ORDER OF THE GENERAL COURT (Ninth Chamber)
16 June 2021 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark GT9 – Earlier EU figurative mark GT – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Relevant public – Level of attention – Action manifestly well founded)
In Case T‑423/20,
Sony Interactive Entertainment Europe Ltd, established in London (United Kingdom), represented by S. Malynicz QC and M. Maier, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Huawei Technologies Co. Ltd, established in Shenzhen (China),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 April 2020 (Case R 1610/2019‑4), relating to opposition proceedings between Sony Interactive Entertainment Europe and Huawei Technologies,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira (Rapporteur), President, D. Gratsias and T. Perišin, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 7 July 2020,
having regard to the response lodged at the Court Registry on 12 November 2020,
having regard to the measure of organisation of procedure of 2 March 2021 and the responses of the applicant and EUIPO lodged at the Court Registry on 12 March 2021,
makes the following
Order
Background to the dispute
1        On 26 October 2015, the other party to the proceedings, Huawei Technologies Co. Ltd, 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        The mark for which registration was sought is the word sign GT9.
3        The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9, 14 and 35 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: ‘Communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; protective cases for tablet computers; wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology standard for exchanging data over short distances using short-wavelength UHF radio waves in the ISM band and remote control for use with mobile phones which can display the caller’s number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; mobile phones; smartphones; protective cases for mobile phones; batteries for phones; earphones; headphones; audio equipment; stereos; wearable audio equipment; speakers; loudspeakers; set-top boxes; routers; wireless routers; communication software; application software; jewellery that communicate data; parts and fittings for all the aforesaid goods; exempt for goods being for or in relation to computer games software, computer games hardware, video games software, video games hardware’;
–        Class 14: ‘Watchbands, jewellery; horological and chronometric instruments; watches; bracelets; necklaces; watches that communicate data; parts and fittings for all the aforesaid goods; except for goods being for or in relation to computer games software, computer games hardware, video games software, video games hardware’;
–        Class 35: ‘Retail services in relation to communications equipment, data communications apparatus, telecommunications apparatus, computers, portable computers, tablet computers, protective cases for tablet computers, wearable computers, smart bands, smart watches, smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; retail services in relation to wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; retail services in relation to smartphones in the shape of a watch or a bracelet; retail services in relation to smart bracelets with the functions of wireless technology standard for exchanging data over short distances using short-wavelength UHF radio waves in the ISM band and remote control for use with mobile phones which can display the caller’s number and short message; retail services in relation to smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; retail services in relation to smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; retail services in relation to mobile phones, smartphones, protective cases for mobile phones, batteries for phones; retail services in relation to earphones, headphones, audio equipment, stereos, wearable audio equipment, speakers, loudspeakers, set-top boxes, routers, wireless routers, communication software, application software, watchbands, jewellery, horological and chronometric instruments, watches, bracelets, necklaces, jewellery and watches that communicate data; advertising, marketing and promotional services; except for services being for or in relation to computer games software, computer games hardware, video games software, video games hardware’.
4        On 17 February 2016, the applicant, Sony Interactive Entertainment Europe Ltd (formerly Sony Computer Entertainment UK Ltd), filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
5        The opposition was based on the following earlier marks:
–        the EU figurative mark (‘the earlier mark’), reproduced below, registered on 19 December 2002 under No 820738 for goods in Classes 9, 16 and 28 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer and video games; computer and video game programs; audio and video recordings; phonograph records, cassettes, tapes, compact discs, video discs, magnetic data media’;
–        Class 16: ‘Printed matter (excluding bicycle-related decals and bicycle-related posters); books; publications; stationery’;
–        Class 28: ‘Toys; games and playthings (excluding bicycles and bicycle accessories); electronic handheld games’:
–        the non-registered United Kingdom word mark GT, used in the course of trade for the following goods and services: ‘computer game software; video game software; computer game controllers; computer game peripherals; racing seats; driving simulators; video game controllers; video game consoles; video game peripherals; retail services in relation to computer game software, video game software, computer game controllers, computer game peripherals, racing seats, driving simulators, video game controllers, video game consoles, video game peripherals; entertainment; organisation of competitions and events; organisation of racing competitions; online games services; online game tournaments; driving academy service’.
6        The applicant claims that the earlier mark has a reputation in Italy, Germany, the United Kingdom, Spain, France and the European Union.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), Article 8(4) and (5) of Regulation No 207/2009.
8        On 30 May 2019, the Opposition Division rejected the opposition in its entirety.
9        On 24 July 2019, the applicant filed a notice of appeal with EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.
10      By decision of 24 April 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
11      In particular, as regards, in the first place, the ground of opposition based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that, first, the relevant territory was, with regard to the earlier mark, the European Union as a whole. The Board of Appeal also stated that it was not necessary, in the present case, to determine the level of attention paid by the relevant public and whether it consisted of average consumers or professionals, since that did not affect the outcome of the decision.
12      Secondly, the Board of Appeal took the view that, since it was devoid of any meaning in the mind of the relevant public with regard to the goods and services at issue, the earlier mark had a normal degree of distinctiveness.
13      Thirdly, the Board of Appeal held, in essence, that the signs at issue showed no visual, phonetic or conceptual similarities.
14      The Board of Appeal therefore concluded that the opposition based on Article 8(1)(b) of Regulation No 207/2009 must be rejected, since the condition regarding the similarity of the signs at issue was not met in the present case. Consequently, the Board of Appeal found that it was not necessary to assess the documents produced by the applicant in support of the earlier mark’s enhanced distinctiveness. Where there is no similarity between the signs, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services in question are identical are insufficient grounds for finding that there is a likelihood of confusion.
15      As regards, in the second place, the ground of opposition based on Article 8(5) of Regulation No 207/2009, the Board of Appeal concluded that, since the similarity of the signs was a necessary condition for the application of Article 8(5) and that condition was not met in the present case, the opposition had to be rejected, without there being any need to examine the evidence submitted by the applicant in support of the earlier mark’s reputation.
16      As regards, in the third place, the ground of opposition based on Article 8(4) of Regulation No 207/2009, the Board of Appeal rejected the opposition, since the applicant had not proved to the requisite legal standard that it had used the sign GT in the course of trade of more than mere local significance.
Forms of order sought
17      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
18      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
19      Under Article 132 of the Rules of Procedure of the General Court, where the Court of Justice or the General Court has already ruled on one or more questions of law identical to those raised by the pleas in law of the action, and the General Court finds that the facts have been established, it may, after the written part of the procedure has been closed, on a proposal from the Judge-Rapporteur and after hearing the parties, decide by reasoned order, in which reference is made to the relevant case-law, to declare the action manifestly well founded.
20      In its observations lodged following the measure of organisation of procedure of 2 March 2021, EUIPO reiterated the position set out in its response that the approach followed by the Board of Appeal in the contested decision was consistent with the case-law as regards the identification of the relevant public and the assessment of the similarity of the signs at issue.
21      In the present case, the Court takes the view that the conditions for applying Article 132 of the Rules of Procedure have been met and decides to give a decision without taking further steps in the proceedings.
Determination of the applicable regulation ratione temporis
22      Given the date of filing of the application for registration in question, namely 26 October 2015, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
23      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their arguments to Article 8(1)(b) and Article 8(4) and (5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009, which are identical in content.
Substance
24      In support of its action, the applicant puts forward five pleas in law. The first plea alleges infringement of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, in that the Board of Appeal did not identify the relevant public and did not take into consideration how a significant portion of that public perceive the earlier mark. The second plea alleges infringement of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, in that the Board of Appeal did not conclude that a significant part of the relevant public might perceive and recognise the earlier mark as the letters ‘GT’ in a stylised form and in that it failed to take into consideration the evidence relating to how the relevant public are likely to perceive the earlier mark. The third plea alleges infringement of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, in that the Board of Appeal failed to take into consideration the other reasons for the challenges made based on those provisions. The fourth plea alleges infringement of Article 8(4) of Regulation No 207/2009 in that the Board of Appeal, first, failed to take into account national rules and court decisions of the Member States concerning the laws on passing-off, secondly, failed to take into account evidence which showed that the GT sign satisfied all the requirements of Article 8(4) of that regulation, thirdly, wrongly required that the sign GT be used alone, fourthly, wrongly required that the sign GT be used on goods and fifthly, failed to take account of the fact that its own finding that the earlier mark would be perceived by the applicant’s customers as the letters ‘GT’ was sufficient to conclude that it had acquired the ‘goodwill’ in the sign GT for the purpose of passing-off. The fifth plea alleges infringement of Article 8(4) of Regulation No 207/2009, in that the Board of Appeal did not take into consideration the other factors under the law of passing-off.
The first plea, alleging infringement of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009
25      The applicant submits, in essence, that the Board of Appeal infringed the obligation imposed on any body ruling on an appeal brought under Article 8(1)(b) or Article 8(5) of Regulation No 207/2009 to identify the relevant public at issue and how that public is informed.
26      EUIPO disputes the applicant’s arguments and submits, in essence, that the Board of Appeal clearly determined, in the contested decision, the relevant public, which it identified as users likely to use both the goods and services covered by the earlier mark and the goods and services covered by the mark applied for. EUIPO states, moreover, that the Board of Appeal’s choice not to specify for each of the goods and services whether the relevant public comprised professionals or the general public does not cause detriment to the applicant, since that factor is not likely to alter how the similarity of the signs at issue is assessed.
27      As a preliminary point, in the first place, 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, an 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.
28      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB
v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
29      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and 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).
30      In the second place, Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier trade mark.
31      The existence of injury consisting of detriment to the distinctive character or the reputation of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the reputation of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).
32      It is in the light of those considerations that it must be examined whether, as the applicant claims, the Board of Appeal infringed, in the present case, the provisions of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 by not identifying the relevant public and its level of attention.
33      It must be noted at the outset that EUIPO does not dispute that the Board of Appeal, in the contested decision, neither specified whether the relevant public comprised, with regard to the goods and services at issue, the general public or professionals, nor defined its level of attention. EUIPO submits, however, that detriment was not caused to the applicant because those specifications were not made, since it was not a factor likely to alter the conclusion relating to the similarity of the signs at issue.
34      It must be borne in mind that the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, must not be assessed on the basis of an abstract comparison of the signs at issue and the goods or services which they designate. The assessment of that likelihood of confusion must be based on the perception which the relevant public will have of those signs, goods and services (see, to that effect, judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 29).
35      For the purposes of that global assessment of the likelihood of confusion, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account must be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind. Regard must also be had to the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
36       A restricted and specialist public is likely to have specific knowledge of the goods or services covered by the marks at issue and/or to display, in that regard, a higher level of attentiveness than the public at large. Those factors may play a decisive role in determining whether or not there is a likelihood of confusion between those marks (see judgment of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 30 and the case-law cited).
37      The identification of the public concerned by the opposing marks is therefore of crucial importance for the assessment of the likelihood of confusion (judgment of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 31).
38      In paragraph 14 of the contested decision, the Board of Appeal merely stated that the relevant public was composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for and not only of specific consumers of the goods and services bearing the earlier mark.
39      Contrary to what EUIPO contends, such statements cannot be interpreted as identifying the relevant public. By those statements, the Board of Appeal merely recalled the principles governing the definition of the relevant public (see judgment of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraphs 38 and 39 and the case-law cited), without, however, applying them to the present case.
40      That conclusion is expressly supported by the sentence of the contested decision which follows thereafter and states that ‘in the present case, there is no need to establish the level of attention of the public nor whether it contains average consumers or professionals for each of the goods and services concerned’.
41      It is clear from that last sentence that the Board of Appeal deliberately chose not to identify the relevant public, on the ground that that information did not influence the decision.
42      Consequently, since the Board of Appeal held, like the Opposition Division, that it was not necessary, in order to assess any likelihood of confusion, to establish, for each of the goods and services concerned, whether the relevant public included average consumers or professionals and its level of attention, it erred in law.
43      That error vitiated the entirety of its assessment, since the Board of Appeal assessed the likelihood of confusion on the basis of a comparison of the signs at issue in the abstract. As has been pointed out in paragraph 34 above, the assessment of that likelihood of confusion must be based on the perception of the relevant public.
44      Furthermore, the General Court cannot itself be required to define the relevant public and its level of attention and then to assess the likelihood of confusion in the light of how it is defined. That is a question which has not been considered on the substance by EUIPO and which it is not for the General Court to examine, for the first time, in the context of its review of the legality of the contested decision (see judgment of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 51 and the case-law cited).
45      It follows from all the foregoing considerations that the action is manifestly well founded in so far as the applicant complains that the Board of Appeal did not identify in the contested decision the relevant public and its level of attention for the purposes of assessing the likelihood of confusion.
46      Consequently, the first plea in law must be upheld and, accordingly, the contested decision must be annulled, without it being necessary to examine the other complaints put forward by the applicant.
Costs
47      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.
48      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
1.      The decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 April 2020 (Case R 1610/2019‑4) is annulled.
2.      EUIPO is ordered to bear its own costs and to pay those incurred by Sony Interactive Entertainment Europe Ltd.
Luxembourg, 16 June 2021.
E. Coulon
M.J. Costeira
Registrar
President
*      Language of the case: English.