JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
20 September 2019 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark DOKKIO — Earlier EU figurative mark representing two diagonal lines followed by a vertical line and a circle — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑67/19,
Sixsigma Networks Mexico, SA de CV, established in Mexico (Mexico), represented by C. Casas Feu, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska, J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dokkio, Inc., established in San Mateo, California (United States), represented by A. Kylhammar and L. Morin, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 21 November 2018 (Case R 1187/2018-2), relating to opposition proceedings between Sixsigma Networks Mexico and Dokkio,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias (Rapporteur), President, A. Dittrich and R. Frendo, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 February 2019,
having regard to the response of EUIPO lodged at the Court Registry on 18 April 2019,
having regard to the response of the intervener lodged at the Court Registry on 8 April 2019,
having regard to the fact that no request for a hearing was submitted by the parties within 3 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 31 May 2016, the intervener, Dokkio, Inc., obtained international registration No 1 308 971 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO).
2        The mark covered by the international registration designating the European Union is the word sign DOKKIO.
3        The goods and services in respect of which registration was sought are in Classes 9 and 42 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 9: ‘Computer operating programs that may be downloaded from a computer information network; computer software for electronic communications that may be downloaded from a computer information network; computer software to allow for collaboration between multiple parties; computer software to organise, search and provide access to uploaded documents, images, videos, and other content stored as computer files and metadata’;
–        Class 42: ‘Online software as a service (SAAS) featuring software to organise, search and provide access to web page data, uploaded documents, images, videos, and other files and metadata stored on the internet; electronic storage of web page data, uploaded documents, images, videos, and other files and metadata available on an internet server’.
4        On 15 September 2016, international registration No 1 308 971 designating the European Union was notified to the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
5        International registration No 1 308 971 designating the European Union was published in Community Trade Marks Bulletin No 2016/177 of 19 September 2016.
6        On 9 November 2016, the applicant, Sixsigma Networks Mexico, SA de CV, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
7        The opposition was based on the earlier EU figurative mark reproduced below, which was filed on 20 February 2014 and registered on 16 April 2015 under the number 12 620 142:
8        The goods and services covered by the earlier mark are in Classes 9, 38, 41 and 42 and correspond, inter alia, in respect of Class 9 to the following description: ‘Operating computer software for main frame computers; computer operating systems; computer software; computer software applications, downloadable; expressly not including any goods in the field of equipment for copying, reproduction, printing or scanning, software for managing printing equipment or software for production management’.
9        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
10      On 30 April 2018, the Opposition Division rejected the applicant’s opposition.
11      On 25 June 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
12      By decision of 21 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal. In particular, after rejecting the applicant’s argument that the comparison of the marks had to be carried out on the basis of the premiss that the earlier mark is perceived as consisting of the sequence of letters ‘kio’, the Board of Appeal found that the signs at issue were visually and phonetically dissimilar overall and that no conceptual comparison was possible, with the result that one of the conditions necessary in order to establish a likelihood of confusion was not satisfied and the opposition had to be rejected.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
15      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
16      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it submits that the average consumer will perceive the earlier mark as consisting of the sequence of letters ‘kio’ and that the signs at issue are therefore extremely similar visually and phonetically. It maintains that, in the light of the overall similarity of the signs and the identity of the goods and services, the Board of Appeal erred in finding that there was no likelihood of confusion.
17      EUIPO and the intervener dispute those arguments.
18      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, 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.
19      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).
20      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).
21      It is in the light of those principles that the present action must be examined.
The relevant public
22      It must be pointed out that the applicant does not dispute the Board of Appeal’s finding that the relevant public consists of the general public and of professionals. The applicant also does not dispute the Board of Appeal’s finding that the European Union constitutes the relevant territory for the purposes of applying Article 8(1)(b) of Regulation 2017/1001. Lastly, although the applicant submits that the general public has an average level of attention, it does not expressly dispute the Board of Appeal’s finding that the level of attention will vary from average to high because part of the relevant public consists of professionals.
23      Since those findings on the part of the Board of Appeal are, moreover, correct, they must be accepted.
The comparison of the goods and services
24      The applicant states that, although the issue of the comparison of the goods and services was not the subject of discussion before EUIPO, it wishes to submit that the services at issue are identical.
25      In that regard, it must be pointed out that, as the applicant itself observes, the contested decision does not contain any findings regarding the comparison between the goods and services. The Board of Appeal found that, in view of the lack of similarity between the marks at issue, there was no need to carry out a comparison of the goods and services. Consequently, it is not for the Court to rule on whether the goods and services are similar or identical, but only to ascertain whether, in view of the comparison of the marks, the Board of Appeal could find that a comparison of the goods and services was not necessary, a point which is covered by the examination in paragraphs 57 to 61 below.
The comparison of the signs
26      The applicant submits that the relevant public will perceive the first element of the earlier mark as a stylised representation of the letter ‘k’ and will, as a result, perceive that mark as a whole as consisting of the word element ‘kio’. Furthermore, it maintains that, from a visual and phonetic standpoint, the earlier mark is fully included in the mark applied for and that the signs at issue differ only in the element ‘do’, which does not affect the very similar overall impression created by those signs. It also submits that the signs at issue are devoid of meaning in the relevant territory and that the conceptual comparison is therefore neutral.
27      In that regard, it must be borne in mind that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In 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).
28      In the present case, the Board of Appeal found that the applicant had not proved that the mark applied for had to be compared to the sign KIO. The Board of Appeal found that, since the earlier mark had not acquired enhanced distinctiveness through use and the applicant had not proved that that mark belonged to a family of which the element ‘kio is the root, the earlier mark had to be examined in the form in which it had been registered.
29      As regards the comparison of the signs, the Board of Appeal took the view that, from a visual standpoint, the earlier mark would be perceived by part of the relevant public as devoid of meaning and by another part of that public as containing an arrow pointing to the left, followed by the stylised letters ‘io’ or the number 10, and that the mark applied for would be regarded as consisting of the sequence of letters ‘dokkio’. In the light of the differences between those signs, to which the relevant public would, according to the Board of Appeal, pay more attention on account of the brevity of those signs and the generally greater attention which is paid to the beginning of signs, the Board of Appeal found that, visually, the signs were dissimilar overall and not similar to a very low degree, as the Opposition Division had found. It stated that that finding was valid even for the part of the public which perceived the earlier mark as containing the sequence of letters ‘io’. From a phonetic standpoint, the Board of Appeal reached a similar conclusion to that which it reached regarding the visual standpoint. Lastly, it found that, since the signs at issue did not have any meaning in the relevant territory, the conceptual aspect of the signs had no influence on the comparison of those signs.
30      It must be pointed out at the outset that the applicant’s arguments are based entirely on the premiss that the first element in the earlier mark will be perceived as a stylised representation of the letter ‘k’. The merits of that premiss must therefore be examined first, before ruling on the similarity of the signs at issue.
31      In that regard, it must be pointed out that the letter ‘k’ consists of a vertical line and of two diagonal lines which go in opposite directions and meet in the middle of that vertical line. As EUIPO correctly submits, although it is true that the first element in the earlier mark consists, like the letter ‘k’, of two diagonal lines which point towards the left, it does not, unlike that letter, include a vertical line with which those two diagonal lines are juxtaposed. That vertical line is, however, an essential component of the normal graphic representation of the letter ‘k’, without which the relevant public will have difficulty in recognising that letter.
32      Furthermore, it must be stated that the earlier mark, as registered, does not contain any other element which would encourage the relevant public to perceive an association between the first element of that mark and the letter ‘k’.
33      First, as was stated by the Board of Appeal, the other two elements of which that mark consists will be perceived either as representing the number 10 or as representing the sequence of letters ‘io’. However, even if, on account of the presence of those other two elements, the relevant public were to attribute a meaning to the first element of that mark, it would be likely, as the Board of Appeal pointed out, to see in that element an arrow pointing to the left. It must be added that the relevant public may also perceive that element as representing the mathematical sign ‘lower than’.
34      Secondly, as the Board of Appeal pointed out, according to the evidence which the applicant provided in the course of the opposition proceedings, the earlier mark was not registered in the form that it has when it is used by the applicant, namely in combination with an expression including the sequence of letters ‘kio’, which is capable of suggesting that the first element of that mark must be understood as a stylised representation of the letter ‘k’.
35      Consequently, even though the first element of the earlier mark and the letter ‘k’ have features in common, there is nothing to indicate, since an essential component of that letter is missing, that the relevant public will necessarily make the connection between that element and that letter. The Board of Appeal was therefore right in finding, for the purposes of the comparison of the signs, that the relevant public will not perceive the earlier mark as containing the sequence of letters ‘kio’.
36      The applicant’s arguments are not capable of casting doubt on that finding.
37      In the first place, the applicant’s argument that, in essence, consumers are now familiar, on account of changes in means of communication, with graphic devices and stylised shapes that convey an idea is irrelevant. First, that argument is based on the erroneous premiss that the first element of the earlier mark constitutes the admittedly stylised, but nevertheless identifiable, representation of the letter ‘k’. However, it is apparent from the findings set out in paragraphs 31 to 35 above that, since an essential component of the letter ‘k’ is missing in the present case, the relevant public will not associate the first element of the earlier mark with that letter. Secondly, in the present case, as is apparent from paragraph 33 above, it is not, as such, the stylisation of the first element of the earlier mark which precludes that element from being associated by the relevant public with the letter ‘k’. As has been stated in that paragraph, the relevant public is likely, in spite of that stylisation, to attribute specific meanings to that element.
38      In the second place, since it is based on the same erroneous premiss as the preceding argument, the argument that consumers will tend to perceive the first element of the earlier mark as a letter because that is consistent with their perception that the other two elements of that mark form the sequence of letters ‘io’ must also be rejected.
39      It must be added that the fact that part of the relevant public perceives the last two elements of the earlier mark as a sequence of letters does not necessarily preclude it from conferring on the first element of the mark in question a meaning other than a letter of the alphabet, since it is common for figurative marks to combine letters or numbers with symbols or pictograms.
40      In the third place, it must be pointed out that the applicant’s claim that the first element of the earlier mark is often used in trade to represent the letter ‘k’ is not substantiated by the information that it provided in the course of the proceedings before EUIPO.
41      In the fourth place, as regards EUIPO’s examination guidelines, to which the applicant refers, it is sufficient to state that they contain recommendations relating to whether a word element that is part of a figurative sign is ‘lost’ in the stylisation to which it is subject and to the cases in which it is possible to take that element into account or disregard it. However, as is apparent from paragraphs 31 and 37 above, in the present case, it is not the stylisation of the first element of the earlier mark that prevents it from being associated spontaneously by the relevant public with the letter ‘k’, but the fact that that element does not contain an essential component of that letter. The guidelines on which the applicant relies are therefore irrelevant.
42      In the fifth place, as regards the case-law and the decisions of EUIPO referred to by the applicant, it must be pointed out that, according to settled case-law, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal and which are applicable in the factual circumstances of the particular case (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77 and the case-law cited).
43      In the present case, it is sufficient to point out that the judgments of the General Court and decisions of EUIPO referred to by the applicant do not refer to figurative signs that are identical or very similar to the earlier mark. The findings of the Court and of the adjudicating bodies of EUIPO on which the applicant relies as regards those signs, and which result from an examination of the factual circumstances of the particular cases in question, cannot therefore be applied.
44      It follows from the foregoing that, since the premiss on which the applicant’s arguments relating to the similarity of the signs were based has been rejected as unfounded, the comparison of the signs must be made on the basis of the finding that the relevant public will perceive the earlier mark as consisting of an element which may be associated with the representation of an arrow pointing to the left or of the mathematical sign ‘lower than’ and of two elements which may evoke either the sequence of letters ‘io’ or the number 10.
45      In that regard, as far as, first of all, the visual comparison is concerned, it must be pointed out that the Board of Appeal was right in finding that the only common feature between the signs at issue lies in the last two elements of those signs, since the mark applied for consists of the word sign ‘dokkio’.
46      The Board of Appeal was also right in finding that those similarities cannot offset the overall visual differences between the signs at issue.
47      The overall shape of the first element of the earlier mark is very different from the sequence of letters ‘dokk’, which constitutes the beginning of the mark applied for. Furthermore, as EUIPO has pointed out, the relevant public will perceive the sequence of letters of which the mark applied for, ‘dokkio’, consists as a whole and will not try to break it down, in particular on account of the fact that it will not associate any of the parts of that sign with a specific meaning. Lastly, the mark applied for also creates a visual impression that is far removed from that created by the earlier mark because it will be perceived as a six-letter word, whereas the earlier mark will be perceived as consisting of three symbols, only two of which will be perceived by part of the relevant public as letters of the alphabet.
48      Moreover, the relevant public will be more aware of those differences because, as the Board of Appeal pointed out, the signs under comparison are short, with the result that that public will perceive the visual differences between those signs more clearly (see, by analogy, judgment of 23 September 2009, Arcandor v OHIM — dm drogerie markt (S-HE), T‑391/06, not published, EU:T:2009:348, paragraph 41). Furthermore, as the Board of Appeal also rightly pointed out, that impression will be reinforced as a result of the greater attention which the consumer generally pays to the beginning of a sign than to the end (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51 and the case-law cited), since the signs in the present case differ precisely in their beginnings.
49      Consequently, even for the part of the relevant public which perceives the sequence of letters ‘io’ in the earlier mark, that feature in common with the mark applied for will go unnoticed or will be perceived as negligible. The Board of Appeal was therefore right in finding that the signs were visually dissimilar overall and not, as the Opposition Division had found, similar to a very low degree.
50      The applicant’s argument that the earlier mark consists of one word that is completely included in the mark applied for and differs from that mark only in the sequence of letters ‘do’ is based on the incorrect premiss that the first element of the earlier mark is pronounced as ‘k’ and must therefore be rejected. Furthermore, contrary to what the applicant seems to submit, the sequence of letters ‘kio’ does not constitute the dominant element in the mark applied for, since that mark does not contain a dominant element and is perceived by the relevant public, as has been stated in paragraph 47 above, as a whole which cannot be broken down into elements that have a meaning.
51      As regards, next, the phonetic comparison, the Board of Appeal was right in finding that, even for the part of the relevant public that will perceive the earlier mark as containing the sequence of letters ‘io’, the minor coincidence between the signs at issue which lies in the sounds ‘io’ will be largely counterbalanced by the pronunciation of the first part of the mark applied for, ‘dokk’.
52      First of all, it must be pointed out that the sequence of letters ‘dokk’ will be pronounced, in most of the languages of the European Union, as a sequence of three sounds: a voiced dental consonant, ‘d’, a vowel, ‘o’, and an occlusive voiceless consonant ‘k’. That sequence creates an impression which is very different, on account, in particular, of the two consonants which frame it, from the sequence of two vowels which will be pronounced by the part of the relevant public that perceives the earlier mark as containing the sequence of letters ‘io’. Furthermore, as from a visual standpoint, since none of the parts of the mark applied for has any specific meaning, the relevant public will, from a phonetic standpoint, perceive it as a whole and will not break it down into two parts consisting, first, of the sequence of sounds ‘dok’ and, secondly, of the sequence of sounds ‘io’. The feature which the earlier mark and the last two vowels in the mark applied for have in common will therefore go unnoticed, particularly because, as from a visual standpoint, the public will focus more on the sounds that make up the first part of the sign in question. In addition, as the Board of Appeal pointed out and contrary to what the applicant submits, the two signs are different from the point of view of length and rhythm because of the different number of syllables, the presence of consonants in the mark applied for and the stress in that mark, which falls more on the first part of that mark.
53      Since the applicant’s arguments regarding the phonetic similarity are based on the premiss that the earlier mark will be pronounced as ‘k-i-o’, they cannot cast doubt on those findings.
54      Consequently, the Board of Appeal was right in finding that the marks at issue were phonetically different overall and not, as the Opposition Division had found, phonetically similar to a very low degree.
55      Lastly, from a conceptual standpoint, the Board of Appeal was right in finding that, as neither of the signs at issue has any meaning in a part of the territory of the European Union, the conceptual aspect of the signs has no influence on the comparison of those signs. The applicant’s claim that, in some European countries in which a language that has Latin roots is spoken, the word ‘do’ can mean ‘two’, with the result that the mark applied for will be understood as meaning ‘double KIO’, is irrelevant. As has been stated in paragraphs 47 and 52 above, the mark applied for will be perceived as a whole which the relevant public will not try to break down. In any event, even if that were the case, the signs at issue would still not be conceptually similar.
The global assessment of the likelihood of confusion
56      The applicant submits that, in the light of the very high degree of similarity between the marks at issue and the identity of the goods and services concerned, the Board of Appeal erred in finding that there was no likelihood of confusion in the present case. It submits, in particular, that the assessment of that likelihood of confusion cannot be based on the premiss that the relevant public will not be sharp and observant enough to identify the first element of the earlier mark as a representation of the letter ‘k’.
57      In that regard, as has been stated in paragraph 20 above, the application of Article 8(1)(b) of Regulation 2017/1001 presupposes that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar, those being cumulative conditions.
58      Consequently, as the Court of Justice has held on numerous occasions, where there is no similarity between the earlier mark and the mark applied for, the enhanced distinctiveness of the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue. It follows that such a lack of similarity between the marks at issue renders Article 8(1)(b) of Regulation 2017/1001 inapplicable (see judgment of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraphs 42 and 44 and the case-law cited).
59      In the present case, the Board of Appeal found that the signs at issue were, in view of the visual and phonetic differences between them and the impossibility of making a conceptual comparison, dissimilar overall. It concluded that, since one of the conditions necessary for it to be found that there was a likelihood of confusion was not satisfied and the applicant’s opposition had to be rejected, there was no need to carry out any further analysis and, in particular, to carry out a comparison of the goods and services concerned and a global assessment of the likelihood of confusion.
60      That finding is correct. As has been stated in paragraphs 45 to 54 above, the signs at issue are visually and phonetically dissimilar overall and the features that they have in common will go unnoticed by the relevant public or will be perceived as insignificant. Furthermore, as has been stated in paragraph 55 above, the conceptual comparison does not play any part or, in any event, can only culminate in a finding that there is no similarity. Consequently, in accordance with the principles referred to in paragraphs 57 and 58 above, the Board of Appeal was right in taking the view that the finding that the signs at issue were dissimilar overall was sufficient to rule out a likelihood of confusion, without it being necessary to examine whether the goods and services concerned were similar or identical and carry out a global assessment of that likelihood of confusion which took into account all the relevant factors. The applicant’s arguments relating to the comparison of the goods and services and to that global assessment must therefore be rejected as ineffective.
61      It follows from all of the foregoing that the single plea in law must be rejected and that the action must therefore be dismissed in its entirety.
Costs
62      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.
63      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Sixsigma Networks Mexico, SA de CV, to pay the costs.
Gratsias
Dittrich
Frendo
Delivered in open court in Luxembourg on 20 September 2019.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.