JUDGMENT OF THE GENERAL COURT (Second Chamber)
6 October 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark SKY ENERGY — Earlier EU word mark NRJ — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑184/16,
NRJ Group, established in Boileau (France), represented by M. Antoine-Lalance, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sky International AG, established in Zug (Switzerland), represented by J. Barry, Solicitor,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 5 February 2016 (Case R 3137/2014-5), relating to opposition proceedings between NRJ Group and Sky International,
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 22 April 2016,
having regard to the response of EUIPO lodged at the Court Registry on 23 August 2016,
having regard to the response of the intervener lodged at the Court Registry on 9 August 2016,
having regard to the decision to stay the proceedings,
having regard to the written questions that were put to the parties by the Court and to their responses to those questions, which were lodged at the Court Registry on 21 June 2017,
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
I.      Background to the dispute
1        On 10 February 2011, British Sky Broadcasting Group plc, the predecessor in title to the intervener, Sky International AG, 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), 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)).
2        Registration as a mark was sought for the word sign SKY ENERGY.
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 9, 35, 38, 41 and 45 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: ‘Recorded television and radio programmes; recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; video recordings; music, sounds, videos, images, text and information provided by a telecommunications network, by online delivery and by way of the internet and/or the worldwide web or other communications network; music, video, sound and/or audio recordings (downloadable) provided from MP3 internet websites; e-sell through products, namely downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service’;
–        Class 35: ‘Advertising and promotional services; rental of advertising space; television advertising commercials; dissemination of advertising matter; arranging and conducting of trade shows and exhibitions; arranging and conducting trade show exhibitions in the field of electronic, computer and video games for the computer and video game industry; advertisement and promotion of television services; marketing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; e-sell through products, namely downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service’;
–        Class 38: ‘Television and radio broadcasting; broadcasting and/or transmission of radio and/or television programmes and/or films; satellite, DTT, cable, DSL and broadband broadcasting and/or transmission of audio and/or audio visual programming; transmission of audio, video and/or audio visual programming (by any means); transmission of video films; broadcasting and transmission of television programmes and films to personal computers; broadcasting and communications by means of or aided by computer; transmission of audio, video and/or audio visual programming by internet protocol (IPTV); provision of access to news, current affairs and sports information; telecommunication of information (including web pages); interactive television services being telecommunications and/or communications and/or broadcasting and/or transmission services; interactive services for television viewers including those watching on mobile telephones and PCs being telecommunications and/or communications and/or broadcasting and/or transmission services; television broadcasting services incorporating interactive services for viewing guides and intelligent automated selection for programme recordal; interactive services for television viewers facilitating the recordal of programmes automatically initiated on the basis of customer viewing habits/preferences being telecommunications and/or communications and/or broadcasting and/or transmission services; providing interactive television viewers (including those watching on their mobile telephones or PCs) with access to information, data, graphics, audio and/or audiovisual content from a restricted group of internet websites or portals; broadcasting and transmission of interactive television, interactive games, interactive news, interactive sport, interactive entertainment and interactive competitions; video on demand and near on demand telecommunication and/or communication and/or broadcast and/or transmission services; streaming delivery of video on demand streams to viewers; providing access to movies, videos and television programmes to viewers on demand and near on demand; telecommunication and/or communication and/or broadcast and/or transmission of radio programmes, television programmes, films and motion pictures; telecommunication and/or communication and/or broadcast and/or transmission of audio and/or visual material and material from pre-recorded video tapes: transmission of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; e-sell through services, namely delivery by telecommunication of media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service; online video on demand or near on demand telecommunication and/or communication and/or broadcast and/or transmission services’;
–        Class 41: ‘Provision of audiovisual content relating to entertainment, education, training, sport and culture; education and entertainment services by means of radio, television, telephony, the internet and online databases; production of films for television and cinema; organising of sporting activities and competitions; box office services; production and presentation of programmes transmitted by television, the internet or other telecommunication channels for the conduct of the interactive viewing, selection and purchase of goods; production, presentation and distribution of radio and television programmes, interactive television, interactive games, interactive entertainment and interactive competitions; production presentation and provision of competitions, contests, games, quizzes, studio entertainment and audience participation events; interactive television programme selection services for viewers; provision of interactive entertainment, news, cultural activities and sport for television viewers; interactive entertainment, educational, sporting and cultural services for television viewers; video on demand and near video on demand entertainment; provision of news, current affairs and sports information; news, current affairs and educational information services; information and advisory services relating to television and radio programmes, to education, recreation, entertainment, music and to sport; information and advisory services relating to television and radio programmes, to education, recreation, entertainment, music and to sport, provided online from a computer database or the internet or to mobile telephones; factual information services relating to television and radio programmes, news and sport; instruction services; arranging exhibitions or festivals; distribution of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; production of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; editing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; hire, leasing or rental of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; exhibition of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs for entertainment, educational, sporting or cultural purposes; amusement park services with a theme of films, radio or television productions; preparation of radio programmes, television programmes, films, pre-recorded video tapes, DVDs, audio and/or visual material, pre-recorded video cassettes, pre-recorded video discs or motion pictures for distribution for transmission or broadcast by any means; provision of radio programmes, television programmes, films, audio and/or visual material or motion pictures online (not downloadable); production of shows; organising or hosting awards ceremonies; presentation of films; provision of video and audio content, whereby the consumer is entitled to single or multiple viewings of the media content via any form of playback device, all relating to entertainment, education, sports and culture’;
–        Class 45: ‘Licensing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; exploitation of rights of radio programmes, television programmes, films, pre-recorded video tapes, pre-recorded video cassettes, pre-recorded video discs or motion pictures; services for the exploitation of rights in radio programmes, television programmes, films, pre-recorded video tapes, pre-recorded video cassettes, pre-recorded video discs or motion pictures’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 67/2011 of 6 April 2011.
5        On 6 July 2011, the applicant, NRJ Group, 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.
6        The opposition was based on the earlier EU word mark NRJ, which was filed on 21 May 1996 and registered on 9 March 1999 under the number 136150 and covers, inter alia, services in Classes 35, 38 and 41 corresponding, for each of those classes, to the following description:
–        Class 35: ‘Advertising; organisation of exhibitions for commercial or advertising purposes’;
–        Class 38: ‘Broadcasting of radio and television programmes; electronic data, image and document transmission via computer terminals and all other systems of transmission such as waves, cables, satellites, internet’;
–        Class 41: ‘Providing of training; entertainment, among other radio entertainment; production of shows and films; organisation of competitions relating to education or entertainment’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 17 October 2014, the Opposition Division rejected the opposition, finding that there was no likelihood of confusion between the marks at issue and that that was the case with regard to all the goods and services covered by the mark applied for, which it treated, for reasons of procedural economy, as being identical to the services covered by the earlier mark.
9        On 10 December 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10      By decision of 5 February 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially annulled the Opposition Division’s decision and upheld the opposition in relation to the following goods and services:
–        Class 9: ‘Recorded radio programmes; recorded programmes for broadcasting or other transmission on radio’;
–        Class 38: ‘Radio broadcasting; transmission and communication services; broadcasting and/or transmission of radio programmes; satellite, DTT, cable, DSL and broadband broadcasting and/or transmission of audio programming; transmission of audio programming (by any means); provision of access to news, current affairs and sports information; telecommunication of information (including web pages); telecommunication and/or communication and/or broadcast and/or transmission of radio programmes’;
–        Class 41: ‘Entertainment services by means of radio, presentation and distribution of radio programmes, provision of news, current affairs and sports information; news, current affairs and educational information services; distribution of radio programmes, provision of radio programmes’.
11      The Board of Appeal dismissed the appeal as to the remainder and ordered each party to bear its own costs. It found, in contrast to the Opposition Division, that it was necessary to carry out a full comparison of the goods and services covered by the mark applied for and the services covered by the earlier mark.
12      The goods in Class 9 covered by the mark applied for and the services in Class 35 or Class 38 covered by the earlier mark were all found to be similar.
13      The services in Class 35 covered by the mark applied for were found to be either identical or similar to the ‘advertising’ services covered by the earlier mark or similar to the ‘broadcasting’ services covered by that mark.
14      The Board of Appeal took the view that the services in Class 38 covered by the mark applied for were a form of broadcasting or data transmission. It therefore found that they were included in the services in Class 38 covered by the earlier mark and had to be considered to be identical to those services.
15      The Board of Appeal also found that the services in Class 41 covered by the mark applied for were included in, highly similar to or similar to the ‘entertainment’ or identical or highly similar to the ‘production of films’ covered by the earlier mark.
16      As regards the services in Class 45 covered by the mark applied for, the Board of Appeal concluded that they were dissimilar to all the services covered by the earlier mark.
17      As regards the relevant public and its level of attention, the Board of Appeal took the view that they varied depending on the goods and services in question. It found that some of those goods and services were aimed at the general public whereas others were aimed at business customers. According to the Board of Appeal, consumers were likely to display an average degree of attention when purchasing the goods or services at issue.
18      However, the Board of Appeal found that the advertising and promotional services in Class 35 as well as all the services in Class 45 were aimed at a public consisting of professionals. It took the view that, having regard to the professional nature of those services, their importance for companies and their value, consumers of such services were likely to display a higher degree of attention when contracting them.
19      As regards the comparison of the marks at issue, the Board of Appeal found that there was no visual similarity between them.
20      From a phonetic standpoint, the Board of Appeal noted that the earlier mark would be pronounced as an acronym consisting of the sequence of letters ‘n’, ‘r’ and ‘j’, namely as ‘en-er-gie’/‘e-ner-gie’ in French. It took the view that the mark applied for would be pronounced as ‘sky e-ner-gy’. According to the Board of Appeal, the pronunciation of the terms ‘en-er-gie’ and ‘e-ner-gy’ by the French-speaking public was very similar and therefore the marks at issue had to be considered to be phonetically similar overall.
21      As regards the conceptual comparison, the Board of Appeal found that the acronym NRJ could be regarded as meaningless, but that it could also be associated with the name of the radio station ‘Nouvelle Radio des Jeunes’. Likewise, it could, according to the Board of Appeal, be associated with the term ‘energy’, especially when consumers were exposed to its sound rather than to its visual appearance. The Board of Appeal found that the mark applied for would be associated with the terms ‘sky’ and ‘energy’. It took the view that the marks at issue had to be considered to be conceptually similar in so far as they both referred to the term ‘energy’, in particular for the French-speaking public which had already heard the earlier mark being pronounced.
22      The Board of Appeal found that the earlier mark had an average distinctive character per se in respect of all the services that it covers. In examining the evidence, the Board of Appeal furthermore concluded that the earlier mark enjoyed enhanced distinctiveness in France in relation to ‘radio broadcasting’ and ‘radio entertainment’.
23      In the light of the factors examined and, in particular, of the enhanced distinctive character of the earlier mark for radio broadcasting and radio entertainment, the Board of Appeal concluded that the relevant public might confuse the marks at issue whenever the mark applied for was used for the goods and services that were identical or similar to ‘radio broadcasting’ and ‘radio entertainment’. The Board of Appeal found that the likelihood of confusion was, however, limited to the goods and services that were aimed at the general public and that, because of their nature, the public might be exposed to the pronunciation of the mark rather than its visual representation.
24      By contrast, the Board of Appeal concluded that there could be no likelihood of confusion in relation to the goods and services aimed at professionals because those professionals would exercise a higher degree of attention. Likewise, there could, according to the Board of Appeal, be no likelihood of confusion as regards the goods and services which were bought or accessed in a situation in which the mark would be likely to appear visually, instead of, or as well as, being pronounced. The Board of Appeal found that that would include, in particular, all the instances in which radio and music were delivered online as the relevant public would see a trade mark or a logo on the computer or telephone screen.
II.    Forms of order sought
25      The applicant claims that the Court should:
–        confirm the contested decision in so far as it allows the opposition in respect of the goods and services listed in paragraph 10 above;
–        annul the contested decision in all its other provisions;
–        allow the opposition and reject the application for registration of the mark applied for in respect of all the goods and services;
–        order EUIPO to pay the costs.
26      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
27      The intervener contends that the Court should:
–        reinstate the Opposition Division’s decision and find that there is no likelihood of confusion on account of the marks at issue being dissimilar;
–        in the alternative, confirm the contested decision and allow the application for registration of the mark applied for in respect of all its goods and services other than those which were rejected;
–        award the intervener its costs in the present proceedings in addition to the costs in the earlier proceedings before the Opposition Division and the Board of Appeal;
–        take account of the burdensome length and format of the applicant’s submissions when making its assessment of costs.
III. Law
A.      The admissibility of the applicant’s and the intervener’s first heads of claim
28      By its first head of claim, the applicant requests that the Court confirm the Board of Appeal’s decision upholding the opposition in respect of the goods and services listed in paragraph 10 above.
29      However, it must be borne in mind that, according to Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), an appeal against a decision of the Board of Appeal can result, if successful, only in the annulment or alteration of the contested decision (judgment of 29 February 2012, Certmedica International and Lehning entreprise v OHIM — Lehning entreprise and Certmedica International (L112), T‑77/10 and T‑78/10, not published, EU:T:2012:95, paragraph 32).
30      On the basis of that provision, an application must be declared inadmissible in so far as it claims that the Court should confirm that there is a likelihood of confusion as regards goods and services in respect of which the opposition has been upheld in the contested decision.
31      By its first head of claim, the intervener requests that the Court reinstate the Opposition Division’s decision and find that there is no likelihood of confusion on the ground that the marks at issue are dissimilar. Inasmuch as it seeks the annulment of the contested decision on a matter which is not raised in the application, the intervener’s first head of claim must be analysed as a cross-claim.
32      In that regard, it must be borne in mind that it is apparent from Article 182(1) and (2) of the Rules of Procedure of the General Court that a cross-claim must be submitted within the same time limit as that prescribed for the submission of a response and that it must be submitted by a document separate from the response. However, the intervener put forward that head of claim in its response and not by a separate document. The intervener’s cross-claim does not therefore satisfy the requirements laid down in Article 182(1) and (2) of the Rules of Procedure. Consequently, the intervener’s cross-claim must be rejected as manifestly inadmissible (see, by analogy, order of 30 January 2014, Industrias Alen v The Clorox Company, C‑422/12 P, EU:C:2014:57).
B.      The single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
33      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
34      EUIPO, supported by the intervener, disputes the applicant’s arguments.
35      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.
36      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).
37      As regards the relevant public, it must be held, as the Board of Appeal found in paragraphs 35 to 37 of the contested decision, that that public is the public in the European Union which consists both of consumers and professionals and has an average to high level of attention. Those findings have not, moreover, been disputed by the parties.
1.      The comparison of the goods and services
38      According to settled case-law, in assessing the similarity of the goods or services at issue, 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. 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).
39      The applicant submits, in essence, that the services in Class 45 covered by the mark applied for and the services of ‘broadcasting of radio and television programmes’ and ‘production of films and shows’ covered by the earlier mark are similar. Furthermore, the applicant maintains that the Board of Appeal did not take some of the goods and services in Classes 9, 38 and 45 covered by the mark applied for into consideration when comparing the goods and services at issue.
40      EUIPO, supported by the intervener, admits that the Board of Appeal did not mention some of the goods and services in Classes 9 and 45. As to the remainder, it disputes the applicant’s arguments.
41      It must be borne in mind that the Board of Appeal found that the services in Class 45 covered by the mark applied for were dissimilar to all the services covered by the earlier mark. The services in question in Class 45 are, according to the contested decision, the following: ‘Licensing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; services for the exploitation of rights in radio programmes, television programmes, films, pre-recorded video tapes, pre-recorded video cassettes, pre-recorded video discs or motion pictures’.
42      The Board of Appeal found that those services were essentially legal or advisory services consisting of drafting licence contracts and securing rights to exploit intellectual property rights existing in radio and television programmes. It found that those services are not therefore similar to broadcasting as such. In its view they are provided by lawyers and agents and not by producers in the media sector and they are aimed at professionals such as broadcasters and producers.
43      It must be held that the applicant’s claim that those services are normally provided by producers in the media sector has not been substantiated by the evidence in the case file. Consequently, the contested decision must be upheld in so far as it finds, in paragraph 34 thereof, that those services are dissimilar to the broadcasting covered by the earlier mark since they are provided mainly by lawyers and agents and not by producers and undertakings in the media sector. It must also be added that the advisory services in Class 45 are, in any event, services that are completely different in nature from broadcasting services.
44      It must, in addition, be borne in mind that the Board of Appeal found that there was no likelihood of confusion as regards the services aimed at professionals and that the services in Class 45 are aimed at professionals (see paragraphs 18 and 24 above). That finding has not been disputed by the applicant. Consequently, since the applicant has not explained how that finding would be affected by a similarity between the services in Class 45 and the services of ‘broadcasting of radio and television programmes’ and ‘production of films and shows’ covered by the earlier mark, its arguments cannot succeed.
45      In addition to the foregoing, it must be held that the Board of Appeal made clerical errors as regards the goods and services on which the opposition was based.
46      First, as regards the following services in Class 45, namely the ‘exploitation of rights of radio programmes, television programmes, films, pre-recorded video tapes, pre-recorded video cassettes, pre-recorded video discs or motion pictures’, it must be stated that the Board of Appeal does not expressly refer to them in the contested decision.
47      However, there is no failure to adjudicate as regards those services. As EUIPO submits, the wording used to describe them is, except for the mere addition of the words ‘services for the’, in essence, identical to the wording of ‘services for the exploitation of rights in radio programmes, television programmes, films, pre-recorded video tapes, pre-recorded video cassettes, pre-recorded video discs or motion pictures’ in the contested decision, with the result that it must be held that the Board of Appeal implicitly intended to apply the same reasoning with regard to the services referred to in paragraph 46 above. It follows that the services listed in paragraph 46 above must also be held to be dissimilar to the broadcasting services covered by the earlier mark.
48      Secondly, it must also be held that the reasoning followed by the Board of Appeal in paragraphs 22 and 23 of the contested decision with regard to ‘music, video, sound and/or audio recordings (downloadable) provided from MP3 internet websites; e-sell through products, namely downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service’ in Class 9 must be found to apply to the following goods: ‘music, sounds, videos, images, text and information provided by a telecommunications network, by online delivery and by way of the internet and/or the worldwide web or other communications network’ in the same class, as the parties expressly submit in their written pleadings. It follows that those goods must be held to be similar to the broadcasting services covered by the earlier mark.
49      Thirdly, as regards the services in Class 38, contrary to what the applicant claims, the ‘telecommunication and/or communication and/or broadcast and/or transmission of radio programmes, television programmes, films and motion pictures’ services are referred to in the contested decision. It is apparent from paragraph 27 of that decision that they were included in the list and that they were compared and considered to be identical to the broadcasting services covered by the earlier mark.
50      As regards the ‘transmission and communication services’, which are also in Class 38, those services were not, as has been stated by the applicant and EUIPO, opposed. The Board of Appeal therefore erred in referring to them, in paragraph 54 of the contested decision, as forming part of the services in respect of which there was a likelihood of confusion. Given that there is no plea that has, on that ground, been set out in support of the head of claim requesting the annulment of the contested decision, there are, in the present case, no inferences to be drawn from that error.
51      As regards the other goods and services at issue, it must be held, as the Board of Appeal found, that they are in part identical and in part similar to the services covered by the earlier mark, a finding which has not, moreover, been disputed by the parties.
2.      The comparison of the signs
52      The mark applied for is a mark which consists of two word elements, namely ‘sky’ and ‘energy’.
53      The earlier mark consists of a single word element, namely ‘nrj’, which cannot be broken down into a number of elements.
54      From a visual standpoint, the Board of Appeal’s finding that there is no visual similarity between the marks at issue must be upheld. Whereas the mark applied for comprises two word elements and consists, as a whole, of nine letters, the earlier mark, by contrast, consists of only three letters. The marks at issue are therefore, having regard to their length and composition, visually different.
55      From a phonetic standpoint, the Board of Appeal’s finding that the pronunciation of the earlier mark coincides with the pronunciation of the second element in the mark applied for when they are pronounced by the relevant French-speaking public must be upheld. The presence of the word ‘sky’ in the mark applied for cannot affect that similarity given that the mark applied for will be pronounced as a whole, since the word ‘energy’ is just as important as, if not more important than, the word ‘sky’. Consequently, the marks at issue are phonetically similar overall as the pronunciations of ‘nrj’ and ‘energy’ by the French-speaking public are very similar.
56      From a conceptual standpoint, it must be held, as the Board of Appeal found, that the acronym ‘NRJ’ can be regarded as meaningless. It can also be associated with the name of the radio station ‘Nouvelle Radio des Jeunes’. It may, in addition, be associated with ‘energy’, in particular when consumers are exposed to its pronunciation ‘en-er-gie’ rather than to its visual appearance. The mark applied for will be associated with the English words ‘sky’ and ‘energy’. The marks at issue are conceptually similar inasmuch as they both refer to the term ‘energy’, in particular for the French-speaking public which has already heard the earlier mark being pronounced.
57      In view of those considerations, it must be held that the marks at issue are conceptually similar in spite of the presence of the word ‘sky’ at the beginning of the mark applied for.
3.      The distinctive character of the earlier mark
58      As is apparent from recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
59      The existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001). It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 34 and the case-law cited).
60      In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, VITACOAT, T‑277/04, EU:T:2006:202, paragraph 35 and the case-law cited).
61      The applicant maintains that the Board of Appeal made errors as regards the geographical scope of the distinctive character and made errors when it restricted that distinctive character to certain services.
62      EUIPO, supported by the intervener, disputes the applicant’s arguments.
(a)    The geographical scope of the distinctive character
63      The applicant maintains that the Board of Appeal’s finding that the earlier mark has enhanced distinctiveness in France is too restrictive and takes the view that it should also have found that that mark has enhanced distinctiveness in other territories of the European Union.
64      As regards the geographical scope of the enhanced distinctiveness of the earlier mark, it must be stated that, contrary to what the applicant claims, the Board of Appeal did not rule out the possibility that the earlier mark might have enhanced distinctiveness outside of France. The Board of Appeal merely based its analysis on the territory of the European Union in which the likelihood of confusion was the greatest given that most of the evidence related to that territory and there were particularly strong phonetic similarities between the marks at issue for the relevant French public (see paragraph 55 above).
65      As EUIPO submits, even if the Board of Appeal had ruled on whether the earlier mark has enhanced distinctiveness outside of France, that would not have been relevant with regard to assessing the likelihood of confusion in the light of the applicant’s arguments. 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, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T–82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). In the present case, the applicant has not specified the services in respect of which and the territories of the European Union in which the earlier mark would have a higher degree of distinctiveness than in French territory. The applicant has also not specified how the conditions outside of France would be more favourable for the purpose of concluding that there is a likelihood of confusion than those which the Board of Appeal examined in the contested decision.
66      It follows that the applicant’s arguments with regard to the geographical scope of the distinctiveness of the earlier mark must be rejected.
(b)    Whether the earlier mark has enhanced distinctiveness as regards certain services
67      The applicant submits that, in addition to ‘radio broadcasting’ and ‘radio entertainment’, the Board of Appeal should have found that the earlier mark had enhanced distinctiveness in relation to a certain number of services which it describes, in essence, as follows: transmission of audio and visual content via the new media and internet in France; new media, web radios, websites and social media; television programmes broadcasting in France; advertising; organising and producing concerts, award ceremonies and competitions, producing and commercialising music compilations, and participating in the financing of films and television programmes; telecommunications in France.
68      It must be stated that, with regard to most of those services, the applicant has not stated to what class, covered by the earlier mark, they belong. It is all the same necessary to examine each group of services separately in order to establish whether they may be linked to the services covered by the earlier mark and whether the Board of Appeal erred in finding that the earlier mark did not enjoy enhanced distinctiveness in relation to those services.
(1)    Transmission of audio and visual content via the new media and internet in France
69      Those services correspond to the services of ‘electronic data, image and document transmission via computer terminals and all other systems of transmission such as waves, cables, satellites, internet’ in respect of which the earlier mark is registered. However, an examination of the evidence does not make it possible to conclude that the earlier mark is recognised by the relevant public in connection with data, image or document transmission, as the applicant claims. The items of evidence in the form of a description of the applicant’s activities and press releases relating to the development of the applicant’s internet services do not provide any information as regards the earlier mark’s market share with regard to those services or the proportion of the relevant public which associates the earlier mark with those services.
(2)    New media (web radios, websites and social media)
70      As regards, first of all, web radio, the Board of Appeal found in favour of the applicant. In paragraph 46 of the contested decision, it acknowledged that the earlier mark enjoyed enhanced distinctiveness in relation to radio broadcasting and radio entertainment, which led to its finding that there was a likelihood of confusion between the marks at issue in respect of the services ‘satellite, DTT, cable, DSL and broadband broadcasting and/or transmission of audio programming; transmission of audio programming (by any means)’.
71      As regards, secondly, the other services, namely new media, websites and social media, the applicant does not explain what effect an acknowledgement that the earlier mark has enhanced distinctiveness would have on the contested decision and which goods and services at issue would be concerned.
72      In any event, even if the services invoked by the applicant which might correspond to some of the services covered by the earlier mark, such as the services of ‘electronic data, image and document transmission via computer terminals and all other systems of transmission such as waves, cables, satellites, internet’, were taken into consideration, an examination of the evidence does not make it possible to hold that the earlier mark enjoys enhanced distinctiveness in relation to those services.
(3)    Services relating to the broadcasting of television programmes in France
73      The evidence is not sufficient to hold that the earlier mark has enhanced distinctiveness in relation to those services. The press releases submitted by the applicant relate to a period after 10 February 2011, the date on which the application for registration of the mark applied for was filed, and they do not make it possible to conclude that the earlier mark has enhanced distinctiveness in relation to the broadcasting of television programmes. Those documents refer to a certain number of viewers, but it is not possible to ascertain whether the earlier mark is recognised in connection with those services by the relevant public. It must be added that it is apparent from the other items of evidence that the channel NRJ 12 had a market share of only 1.9% in 2010 and 2011. It is also apparent from the evidence that the existence of other channels such as NRJ Paris and NRJ HITS has been established, but there is no information regarding them that makes it possible to establish whether those channels conferred, at the time when the application for registration of the mark applied for was filed, enhanced distinctiveness on the earlier mark in relation to services relating to the broadcasting of television programmes.
(4)    Advertising services
74      The figures in the evidence have not been placed in the context of the advertising industry in general but solely in the context of radio and television advertising.
75      In any event, the applicant does not explain what the effect of a finding that the earlier mark has enhanced distinctiveness in relation to ‘advertising’ services would be. The services in Class 35 (including advertising) are aimed at professionals. Consequently, even if the earlier mark had enhanced distinctiveness in relation to ‘advertising’ in France, the contested decision would not be different because there is no likelihood of confusion on the part of professionals, owing to their higher level of attention, and the applicant has not disputed that aspect of the contested decision.
(5)    Organising and producing concerts, award ceremonies and competitions, producing and commercialising music compilations, and participating in the financing of films and television programmes
76      Those services correspond, in essence, to the services of ‘production of shows and films; organisation of competitions relating to education or entertainment’ covered by the earlier mark. As regards those services, it must be pointed out that the evidence provided by the applicant does not make it possible to determine the market share held by the earlier mark, how intensive, geographically widespread and long-standing its use has been, the amount invested in promoting the mark or the proportion of the relevant section of the public which identifies the services as originating from the applicant.
(6)    Telecommunications services
77      It is apparent from the evidence that the applicant provides telecommunications services under the earlier mark. However, the evidence provided by the applicant in that regard does not make it possible to determine the market share held by the earlier mark, how intensive, geographically widespread and long-standing its use has been, the amount invested in promoting the mark or the proportion of the relevant section of the public which identifies the services as originating from the applicant.
(7)    Radio broadcasting, radio entertainment and the inherent distinctiveness of the earlier mark
78      As regards those services, all of the evidence provided by the applicant during the administrative proceedings before the adjudicating bodies of EUIPO makes it possible to conclude, as the Board of Appeal correctly found in paragraph 46 of the contested decision, that the earlier mark enjoys enhanced distinctiveness in relation to ‘radio broadcasting’ and ‘radio entertainment’. That is apparent from, inter alia, numerous reports and articles in Annex 4 to the statement of opposition of 12 September 2013 and from the extract from the NRJ Group reference document delivered to the French Financial Markets Authority and attached as an annex to the statement of grounds of appeal of 17 February 2015.
79      In view of those considerations, it must be held that the Board of Appeal was right in finding that the earlier mark had enhanced distinctiveness only in relation to the services of ‘radio broadcasting’ and ‘radio entertainment’.
80      It must likewise be held, as the Board of Appeal found in paragraph 41 of the contested decision, that the earlier mark has an average degree of inherent distinctiveness in relation to the other services.
4.      The likelihood of confusion
81      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).
82      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).
83      After referring briefly to all the relevant factors to be taken into account, the Board of Appeal found that, in the light of the phonetic similarity between the marks at issue and in particular of the enhanced distinctiveness of the earlier mark in relation to the services of ‘radio broadcasting’ and ‘radio entertainment’ covered by that mark, there was a likelihood of confusion between those services and the goods and services covered by the mark applied for which were identical or similar to those services. However, it found that the likelihood of confusion was limited to the goods and services that were aimed at the general public and in respect of which, because of their nature, the public might be exposed to the mark being pronounced rather than shown visually. It likewise found that there was no likelihood of confusion in respect of the services aimed at professionals.
84      The applicant alleges, in essence, that the Board of Appeal made a certain number of errors in examining the likelihood of confusion.
85      First, it submits that the Board of Appeal did not carry out a global assessment of the likelihood of confusion given that it limited that assessment to the contested goods and services which are identical or similar to the services in relation to which it considered that the earlier mark enjoyed enhanced distinctiveness. It submits that, since the earlier mark enjoys an average degree of distinctiveness, the Board of Appeal should have recognised that there was a likelihood of confusion in relation to all the goods and services concerned.
86      Secondly, the applicant alleges, in essence, that the Board of Appeal attributed too much importance to the visual aspect of the marks at issue. It submits, in that regard, that even if the relevant public were visually exposed to those marks on various types of screens, the phonetic aspect would be more important than the visual aspect, a point which should have been taken into consideration by the Board of Appeal.
87      Thirdly, the applicant submits that the Board of Appeal erred in excluding from the assessment of the likelihood of confusion certain goods and services which were found to be identical or similar to the services in relation to which the earlier mark enjoyed enhanced distinctiveness.
88      EUIPO, supported by the intervener, disputes the applicant’s arguments.
89      It must be borne in mind that the marks at issue are visually different and that they are phonetically and conceptually similar overall for the relevant French-speaking public. The mark applied for covers goods and services, some of which are identical or similar to the services covered by the earlier mark and some of which are different from those services. The earlier mark has enhanced distinctiveness in relation to some of the services (see paragraph 79 above) whereas it only has an average degree of distinctiveness in relation to the remainder of the services. The relevant public consists of the general public which displays an average level of attention with regard to some of the goods and services and of professionals who display a high level of attention with regard to some of the services.
90      As regards the applicant’s first argument, it is true that the contested decision must be understood in the sense that the Board of Appeal found that there was no likelihood of confusion in respect of the goods and services at issue which were identical or similar to the services in respect of which the earlier mark had an average degree of distinctiveness. However, that finding is the result of a global examination of all the relevant factors in the present case and not only of the degree of distinctiveness of the earlier mark. It is apparent from, inter alia, paragraphs 51 and 52 of the contested decision that the Board of Appeal took the comparison of the signs and that of the goods and services at issue and also the relevant public and its level of attention into consideration in finding that a likelihood of confusion existed only as regards the goods and services covered by the mark applied for that were identical or similar to the services in relation to which the earlier mark had enhanced distinctiveness.
91      It follows that the applicant errs in alleging that the Board of Appeal did not carry out a global assessment of the likelihood of confusion.
92      As regards the second argument, it must be held, as the Board of Appeal found, that, as regards the contested goods and services which are identical or similar to the services in respect of which the earlier mark has enhanced distinctiveness, there is a likelihood of confusion on the part of the general public in cases in which it is exposed to the marks at issue being pronounced. The Board of Appeal was likewise right in finding that, with regard to the goods and services to which the relevant public is visually exposed, there can be no likelihood of confusion since the marks at issue are visually different.
93      In that regard, it must be pointed out that, even though oral communication regarding the trade mark and the goods and services covered by that mark is not excluded, the choice of the product or service is generally made visually. Consequently, the visual aspect therefore plays a greater role in the global assessment of the likelihood of confusion with regard to certain services and goods (see, to that effect, 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:T:2004:293, paragraph 50). The applicant’s second argument, namely that the Board of Appeal attributed too much importance to the visual dissimilarity between the marks at issue, must therefore be rejected.
94      It must likewise be held that, with regard to the services aimed at professionals, there is no likelihood of confusion since the level of attention of those professionals is high.
95      Consequently, the Board of Appeal was right in finding that there is a likelihood of confusion with regard to the goods and services listed in paragraph 10 above and in paragraph 54 of the contested decision and in finding that there is no likelihood of confusion with regard to the goods and services listed in paragraph 56 of the contested decision.
96      In view of the foregoing considerations, the applicant’s third argument, namely that there should be a likelihood of confusion with regard to certain goods and services since they are similar to ‘radio broadcasting’ and ‘radio entertainment’, must also be rejected.
97      The applicant also claims that the intervener’s application for registration of the mark applied for and its application for registration of the EU trade mark SKY NOSTALGIE are not a coincidence and show the intervener’s bad faith. In that regard, it must be borne in mind that bad faith, as wrongful conduct, is a particularly significant factor in an application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001). It is not, however, a factor that must be taken into account in opposition proceedings brought under Article 8 of Regulation No 207/2009 (see judgment of 3 May 2012, Conceria Kara v OHIM — Dima (KARRA), T‑270/10, not published, EU:T:2012:212, paragraph 84 and the case-law cited).
98      It follows from the foregoing that the action must be dismissed as unfounded.
IV.    Costs
99      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
100    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 (Second Chamber),
hereby:
1.      Dismisses the action;
2.      Orders NRJ Group to pay the costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 6 October 2017.
E. Coulon
H. Kanninen
Registrar
President
* Language of the case: English.