JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
14 December 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark NEMPORT LİMAN İŞLETMELERİ – Earlier EU word mark Newport – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑18/22,
Nemport Liman İşletmeleri Ve Özel Antrepo Nakliye Ticaret AŞ, established in Izmir (Türkiye), represented by V. Martín Santos, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Newport Europe BV, established in Moerdijk (Netherlands),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: E. Coulon,
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 based on Article 263 TFEU, the applicant, Nemport Liman İşletmeleri Ve Özel Antrepo Nakliye Ticaret AŞ, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 November 2021 (Case R 562/2021-4) (‘the contested decision’).
Background to the dispute
2        On 31 July 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark designated services inter alia, in Class 39 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended, and corresponding to the following description: ‘Land, water and air transport services; Transport by pipeline; Storage, wrapping and packaging of goods; Transport and storage of trash and storage of waste; Transport brokerage; Transportation logistics; Transportation services; Container transport services; Storage services; Container storage; Storage of goods; Storage of cargo; Port services [docking services]’.
4        On 11 December 2019, the other party to the proceedings before EUIPO, Newport Europe BV, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5        The opposition was based, inter alia, on the earlier EU word mark Newport, filed on 23 November 2018 and registered on 19 March 2019 under number 17989907 for services in, inter alia, Class 39 and corresponding to the following description: ‘Container rental; Container storage; Road haulage services for containers; Filling of containers; Transportation of containers; Container leasing for the shipping industry; Container stuffing of ships cargo; Transport services; Freight ship transport; Transportation and storage; Transport reservation; Air transport; Refrigerated transport of food; Rental of transport vehicles; Packaging and storage of goods; Distribution services; Storage of goods; Refrigerated storage of goods; Storage and delivery of goods; Storage of goods in transit; Storage of goods in warehouses; Storage information; Advisory services relating to the distribution of goods; Shipping agency services; Shipping agency services for arranging the transportation of goods; Distribution [transport] of goods by sea; Distribution [transport] of goods by air; Distribution [transport] of goods by road; Transport of goods; Haulier (Services of a -)’.
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of 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).
7        On 26 January 2021, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 and refused registration of the mark applied for in respect of all the services at issue.
8        On 26 March 2021 the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal. In particular, it found that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, had been established in view of, in particular, the average degree of distinctiveness of the earlier mark, the identity of the services at issue and the similarity of the signs.
Forms of order sought
10      The applicant claims that the Court should:
–        declare the action admissible;
–        annul the contested decision;
–        order EUIPO to pay the costs, including the ‘procedural costs generated by [its] decisions’.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in so far as the Board of Appeal found in the contested decision that there was a likelihood of confusion in respect of the services at issue, In that regard, it criticises the Board of Appeal for having found that the marks at issue were visually and phonetically similar and for having erred in failing to take into account the conceptual differences.
13      EUIPO disputes the applicant’s arguments.
14      Under Article 8(1)(b) of Regulation 2017/1001, 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.
15      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).
16      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).
The comparison of the services at issue
17      As regards the services at issue, the Board of Appeal agreed with the Opposition Division’s finding that the services covered by the application for registration were identical to the services of the earlier mark in the same class.
18      That assessment by the Board of Appeal is not contested by the parties.
The relevant public
19      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
20      In the present case, the Board of Appeal endorsed, in paragraphs 15 and 31 of the contested decision, the Opposition Division’s findings that, first, the relevant public consisted both of the general public within the European Union and of the professional public with specific expertise and professional knowledge and, second, that public’s level of attention could vary from average to high depending on the price, specialised nature or general terms and conditions of the services purchased. In addition, in paragraph 15 of the contested decision, the Board of Appeal stated that it was necessary to assess whether there was a likelihood of confusion on the basis of the perception of the public in Spain as part of the relevant territory.
21      The applicant does not dispute the Board of Appeal’s assessment that the relevant public is located within the territory of the European Union. It submits that the services at issue cannot be booked by an individual or a non-professional customer and that the signs at issue are strictly aimed at large undertakings or public authorities. Consequently, according to the applicant, the relevant public consists of professionals in the port business sector with a high level of attention.
22      EUIPO disputes the applicant’s arguments. It submits that certain services may also be aimed at the general public. According to EUIPO, even if the level of attention with regard to some of the services at issue is high, that is not sufficient to rule out a likelihood of confusion, having regard in particular to the identity of the services and the degree of similarity between the signs.
23      In the first place, as regards the Board of Appeal’s decision to base its assessment on the part of the relevant public in Spain, it must 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 No 207/2009 exists in part of the European Union (see 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) It follows that the Board of Appeal could, for reasons of procedural economy, restrict the assessment of the likelihood of confusion to the public in Spain.
24      In the second place, as regards the applicant’s argument that the services at issue are aimed solely at professionals, it must be noted, as the Board of Appeal found, that certain services such as, for example, ‘transport and storage of goods’ are aimed at both the general public and the professional public (judgment of 21 September 2017, The Logistical Approach v EUIPO – Idea Groupe (Idealogistic), T‑620/16, not published, EU:T:2017:635, paragraph 30).
25      In the third place, as regards the level of attention of the relevant public, it should be noted that that may vary according to the degree of specialisation and the price of the relevant services. The various services at issue, first, are characterised by a high purchase price and, second, are not customary for the general public. In those circumstances, it must be held that the relevant public will have a level of attention that is between average and high when purchasing those services, as was pointed out by the Board of Appeal.
The comparison of the signs at issue
26      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43).
27      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. 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 (see, to that effect, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
28      In the present case, the earlier mark consists of the word element ‘newport’. As to the mark applied for, it consists of several word and figurative elements. In particular, the mark applied for contains, in its upper part, the word element ‘nemport’ and, in the lower part, the expression in smaller characters ‘liman işletmeleri’, all written in upper case letters and in a slightly stylised white typeface against a red horizontal rectangular background framed by a white rectangle.
Visual similarity
29      The Board of Appeal found, in paragraph 23 of the contested decision, that the signs at issue were visually similar to an average degree. According to the Board of Appeal, the dominant word element ‘nemport’ in the mark applied for and the earlier mark coincide in the sequence of letters ‘n’, ‘e’, ‘p’, ‘o’, ‘r’, ‘t’, and differ only in their third letter, namely ‘w’ in the earlier mark and ‘m’ in the mark applied for. Consequently, they coincide in their beginning and their last four letters, while the sole different letter falls in the middle, where it can be easily overlooked by the consumer. It found in that regard that the signs differed in the additional expression ‘liman işletmeleri’ in the mark applied for, which, because of its smaller size and position, is of secondary importance, and in its figurative elements, which have very little impact on the overall impression. It concluded that those differences were not sufficient to counteract the perception of the similarity between the signs.
30      The applicant submits that the mark applied for has a characteristic red colour and that the letters are all capital letters in white. That mark is composed of three words which are framed in a white rectangle. The applicant concludes that the earlier mark is sufficiently different from the mark applied for, since the latter contains a characteristic graphic element and consists of several words, with the result that the signs at issue are different.
31      EUIPO disputes the applicant’s arguments. It submits that, when a sign is composed of word and figurative elements, they play, in principle, a secondary role in the perception of the sign and that, in the present case, the graphic elements of the mark applied for are purely decorative. It adds that the earlier mark and the first word element of the mark applied for differ only in their respective third letters and that those letters themselves have visual similarities. Lastly, it submits that the other word elements of the mark applied for are of secondary importance.
32      As a preliminary point, the mere presence of common letters does not justify in itself the conclusion that the signs at issue are visually similar (see, to that effect, judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 52).
33      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).
34      Therefore, in accordance with the case-law referred to in paragraph 33 above, the visual comparison of the signs at issue must be carried out on the basis of all of their various constituent elements, taking into account the dominant elements.
35      In that regard, it should be noted that the Board of Appeal correctly established that the terms ‘nemport’ and ‘newport’ coincided in almost all the letters of which they were composed, with the exception of their third letter. However, there are also a number of visual differences between the signs at issue, such as the presence of the words ‘liman işletmeleri’ in the mark applied for, which, contrary to what the Board of Appeal maintains, are smaller in size than the word element ‘nemport’, but not negligible. Those two words are written in capital letters and are clearly visible to the relevant public, with the result that they are likely to attract attention and mitigate, in the context of an overall impression, the effect produced by the elements of similarity.
36      It must also be noted that, according to the case-law, even where two trade marks at issue are composed of highly similar word elements that fact does not, by itself, support the conclusion that there is a visual similarity between the signs. The presence, in one of the two signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each mark is different (judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 48, see also, to that effect, judgment of 9 July 2003, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraph 74).
37      Furthermore, contrary to EUIPO’s claims, the figurative elements of the mark applied for do not play only a decorative role. It must be held that the figurative and word elements of the marks at issue, and more specifically their respective layouts and colours, contribute to forming the image that the relevant public keeps in mind, and they cannot therefore be overlooked when those marks are perceived.
38      Consequently, in the present case, even if, as EUIPO claims, the consumer’s attention is focused more specifically on the beginning of the word elements of the signs at issue, having regard to the difference between those word elements taken as a whole and to the differences linked to the figurative elements of the mark applied for, the signs at issue are not, contrary to the Board of Appeal’s assessment, similar to an average degree.
39      In the light of the foregoing considerations, it must be concluded that, visually, the signs at issue are similar to a low degree.
Phonetic similarity
40      In paragraph 25 of the contested decision, the Board of Appeal concluded that there was a high degree of phonetic similarity between the signs at issue. In that regard, it noted that the dominant element of the mark applied for and that of the earlier mark coincided in the sound of the letters ‘n’, ‘e’, ‘p’, ‘o’, ‘r’, ‘t’, present identically in both signs, and the number of syllables. They also have the same rhythm and intonation. It also found that the pronunciation differs in the sound of the third letter, ‘w’ in one and ‘m’ in the other. According to the Board of Appeal, it is unlikely that the expression ‘liman işletmeleri’ would be pronounced by the relevant Spanish-speaking public because of its smaller size and its position.
41      The applicant disputes the Board of Appeal’s finding. It submits that the key elements for determining the overall phonetic impression of a trade mark are the syllables and their particular sequence and stress. It adds that all word elements must be taken into account, regardless of their less relevant visual weight in the distinctive impact of the marks. The applicant concludes that the signs at issue are highly dissimilar phonetically because they share only one syllable and differ in all the others.
42      EUIPO disputes the applicant’s arguments. It submits that it is unlikely that the relevant public would refer to the signs at issue from the perspective of the English language. Consequently, the difference in the third letter, which is a consonant, will hardly be audible. It adds that a significant part of the relevant public will not pronounce the other words ‘liman işletmeleri’ when it refers to the mark applied for.
43      First, it should be noted, as the applicant submits, that the signs at issue differ in their first syllable and have only the second syllable of the first word in common. In particular, the earlier mark is pronounced ‘nju port’ and the mark applied for ‘nem port li man is let me le ri’. Thus, the presence of the words ‘liman işletmeleri’ only in the mark applied for lead to a significant difference in the way those signs are pronounced.
44      Second, while it is clear that the consumer normally attaches more importance to the first part of words, that consideration cannot apply in every case (judgment of 16 May 2007, Trek Bicycle v OHIM – Audi (ALLTREK), T‑158/05, not published, EU:T:2007:143, paragraph 70), and that cannot under any circumstances call into question the principle that the assessment of the similarity of the marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 10 December 2008, Giorgio Beverly Hills v OHIM – WHG (GIORGIO BEVERLY HILLS), T‑228/06, not published, EU:T:2008:558, paragraph 28 and the case-law cited).
45      In the present case, the mere coincidence in the pronunciation of ‘port’ at issue, which corresponds to only one syllable in the word elements, does not support the conclusion that there is a high degree of similarity, contrary to the Board of Appeal’s assessment.
46      Consequently, it must be concluded that the signs at issue have a low degree of phonetic similarity.
Conceptual similarity
47      The Board of Appeal noted, in paragraph 26 of the contested decision, that the comparison between the signs at issue was conceptually neutral, since they did not convey any particular meaning for the relevant public.
48      The applicant submits that the marks compared have very different meanings. The earlier mark conveys the meaning of ‘new’, a concept which is absent from the mark applied for. It adds that consumers will understand the meaning of the mark Newport and will divide the sign into two words, namely ‘new’ and ‘port’. Moreover, it is possible that part of the consumers will also give that earlier mark the meaning of a seaside location or the name of a city. The applicant further submits that the conceptual differences which distinguish the marks may be such as to counteract the visual and phonetic similarities and allow the distinctive signs to coexist on the market and in the register.
49      EUIPO disputes the applicant’s arguments. It argues that neither of the signs at issue has any meaning for the Spanish-speaking public. According to EUIPO, it is unlikely that the relevant Spanish-speaking public will decipher the word element ‘new’ in the earlier sign, even though it is a basic English word, because the other element has no meaning and therefore does not facilitate the separation of that sign into two meaningful terms. Furthermore, nothing in the representation of the earlier sign could suggest, for the relevant public, that it is made up of two distinct words. It adds that it is also unlikely that the relevant public will perceive the earlier sign as a reference to a geographical location. It concludes that the marks at issue cannot be compared conceptually and that that aspect does not therefore influence the assessment of the overall similarity between them.
50      In that regard, it is likely, as the applicant submits, that the relevant public will understand the English words ‘new’ and ‘port’ in the earlier mark. As regards ‘new’, it is a basic English word, as the Board of Appeal also acknowledges. The same is true of the word ‘port’, particularly because of its similarity to its Spanish translation (puerto). Contrary to what the Board of Appeal maintains, those two words have a semantic meaning and refer to ‘port services’ as a part of the services at issue, at least for a non-negligible part of the relevant public.
51      As regards the word elements in the mark applied for, the applicant does not dispute the Board of Appeal’s findings that they have no meaning for the relevant public concerned.
52      It follows from the foregoing considerations concerning the conceptual comparison of the signs at issue that they are different.
The distinctiveness of the earlier mark
53      It must be borne in mind that, according to the case-law, for the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser capacity of that mark or 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 mark or 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 (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).
54      Thus, the more distinctive the earlier mark, the greater the likelihood of confusion. Since protection of a trade mark depends, in accordance with Article 8(1)(b) of the Regulation 2017/1001, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with less distinctive character (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).
55      In the present case, in paragraph 30 of the contested decision, the Board of Appeal found that, in view of the fact that the earlier mark had no meaning for the services at issue, its distinctive character had to be considered to be average.
56      The applicant disputes the distinctive character of the earlier mark as a whole and submits that it is only very weak. It states that the word element ‘new’ is not distinctive and that the word element ‘port’ is also not fanciful as regards ‘port services’.
57      EUIPO disputes the applicant’s arguments. It submits that the relevant Spanish-speaking public will not break down the earlier mark and will perceive it as a word devoid of meaning.
58      In the present case, it must be noted that the terms ‘new’ and ‘port’ are part of basic English vocabulary and are known throughout the European Union. Indeed, it must be observed that a substantial part of the relevant public will understand the meaning of the term ‘port’ as ‘a natural or artificial shelter for shipping vessels, provided with the facilities necessary for loading and unloading cargo and passengers’, as defined in the Larousse dictionary. Thus, the equivalent term in Spanish, namely ‘puerto’, is also similar. In that regard, it is likely that the relevant public will associate that term with the services concerned, which include, above all, port services, as the applicant rightly submits.
59      Consequently, it must be concluded that the applicant’s argument concerning the weak distinctive character of the earlier mark is well founded.
The likelihood of confusion
60      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).
61      Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
62      Moreover, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumer choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important. If on the other hand the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:C:2004:293, paragraph 49).
63      In the present case, in paragraphs 30 to 33 of the contested decision, the Board of Appeal concluded that there was a likelihood of confusion given the identity of the services at issue, the average degree of visual similarity and the high degree of phonetic similarity between the signs at issue and the average degree of distinctiveness of the earlier mark.
64      The applicant argues that the signs at issue are visually, phonetically and conceptually different. Thus, according to the applicant, the public consists exclusively of professionals and its level of attention is very high. Therefore, there could not be any likelihood of confusion.
65      EUIPO disputes the applicant’s arguments. It submits that the marks at issue have an average degree of visual similarity and a high degree of phonetic similarity and that the conceptual aspect cannot have any bearing on the assessment of the overall similarity between them. Furthermore, the earlier mark has a normal degree of distinctiveness since it will be perceived as a word element devoid of meaning. It concludes that, given the identity of the services concerned, there is a likelihood of confusion even for the part of the relevant public with a high level of attention.
66      In the present case, it should be noted that, as stated in paragraphs 17 and 18 above, the services at issue are identical. Taking into account, first, the fact that the signs at issue are visually similar to a low degree (see paragraph 39 above) and phonetically similar to a low degree (see paragraph 46 above) and differ conceptually (see paragraph 52 above) and, second, that the earlier mark has a weak distinctive character and that the level of attention of the relevant public will vary from average to high, it must be held, in accordance with the principle of interdependence between the factors to be taken into consideration, as recalled in paragraph 60 above, that no likelihood of confusion on the part of the relevant public can be established.
67      Consequently, the single plea in law raised by the applicant, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, is well founded.
68      In the light of all the foregoing considerations, the contested decision must be annulled.
Costs
69      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.
70      Since EUIPO has been essentially unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
71      In addition, the applicant has claimed that EUIPO should be ordered to pay, in addition to the ‘costs incurred … in connection with this [action]’, the ‘procedural costs generated by [its] decisions’. It must therefore be regarded as requesting the Court to order EUIPO to pay the costs incurred by the applicant in the administrative proceedings before it.
72      In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. The same does not apply, however, to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the applicant’s request that EUIPO, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before it can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 November 2021 (Case R 562/2021-4);
2.      Orders EUIPO to pay the costs.
Kowalik-Bańczyk
Hesse
Dimitrakopoulos
Delivered in open court in Luxembourg on 14 December 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.