JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
11 April 2019 (*)
(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a bottle and an arrow — Earlier EU figurative mark representing a can, a bottle and an arrow — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑477/18,
Užstato sistemos administratorius VŠĮ, established in Vilnius (Lithuania), represented by I. Lukauskienė, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
DPG Deutsche Pfandsystem GmbH, established in Berlin (Germany),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 May 2018 (Case R 2203/2017-2), relating to opposition proceedings between DPG Deutsche Pfandsystem and Užstato sistemos administratorius,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 7 August 2018,
having regard to the response lodged at the Court Registry on 25 September 2018,
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
Background to the dispute
1        On 17 August 2015, the applicant, Užstato sistemos administratorius VšĮ, 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 following figurative sign:
3        The services in respect of which registration was sought are in Classes 35, 40 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 35: ‘Organisation and management of empty bottle collection and recycling; Consultancy relating to collection and recycling of empty bottles and waste; Public relations services; Advertising’;
–        Class 40: ‘Waste management services [recycling]; Recycling of waste and trash; Sorting of waste
and recyclable material [transformation]; Sorting of drinks containers; Treatment of waste materials; Destruction of waste; Treatment and recycling of packaging; Information, advice and consultancy services relating to the recycling of waste and trash’;
–        Class 42: ‘Technological consultation services; Development and implementation of concepts in the field of technical engineering relating to the recycling, treatment, recovery and disposal of all kinds of materials and waste; Certification of participants involved in deposit systems for disposable beverage packaging; Certification of participants involved in quality standards or testing, implementation of security procedures for preventing the copying of disposable packaging, and identifying users of deposit systems for disposable beverage packaging; Management of disposable beverage packaging tracking systems, namely recording of automated calculations and measurements for beverage containers’.
4        The trade mark application was published in European Union Trade Marks Bulletin No 218/2015 of 17 November 2015.
5        On 15 February 2016, DPG Deutsche Pfandsystem GmbH 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 services referred to in paragraph 3 above.
6        The opposition was based on the earlier EU figurative mark reproduced below, registered on 30 May 2007 under No 4 564 993:
7        The goods and services covered by the earlier mark came under, inter alia, Classes 35, 40 and 42 and corresponded, for each of those classes, to the following description:
–        Class 35: ‘Waste management, technical waste consultancy and public relations, advertising’;
–        Class 40: ‘Recycling of waste and rubbish; sorting of drinks containers’;
–        Class 42: ‘Development and implementation of recycling systems for different types of packaging materials, of different sizes and origins, for different uses and from different sites, with regard to technical matters; engineering with regard to the development and
implementation of recycling, treatment, use and waste disposal concepts for materials of all kinds; conducting security procedures to prevent the falsification of disposable packaging; technological services’.
8        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).
9        On 21 August 2017, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion.
10      On 12 October 2017, DPG Deutsche Pfandsystem filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 66 to 71 of Regulation 2017/1001.
11      By decision of 22 May 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division. First of all, the Board of Appeal found that the relevant territory for the purpose of assessing the likelihood of confusion was the whole of the European Union (paragraph 18 of the contested decision) and that the services which had been assumed to be identical in Classes 35, 40 and 42 were directed partly at the public at large but ‘mainly at business customers with specific professional knowledge or expertise’ in the field of waste recycling (paragraph 25 of the contested decision). Next, as regards the comparison of the signs at issue, the Board of Appeal found, first, that the signs were visually similar on account of the similarity between their figurative elements, with both containing a similar shape of bottle and a curved arrow pointing to the left (paragraph 29 of the contested decision). In that regard, the Board of Appeal held that that similarity was not significantly reduced by noting the details differentiating the signs, especially in the light of the ‘principle of imperfect recollection’ (paragraph 30 of the contested decision). The Board of Appeal found, secondly, that it was not possible to compare the signs phonetically since they are both purely figurative (paragraph 31 of the contested decision) and, thirdly, that the signs were conceptually similar to an average degree (paragraph 32 of the contested decision). Lastly, after finding that the signs at issue had at least a minimum degree of distinctiveness (paragraphs 34 and 35 of the contested decision), the Board of Appeal concluded, in the context of the global assessment of the likelihood of confusion, that the Opposition Division should not have found that there was no likelihood of confusion without a comprehensive examination of the goods and services covered (paragraph 42 of the contested decision). In those circumstances, the Board of Appeal upheld the appeal and remitted the case to the Opposition Division, holding, in particular, that proof of use of the earlier mark and the possible identity of the services or similarity between the goods and services had not been examined during the opposition proceedings (paragraph 43 of the contested decision).
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision and uphold the decision of the Opposition Division;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
15      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier 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 mark is protected. Furthermore, under
Article 8(2)(a)(i) of Regulation 2017/1001, ‘earlier trade marks’ means EU trade marks with a date of application for registration which is earlier than the date of application for registration of the EU trade mark in question.
16      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).
17      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes 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).
18      It is in the light of those considerations that it is necessary to examine whether, as the applicant claims, the Board of Appeal erred in finding that there was a likelihood of confusion in the present case.
19      However, first of all, it is necessary to examine EUIPO’s argument that the applicant has misconstrued the subject
matter of the dispute.
The subject matter of the dispute
20      EUIPO maintains that the Board of Appeal did not rule on the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in so far as it did not rule on the identity or similarity of the services at issue or on the question of genuine use of the earlier mark. In those circumstances, the applicant is not justified in pleading infringement of Article 8(1)(b) of Regulation 2017/1001, on the basis that the Board of Appeal erred in finding a likelihood of confusion, since the subject
matter of the dispute is exclusively the similarity of the signs.
21      However, it must be noted that the Opposition Division, in its decision rejecting the opposition, found that, taking into account the low degree of inherent distinctiveness of the earlier mark, the very low degree of visual similarity, the different overall impression and the weak character of the coinciding figurative elements, the relevant consumers would be able to distinguish the signs with certainty and would not believe that the services at issue, assumed to be identical, come from the same undertaking or economically-linked undertakings.
22      Contrary to that finding, the Board of Appeal held, in paragraph 41 of the contested decision, that ‘in light of the overall impression of the signs, if all the goods and services were to be considered identical, or even only similar, (depending on the degree) a significant part of the public might be misled into thinking that the services bearing the contested mark and the goods and services covered by the earlier mark come from the same undertaking or, as the case may be, from undertakings that are economically linked’.
23      Accordingly, the Board of Appeal did indeed
rule on the likelihood of confusion.
The relevant public
24      The Board of Appeal found, first, in paragraph 18 of the contested decision, that, as the opposition was based on an earlier EU trade mark, the relevant territory for the purpose of assessing the likelihood of confusion was the whole of the European Union, and, secondly, in paragraph 25 of the contested decision, that the services which had been assumed to be identical in Classes 35, 40 and 42 were directed partly at the public at large, but ‘mainly at business customers with specific professional knowledge or expertise in the fields of treatment and waste recycling, advertisement, technological consultation and public relations’.
25      There are no grounds to call into question those findings of the Board of Appeal, which, moreover, are not disputed by the parties.
The comparison of the signs
26      The applicant disputes the Board of Appeal’s assessment in the contested decision that the signs at issue are visually and conceptually similar. In that regard, it complains, inter alia, that the Commission gave too much weight to the combination of a bottle and an arrow in the signs at issue.
27      As a preliminary point, it should be recalled that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 5 October 2016, Foodcare v EUIPO — Michalczewski (T.G.R. ENERGY DRINK),
T‑456/15, EU:T:2016:597, paragraph 37 and the case-law cited).
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 components. 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.
28      For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).
29      In addition and as an incidental point, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 35 and 36).
30      It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 52). Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see, to that effect, judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited).
31      It is in the light of those considerations that it is necessary to assess, before examining whether there is any visual, phonetic and conceptual similarity between the signs at issue, whether there are any distinctive and dominant elements in those signs.
The distinctive and dominant elements of the signs at issue
32      In paragraph 33 of the contested decision, the Board of Appeal found that the earlier mark contained elements that are symbols used throughout the whole European Union to denote the recycling process or recycling services and are placed on items to be recycled. It thereby inferred that, given that all the goods covered by the earlier mark are different types of packaging and parts thereof and that the relevant services relate to the recycling of packaging products, those elements had weak distinctive character in respect of all the goods and services in question. Furthermore, the Board of Appeal found that the same considerations applied to the contested mark.
33      It should be noted that those findings of the Board of Appeal are not disputed by the parties.
34      In those circumstances, it must be held that both the arrow and the bottle, which are common to both of the signs at issue, have weak distinctive character in the sector concerned. The same applies to the frame present in the sign applied for and the can present in the earlier sign.
35      However, it must be held that, on account of their position and their size, the arrow and the bottle will make an impression on consumers and are likely to be remembered by them, while the can and the frame are not insignificant.
Visual comparison
36      In paragraphs 29 and 30 of the contested decision, the Board of Appeal found that the signs at issue were visually similar. It pointed out that the signs both contain a highly similar shape of a bottle as well as a depiction of a large curved arrow pointing to the left. The Board of Appeal found that there were details differentiating the signs at issue, given that the earlier mark includes a depiction of a can while the contested sign includes an additional rectangular line framing the elements, but that, nevertheless, the combination, in both signs, of a bottle and arrow was sufficient to establish visual similarity. In that regard, the Board of Appeal stated that noting the specific differentiating details would require a detailed examination on the part of consumers who, in the light of the ‘principle of imperfect recollection’, do not adopt a particularly attentive approach when confronted with such signs, particularly since there are numerous ways that bottles and arrows can be depicted in a sign.
37      The applicant disputes that assessment. It claims, in particular, that even though the signs at issue both contain a depiction of a bottle and an arrow, the Board of Appeal failed to take account of, first, the different overall impression produced by those two elements taken individually and, secondly, the other elements of the signs at issue.
38      EUIPO refers to the reasoning set out in the contested decision (see paragraph 36 above) and maintains that, inasmuch as the signs at issue have similar figurative elements, they are visually similar. In that regard, EUIPO claims that the applicant contradicts itself by asserting that the signs at issue are dissimilar, while conceding that the Board of Appeal was correct to find that both marks contain similar figurative elements.
39      In the present case, as has been established in paragraph 35 of the present judgment, given their size and their position in the signs at issue, the figurative elements depicting an arrow and a bottle, which are common to the signs, will make an impression on consumers and are likely to be remembered by them, even though they have weak distinctive character in the recycling sector and even though the can and the frame are not insignificant.
40      However, it may also be noted that there are a number of visual differences between the signs at issue. First, the earlier mark includes a can positioned in front of a bottle, whereas the contested mark includes a rectangular line framing the depiction of its figurative elements which creates the impression of a label. Secondly, each of the arrows depicted may produce a different visual impression. The arrow depicted in the mark applied for may be perceived as a stylised capital letter ‘D’, evoking the English word ‘deposit’. By contrast, the arrow depicted in the earlier mark cannot be perceived as a letter of the alphabet since it merely underlines the depiction of a bottle and a can.
41      In those circumstances, the Board of Appeal was correct in finding that the signs at issue were visually similar in so far as they both represent a combination of a bottle and an arrow. The similarity between the signs must, however, be considered to be average, due to the differences noted in paragraph 40 above.
Phonetic comparison
42      It should be noted that a figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally (judgment of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 46).
43      Consequently, as the Board of Appeal noted in paragraph 31 of the contested decision, it is not possible to compare the two signs phonetically as they are purely figurative. Moreover, that finding is not disputed by the parties.
Conceptual comparison
44      The Board of Appeal, in paragraph 32 of the contested decision, found that the marks at issue were similar to an average degree overall, to the extent that they both contain a bottle and a curving arrow pointing to the left and that the combination of those two elements may be perceived as referring to recycling.
45      It should be noted that, according to the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 8 November 2017, Oakley v EUIPO — Xuebo Ye (Representation of a discontinuous ellipse), T‑754/16, not published, EU:T:2017:786, paragraph 62 and the case-law cited).
46      In the present case, it must be held, in accordance with the finding of the Board of Appeal, that, conceptually, both signs include a depiction of a bottle and a curved arrow pointing to the left and, therefore, both signs use images with analogous semantic content in connection with recycling.
47      It is appropriate to recall that the arrow depicted in the mark applied for may be perceived as a stylised capital letter ‘D’, evoking the English word ‘deposit’ and therefore the concept of deposit (see paragraph 40 above). However, even though that concept is not directly conveyed by the earlier mark, it is linked to the concept of recycling which is evoked by the signs at issue.
48      Having regard to the foregoing, it must be held that the Board of Appeal was correct in finding that the signs at issue were conceptually similar to an average degree.
49      In conclusion, the signs at issue are visually and conceptually similar to an average degree and cannot be compared phonetically.
Global assessment of the likelihood of confusion
50      The Board of Appeal, in paragraph 38 of the contested decision, found, in essence, that the Opposition Division erred in concluding that there was no likelihood of confusion, even for identical services. In that regard, it pointed out, in paragraph 39 of the contested decision, that the signs at issue were visually similar for a substantial part of the relevant public and that those visual similarities could not be offset by a clear conceptual dissimilarity. The Board of Appeal also noted that the finding that the earlier mark had weak distinctive character did not necessarily preclude a finding that there was a likelihood of confusion. It stated, in that regard, in paragraph 40 of the contested decision, that, even though the distinctive character of the earlier mark had to be taken into account in assessing the likelihood of confusion, it was only one factor among others involved in that assessment. In those circumstances, the Board of Appeal found, in paragraph 41 of the contested decision, that, in the light of the overall impression conveyed by the signs at issue, if all the goods and services were to be considered identical, or even only similar (depending on the degree), a significant part of the public might be misled into thinking that the services bearing the contested mark and the goods and services covered by the earlier mark come from the same undertaking or from undertakings that are economically
linked.
51      The applicant disputes that finding. It states, inter alia, that it is apparent from the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528, paragraphs 22, 24 and 25), that, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion.  It claims that, in the present case, the examination of each of the marks at issue, taken as a whole, highlights the differences between them.
52      It should be noted that, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 24), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, judgments of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and of 5 November 2008, Calzaturificio Frau v OHIM — Camper (Representation of a stylised arch with the surface in solid colour), T‑304/07, not published, EU:T:2008:477, paragraph 50).
53      Such is the case when, as in the present case, the signs at issue are similar both visually and conceptually (see, to that effect, judgments of 18 September 2014, Polo/Lauren v OHIM — FreshSide (Representation of a boy on a bicycle holding a mallet), T‑265/13, not published, EU:T:2014:779, paragraphs 27, 30, 32 and 33, and of 7 February 2018, Kondyterska korporatsiia ‘Roshen’ v EUIPO — Krasnyiy oktyabr (Representation of a crayfish), T‑775/16, not published, EU:T:2018:74, paragraphs 58 and 70).
54      It follows that, in view of the average degree of visual and conceptual similarity between the signs at issue, the Board of Appeal was correct in finding that a likelihood of confusion could not be excluded on the basis that the signs at issue produced a different overall impression.
55      That conclusion is not called into question by the fact that the most informed part of the relevant public, namely ‘business customers with specific professional knowledge or expertise’, may focus on the differentiating elements of the signs at issue referred to in paragraphs 40 and 47 above. As the Board of Appeal found without being challenged on that point by the applicant, the relevant public also includes the ‘general public’. With regard to the assessment of the likelihood of confusion, the public having the lowest level of attention must be taken into consideration (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited).
56      Moreover, the fact that a number of oppositions based on the earlier figurative mark against the registration of signs containing a bottle and an arrow have been dismissed in proceedings before EUIPO has no bearing on the present case, since, inter alia, the signs applied for in the cases invoked by the applicant had a different shape to the sign applied for in this instance.
57      It follows from all the foregoing that the action must be dismissed.
Costs
58      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.
59      Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by the latter.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Užstato sistemos administratorius VšĮ to pay the costs.
Gervasoni
Madise
Da Silva Passos
Delivered in open court in Luxembourg on 11 April 2019.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.