the validity of the excerpts submitted on 25 February 2014, although it had been given the opportunity to comment on the evidence, and that it was therefore only when the decision of the Opposition Division was delivered that the intervener had learned about the lack of substantiation. Lastly, the Board of Appeal found that the intervener had submitted the additional documents in a timely manner, namely together with the statement of grounds for the appeal, and that there were no indications that the intervener had employed any delaying tactics or abused time limits.
38      In those circumstances, it must be held that, in accordance with the case-law cited in paragraph 33 above, the Board of Appeal exercised its discretion correctly in deciding, in a reasoned manner and having due regard to all the relevant circumstances, whether or not to take the additional evidence belatedly submitted before it into account for the purposes of giving the decision it was required to take.
39      Moreover, the applicant does not explain why, in its view, the Board of Appeal erred in finding that the circumstances of the case justified the taking into account of the evidence produced belatedly.
40      The present plea in law must therefore be rejected.
The alleged infringement of Article 8(1)(b) of Regulation No 207/2009
41      The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion. According to the applicant, its commercial activities do not have any connection with those of the intervener. Furthermore, it takes the view that the signs at issue are visually and phonetically different. From a visual standpoint, the applicant submits that there are notable differences, in particular as regards the figurative elements. From a phonetic standpoint, it submits that, although the term ‘cloud’, which is also in the earlier marks, is included in the mark applied for, the fact that it is preceded by the term ‘dri’ differentiates it and makes it unusual. Moreover, it maintains that the term ‘cloud’ is a generic term used by many undertakings. It maintains that the coexistence of the marks at issue on the market will not therefore give rise to any likelihood of confusion on the part of consumers.
42      EUIPO and the intervener dispute the applicant’s arguments.
43      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.
44      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).
45      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).
46      The second plea must be examined in the light of the abovementioned principles.
The relevant public
47      The Board of Appeal defined the relevant public, in paragraphs 27 to 29 of the contested decision, as summarised in paragraph 13 above, as consisting of consumers, both specialists and members of the general public, in the European Union and, in particular, in Cyprus. It took the view that that public’s level of attention varied from average to high.
48      In the light of the evidence in the file, the contested decision must be confirmed in relation to those points, which have not, moreover, been disputed by the applicant.
The comparison of the goods and services
49      According to settled case-law, in assessing the similarity of goods or services, 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 (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 85, and of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 21). 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).
50      The Board of Appeal found, as has been summarised in paragraph 14 above, that all the contested services in Class 44 and some of the contested services in Class 42 were dissimilar to the goods and services covered by the earlier marks and that all the contested services in Class 35 and some of the services in Class 42 were identical or similar to services covered by the earlier marks. It must be stated that the applicant does not by any specific argument dispute the outcome of the analysis which the Board of Appeal carried out with regard to the goods and services which were found to be identical or similar.
51      It merely submits that its commercial activities differ from those of the intervener.
52      In that regard, the applicant maintains that it provides to clinics and hospitals services relating to clinical administration, electronic clinical records, legal advice, and audits regarding compliance with the legislation on the protection of personal data, whereas the intervener offers computers, fixed computer equipment or mobile telephony devices such as iPads, iPhones, iPods and Mac computers. The applicant submits that it and the intervener therefore offer completely different services, the purposes of which are different and which are aimed at consumers belonging to different commercial sectors, with the result that any likelihood of confusion on the part of the end customer is non-existent.
53      That line of argument cannot succeed.
54      In the first place, it must be pointed out that the applicant has sought the registration of the contested mark in respect of a large number of services, namely those listed in paragraph 3 above, which go beyond the commercial activities mentioned in paragraph 52 above. The goods and services protected by the earlier marks likewise encompass more than the sale of computers and mobile telephones.
55      By way of example, the services in respect of which the applicant has applied for registration of the mark, such as ‘[the] demonstration of goods; [the] presentation of goods on communication media, for retail purposes; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies’ are covered by the retail services in Class 35 covered by earlier word mark No 1087010.
56      Also by way of example, the mark applied for includes a number of specific services relating to computing and the internet in Class 42, namely ‘hosting computer sites (web sites); information technology (IT) consulting services; web site design consultancy; consultancy in the design and development of computer hardware; computer software consultancy; creating and maintaining web sites for others; server hosting; maintenance of computer software; installation of computer software; computer programming; providing search engines for the internet; software as a service (SaaS)’.
57      Those services are covered by the services of ‘providing computer programs and web pages for others via a global computer network’ covered by earlier international mark No 970388 and the ‘application service provider (ASP) services, namely hosting computer software applications; computer hardware and software consulting services; information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining web-sites; hosting the web-sites of others; providing search engines for obtaining data via communications networks; providing search engines for obtaining data on a global computer network; electronic storage of data; information, advisory and consultancy services relating to all the aforesaid’ covered by earlier international registration No 1087010.
58      In the second place, the comparison of the goods and services under Article 8(1)(b) of Regulation No 207/2009 must relate to the description of the goods or services covered by the marks at issue and not to the goods or services in respect of which the trade marks are actually used unless, following a request made in accordance with Article 42(2) and (3) of Regulation No 207/2009, proof of genuine use of the earlier mark is furnished only in respect of some of the goods or services for which that mark is registered (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 30 and the case-law cited).
59      In the present case, it must be stated that the applicant did not request proof of genuine use of the earlier marks. The applicant’s argument referred to in paragraph 52 above must therefore be rejected as irrelevant.
The comparison of the signs
60      It must be borne in mind that, 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 (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).
61      In addition, 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).
62      It must also be borne in mind that, according to the case-law, where a mark consists of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element (see judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited, and of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraph 23 and the case-law cited).
63      In the present case, the mark applied for consists of a logo and a word element. According to the official description published in the Community Trade Marks Bulletin, the mark applied for is a ‘mixed mark consisting of a name and a logo’. It also states that ‘[t]he logo is in the form of a cloud resembling a safe, in silver-grey, with a watermark consisting of a drawing representing the outline of a doctor, and the letters “DriCloud”’. The applicant has also stated that, besides the image of a doctor, the sign includes the image of a stethoscope.
64      The intervener’s earlier marks consist of the word sign ICLOUD.
65      As the Board of Appeal correctly pointed out in paragraphs 50 to 52 of the contested decision, a consumer perceiving a word sign tends to break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited). As a result, part of the public might perceive the word element ‘dricloud’ as consisting of two elements, namely ‘dr’ and ‘icloud’, instead of ‘dri’ and ‘cloud’ as the applicant has claimed, all the more so because the other elements in the mark applied for, in particular the image of a ‘doctor’ and the ‘stethoscope’, indicate that the first element ‘dr’ may be perceived as the abbreviation for ‘doctor’. Furthermore, a substantial part of the services covered by the mark applied for are services offered by pharmacies, scientists or physicians, such as, for example, the retail of pharmaceutical preparations and medical supplies, scientific research services or medical services in general. Consequently, the consumer of those services might also for that reason perceive the beginning of the mark applied for as ‘dr’ and break the word element down into ‘dr’ and ‘icloud’.
66      From a visual standpoint, the marks at issue have the word element ‘icloud’ in common. As is apparent from the case-law referred to in paragraph 62 above, the word elements of a composite mark are, in principle, more distinctive than the figurative elements, simply because an average consumer will more readily refer to the goods or services in question by citing the name of the trade mark than by describing the figurative element of that mark. The word element ‘dricloud’ will therefore attract the consumer’s attention. The fact remains that the mark applied for also includes other elements, as described in paragraph 63 above. Contrary to what the applicant claims, the Board of Appeal did not disregard those elements. Taking those additional elements into account, the Board of Appeal correctly found, in paragraph 53 of the contested decision, that there was a low degree of visual similarity between the marks.
67      From a phonetic standpoint, it must be stated that the earlier marks consisting of one word element of six letters are reproduced in their entirety in the mark applied for and that the pronunciation of the element ‘icloud’ in the signs at issue is identical. Accordingly, for a part of the public which will pronounce the mark applied for as ‘doctor icloud’ (‘docteur’ in French, ‘dottore’ in Italian, ‘doktor’ in German, and so forth), the marks are similar to an average degree. For the other part of the public which will pronounce it as one word (‘dricloud’), the marks will be very similar phonetically.
68      From a conceptual standpoint, as the Board of Appeal pointed out in paragraph 55 of the contested decision, it is a generally known fact that the letter ‘i’ is commonly used and understood as an abbreviation for the word ‘internet’. Furthermore, part of the public, namely the English-speaking public, will understand the meaning of the English word ‘cloud’ and will associate it with ‘cloud computing services’. Consequently, it is necessary to uphold the Board of Appeal’s finding in paragraph 57 of the contested decision, that, from a conceptual standpoint, the signs at issue evoke similar ideas for those consumers who understand the meaning of ‘icloud’, a finding which has not, moreover, been disputed by the applicant. However, part of the public in the European Union does not understand the English word ‘cloud’ or associate it with the expression ‘cloud computing’. For that public, a conceptual comparison has no significance.
69      In view of the foregoing, it must be held that the Board of Appeal was right to find that the signs were similar overall.
The likelihood of confusion
70      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 (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 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 74).
71      In the present case, the Board of Appeal found, in paragraphs 65 to 69 of the contested decision, that, in the light of the identity or similarity between the services covered by the mark applied for and those covered by the earlier marks, the similarity of the signs at issue and the average degree of inherent distinctiveness of the earlier marks, there was a likelihood of confusion between the marks at issue.
72      That finding cannot be called into question by the arguments put forward by the applicant.
73      The applicant submits, in essence, that the word ‘cloud’, the expression ‘cloud computing’ and the symbol of the cloud which represents them are totally generic and used by countless undertakings.
74      In the first place, it must be stated that the trade marks which are relevant in the present case are the international word marks ICLOUD registered under the numbers 970388, 1081721, 1106373 and 1087010 and not the figurative marks set out in paragraph 6 above. Consequently, the question whether the symbol of the cloud is generic is irrelevant.
75      In the second place, even though the word ‘cloud’ appears in the marks at issue, the element which is identical is above all the element ‘icloud’, of which the earlier marks consist.
76      In so far as the applicant might be claiming that the earlier marks are descriptive and devoid of any distinctive character, such a claim cannot succeed. In that regard, the Board of Appeal, in accordance with the case-law resulting from the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 45), found that the earlier marks were valid and had distinctive character. The Board of Appeal rejected the Opposition Division’s finding that the combination of ‘i’ and ‘cloud’ was descriptive and non-distinctive. In fact, the Board of Appeal rightly found that it was contradictory, on the one hand, to assume that the distinctiveness of the earlier marks was enhanced as a result of extensive use and, on the other hand, to argue that the impact of the elements ‘i’ and ‘cloud’ was limited due to their lack of distinctiveness. It therefore reached the conclusion that the international mark ICLOUD designating the European Union and the three international marks ICLOUD designating Cyprus enjoyed the necessary degree of inherent distinctiveness to function as trade marks. That conclusion has not, moreover, been disputed by the applicant.
77      The Board of Appeal also pointed out that a part of the public in the European Union did not understand the meaning of the English term ‘cloud’ or associate it with ‘cloud computing’ and that, apart from that, even from the perspective of the English-speaking public, there was no link between the possible meaning of the word ‘icloud’ and a considerable part of the identical or similar services covered by the marks at issue, with the result that the earlier marks concerned had an average degree of inherent distinctiveness for those consumers.
78      Lastly, although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 12 November 2008, Nalocebar v OHIM — Limiñana y Botella (Limoncello di Capri), T‑210/05, not published, EU:T:2008:482, paragraph 51 and the case-law cited). In the present case, the coincidence in ICLOUD is phonetically, visually and, for part of the public, conceptually, relevant with regard to the similar overall impression created by the marks at issue. It is particularly important because the earlier marks are word marks consisting of that term. Consequently, the Board of Appeal was right to find that there is a likelihood of confusion between the marks at issue in respect of the identical or similar services listed in paragraph 69 of the contested decision.
79      As regards Annex 14 to the application, which contains a list of legally registered trade marks, some including the term ‘cloud’ (with a prefix) and others including an image representing a cloud, which, according to the applicant, does not prevent them from coexisting peacefully, it is sufficient to point out that, in addition to the fact that that annex has been declared inadmissible, according to settled case-law, the existence of registered trade marks is irrelevant with regard to the application of Regulation No 207/2009 because the existence of those marks does not prove that they have been used in such a way as to establish that the distinctive character of that element has been weakened because of its frequent use in the field concerned with the result that peaceful coexistence would be possible (judgment of 24 November 2005, GfK v OHIM — BUS (Online Bus), T‑135/04, EU:T:2005:419, paragraph 68).
80      As regards the applicant’s invocation of the judgment of the Tribunal Superior de Justicia de Madrid (High Court of Justice, Madrid) regarding Spanish trade mark No 3039409 as evidence in support of the lack of a likelihood of confusion, it must be stated that the applicant reproduces in this connection only a passage from the grounds of that judgment without specifying in what way the findings of that court might be taken into account in the present case, or even whether and to what extent the facts that led to that judgment are similar to those in the present case. In any event, the EU trade mark regime is an autonomous legal system which pursues objectives peculiar to it; it applies independently of any national system (judgments of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47, and of 21 January 2009, giropay v OHIM (GIROPAY), T‑399/06, not published, EU:T:2009:11, paragraph 46).
81      Consequently, the likelihood of confusion must be assessed on the basis of the relevant EU legislation alone. Accordingly, EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or indeed a third country. That is so even if such a decision was adopted under national legislation harmonised with EU law or in a country belonging to the language area in which the word mark in question originated (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47, and of 21 January 2009, GIROPAY, T‑399/06, not published, EU:T:2009:11, paragraph 46).
82      In view of all of the foregoing, the present plea in law must be rejected as unfounded and the action must be dismissed in its entirety.
Costs
83      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.
84      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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Massive Bionics, SL to pay the costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 14 July 2017.
E. Coulon
M. Prek
Registrar
President
*      Language of the case: English.