JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
10 June 2020 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark e — Earlier international figurative mark e — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑646/19,
eSky Group IP sp. z o.o., established in Warsaw (Poland), represented by P. Kurcman, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Gerhard Gröpel, residing in Passau (Germany), represented by N. Maenz, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 July 2019 (Case R 223/2019-4), relating to opposition proceedings between Mr Gröpel and eSky Group IP,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and R. Norkus, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 26 September 2019,
having regard to the response of EUIPO lodged at the Court Registry on 23 January 2020,
having regard to the response of the intervener lodged at the Court Registry on 17 January 2020,
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 16 May 2017, the applicant, eSky Group IP sp. z o.o., 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, inter alia, Class 39 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 that class, to the following description: ‘Travel arrangement; tour organising; booking of seats for travel and sale of tickets for land, sea and air transport; booking of seats for travel tours; transport brokerage; sightseeing [tourism]’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2017/154 of 16 August 2017.
5        On 14 September 2017, the intervener, Mr Gerhard Gröpel, 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 international registration designating the European Union No 1 242 560, which is reproduced below and was registered on 23 December 2014 in respect of, inter alia, the following services in Class 39: ‘Arranging of travel tours; travel reservation; booking of seats for travel’:
7        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).
8        By decision of 29 November 2018, the Opposition Division upheld the opposition in respect of all of the contested services.
9        On 29 January 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 24 July 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal on the basis of the following findings. First, the Board of Appeal adopted the Opposition Division’s reasoning, which had not been disputed before it, and concluded that the services at issue were identical (paragraph 14 of the contested decision). Secondly, it found that the level of attention of the relevant general public and professional public with regard to the services at issue varied from average to higher than average (paragraph 25 of the contested decision). Thirdly, the Board of Appeal found that the signs at issue were visually similar to an average degree and phonetically identical (paragraphs 19 and 20 of the contested decision). Fourthly, it pointed out that, conceptually, neither the word element nor the figurative elements of the marks conveyed any concept and it therefore found that the conceptual comparison of the signs remained neutral (paragraph 21 of the contested decision). Fifthly, taking into account the average degree of visual similarity and the phonetic identity between the signs, the identity of the contested services and the normal inherent distinctiveness of the earlier mark, the Board of Appeal found that there was a likelihood of confusion (paragraph 27 of the contested decision).
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision with respect to the services for which the opposition was upheld;
–        annul the Opposition Division’s decision of 29 November 2018 with respect to the services for which the opposition was upheld;
–        remit the case to EUIPO so it can amend the Opposition Division’s decision of 29 November 2018 on the substance of the case and register the mark applied for in respect of all the services covered, without prejudice to those which are uncontested;
–        order EUIPO to pay the costs incurred before the Opposition Division, the Board of Appeal and the General Court.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that there is no likelihood of confusion because there is no similarity between the signs.
14      EUIPO and the intervener dispute that argument.
15      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) and (iv) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State and trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
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 both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
18      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation2017/1001 exists in part of the European Union (see judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
19      In the present case, the applicant does not dispute the Board of Appeal’s assessment that the relevant public with regard to which the likelihood of confusion must be assessed consists of the general public within the European Union and the professional public in the travel business within the European Union. The applicant likewise does not dispute the Board of Appeal’s assessment that the level of attention of the relevant general public and professional public with regard to the services at issue varies from average to higher than average.
20      In addition, the applicant does not in a detailed manner dispute the finding of the Board of Appeal, which itself adopted the reasoning that had previously been set out by the Opposition Division, that the services at issue are identical.
21      In view of the material in the case file, there is no need to call those findings, which are not, moreover, disputed by the applicant, into question.
22      As regards the comparison of the signs, it must be borne in mind that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 27 June 2013, Repsol YPF v OHIM — Ajuntament de Roses (R), T‑89/12, not published, EU:T:2013:335, paragraph 28 and the case-law cited).
23      Furthermore, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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).
24      In the present case, from a visual standpoint, the sign covered by the earlier right consists of a tilted, bold, black lower-case letter ‘e’ surrounded by two uninterrupted black circles. The mark applied for consists of a tilted, bold, lower-case letter ‘e’ in dark blue surrounded by one fragmentary circle in the colours turquoise and blue with a small amount of pink.
25      The Board of Appeal found, first, that ‘the conflicting signs ha[d] a very similar structure, namely that of a tilted bold lower-case letter “e” surrounded by a circular line pattern’ and, secondly, that ‘the marks differ[ed] in that the contested mark ha[d] one surrounding circle, the earlier mark two; the colours of the contested mark; and the fragments of the circle in the contested mark while the circles in the earlier mark [we]re intact’. It concluded that the signs at issue were visually similar to an average degree.
26      The applicant disputes that finding on the ground that the presence of a stylised letter ‘e’ in common is not sufficient. It submits that, as the signs at issue have to be compared as a whole and not by focusing solely on the similarity of the word elements of those signs, the Board of Appeal should have emphasised the differences in representation, stylisation, graphics and colour between the signs at issue, which coincide only in irrelevant aspects.
27      Consequently, it argues that, as regards the specific features of the sign applied for, the Board of Appeal should have pointed out, first, that the word element ‘e’ is written in a characteristic font, which causes it to look more lively and attractive than the earlier sign, and found, secondly, that the colourful representation of the sign applied for makes the graphic elements of that sign more visible, recognisable and eye-catching than those of the earlier sign.
28      Likewise, as regards the specific features of the earlier sign, the applicant submits that the Board of Appeal should have pointed out that the composition of that sign, which consists of two black circles surrounding the letter ‘e’, gives the visual impression of a spiral ending with a flourish directed towards the centre of the circle. It argues that the letter ‘e’ thus vanishes in the entire image and is unnoticeable at first sight.
29      Furthermore, the applicant maintains that the Board of Appeal did not observe the principle that a sign represented in black and white can be considered to be identical to the same sign represented in colour only if the differences in colour are so insignificant that they go unnoticed by the average consumer (judgments of 19 January 2012, Shang v OHIM (justing), T‑103/11, EU:T:2012:19, paragraph 24; of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, and of 9 April 2014, Pico Food v OHIM — Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11, EU:T:2014:199). It submits that that principle is also expressed in a common practice, defined by the European Trade Mark and Design Network, with regard to the scope of the identity of earlier black and white or greyscale marks with coloured versions of the same sign. It argues that, in other words, for a finding of identity, the differences in colour of the signs at issue must be negligible and hardly noticeable.
30      EUIPO and the intervener dispute those arguments.
31      It should be noted at the outset that, according to the relevant case-law which has been referred to in paragraph 23 above, the assessment as to whether the signs are similar must be based on the overall impression given by those signs. In the present case, in the assessment of the various elements to be taken into account in order to compare the signs at issue from a visual standpoint, that overall impression is determined by the similarities connected with the presence of the same letter in common and by the use of a structure of the same kind, on the ground that they are two elements which, perceived as a whole, consumers are likely to recognise and remember, rather than being determined by the graphic stylisation of the signs, which appears to be minor because it requires a detailed examination on the part of consumers, who do not adopt a particularly attentive approach when confronted with single-letter signs (see, by analogy, judgments of 13 July 2004, AVEX v OHIM — Ahlers (a), T‑115/02, EU:T:2004:234, paragraph 20; of 8 May 2012, Mizuno v OHIM — Golfino (G), T‑101/11, not published, EU:T:2012:223, paragraphs 44 and 45; and of 7 October 2014, Tifosi Optics v OHIM — Tom Tailor (T), T‑531/12, not published, EU:T:2014:855, paragraph 62). The Court cannot therefore uphold the claim which the applicant makes at the outset (see paragraph 26 above) that, in the overall assessment, the similarities connected with the similarity between the word elements are less important than the differences in representation, stylisation, graphics and colour between the signs at issue.
32      In this respect, as regards the overall assessment carried out in the contested decision, it is important, first of all, to point out that the Board of Appeal did not find that the signs at issue were identical, but only found that they were visually similar to an average degree. The applicant cannot therefore rely on the principle invoked in paragraph 29 above, which has been laid down for the purposes of assessing the concept of identity and not that of similarity, which was that which was used in the present case in order to assess the likelihood of confusion.
33      Likewise, it must be pointed out that the finding that there is an average degree of visual similarity is the result of the examination of the similarities and differences that exist between the signs at issue. In the present case, as the Board of Appeal found, the signs at issue look alike on account of their structure, which is characterised by the presence of a tilted, bold, lower-case letter ‘e’ surrounded by a circular line pattern. It is equally correct to point out, as the Board of Appeal did, that those signs differ on account of the presence, in the mark applied for, of a fragmented circle and of a number of colours, namely, according to the description of that mark, turquoise, white, dark blue, blue and light pink, whereas the earlier mark includes two intact circles and is in black and white.
34      Such an assessment of the visual comparison of the signs is not called into question by the various arguments which the applicant puts forward (see paragraphs 27 and 28 above). The font used to represent the letter ‘e’ in the mark applied for and also the appearance of that letter are not sufficient to dispel the similarity owing to the presence of that letter in common in the signs at issue which was pointed out by the Board of Appeal in the contested decision. Likewise, the letter ‘e’ in the earlier mark is visible in the centre of that mark, since the outline of that letter is separated from the circles surrounding it, even though those circles are close to it. In relation to the sign as a whole, the letter ‘e’ in the earlier mark is not therefore perceived as being part of a spiral ending with a flourish directed towards the centre of the circle, as the applicant claims, but rather as the representation of the letter ‘e’ within two circles. The Board of Appeal was therefore justified in finding that the signs at issue look alike on account, in particular, of the presence in common of the tilted, bold, lower-case letter ‘e’.
35      It follows from the foregoing that the applicant’s criticisms relating to the assessment of the visual comparison of the signs at issue must be rejected.
36      Moreover, even though the parties all acknowledge that the signs at issue contain the letter ‘e’, it may also be pointed out that even if, as the applicant claims, the letter ‘e’ reproduced in the earlier mark were not perceived visually as the representation of that letter within two circles, but rather as the last part of a spiral ending with a flourish directed towards the centre of the circle, it would still have to be held that there is an average degree of visual similarity. That average degree of visual similarity would result from the overall similarities that exist between the signs at issue considered, which both reproduce a similar symbol surrounded, on the one hand, by a fragmented circle, and, on the other hand, by two circles, as opposed to the differences, which are not sufficient to rule out the finding that there is such a degree of similarity.
37      From a phonetic standpoint, the Board of Appeal was right in finding, a finding which has not, moreover, been disputed by the applicant, that the signs at issue were identical since they will both be pronounced as the letter ‘e’.
38      From a conceptual standpoint, the Board of Appeal was also right in finding, a finding which the applicant has not in a detailed manner disputed, that neither the single letter ‘e’ nor the line patterns in which the signs at issue coincided conveyed a concept. It was therefore right in concluding that the conceptual comparison of the signs remained neutral.
39      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).
40      In the present case, the Board of Appeal found that there was, on the part of the relevant public, a likelihood of confusion between the signs at issue with regard to all the services at issue on the grounds that those services were identical, that the signs at issue were visually similar to an average degree and phonetically identical and that the earlier mark had a normal degree of distinctiveness.
41      The applicant disputes that analysis by submitting various arguments, all of which are disputed by EUIPO and the intervener.
42      First, the applicant claims that the distinctive character of the earlier mark is extremely weak, since there are 398 trade marks composed only of the letter ‘e’ registered in the European Union and the letter ‘e’ has little, if any, capacity to distinguish the commercial origin of the services at issue. It submits that the letter ‘e’ cannot therefore be regarded as the ‘dominant element’, because a finding of a likelihood of confusion cannot be based on an element that cannot be protected as a trade mark.
43      As regards the distinctive character of the earlier mark, it must, however, be pointed out, as EUIPO and the intervener do, that that mark has no meaning with regard to the services at issue. The letter ‘e’, in particular, which constitutes one of the elements that the Board of Appeal took into account in comparing the signs, does not in any way, as the applicant admits, refer to the relevant services. The earlier mark is therefore not descriptive or even allusive or laudatory.
44      Consequently, the Board of Appeal was fully entitled to find that the degree of distinctiveness of the earlier mark was average.
45      In that regard, it must be borne in mind that, according to Article 4 of Regulation 2017/1001, letters are among the categories of signs of which an EU trade mark may consist, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, judgment of 8 May 2012, G, T‑101/11, not published, EU:T:2012:223, paragraph 50). It follows that a letter is in itself capable of conferring distinctive character on a trade mark. Consequently, the applicant errs in maintaining that the letter ‘e’ does not constitute a distinctive element, in particular in the earlier mark.
46      The applicant’s claim that there are 398 trade mark registrations consisting of the letter ‘e’ does not call into question the degree of distinctiveness which the Board of Appeal found the earlier mark to have. That claim does not actually make it possible to establish that, as regards the services at issue, the alleged existence of numerous marks including the letter ‘e’ would have had the effect of eliminating, or even lessening, the ability of those marks to identify the commercial origin of such services.
47      Secondly, the applicant submits that its services are purchased via the Internet by means of an online platform and that such purchases, which are carried out with great attention, are preceded by a number of consumer activities. It argues that, since the sign applied for does not have any conceptual meaning, the visual aspect of that sign will therefore be dominant for the consumer. It maintains that, consequently, on account of the visual differences that exist – differences which are increased by the fact that the perception of the signs at issue by the average consumer, who tends to be observant, is overwhelmingly visual — and in view of the irrelevance of the phonetic similarity in the present case, it must be held that the signs are different overall and, as a result, that there is no likelihood of confusion.
48      In that regard, it must be pointed out that it is apparent from the considerations set out above that the Board of Appeal was right in finding that the signs at issue were visually similar to an average degree and phonetically identical, whereas the conceptual comparison of the signs remained neutral (see paragraphs 24 to 38 above).
49      In this connection it must be pointed out that, contrary to what the applicant claims, although the visual aspect plays an important role in relation to the services at issue, which relate to travel arrangements, the phonetic impression cannot, however, be overlooked. Not only are those services capable of, inter alia, being offered for sale in travel agencies or by telephone, but they may also, as stated by EUIPO, be advertised orally on the radio or by other consumers.
50      In view of those factors and in view also of the fact that the services at issue are identical (see paragraphs 20 and 21 above) and that the earlier mark has a normal degree of inherent distinctiveness in relation to those services (see paragraphs 43 to 45 above), the Board of Appeal was fully entitled to find that there was a likelihood of confusion on the part of the relevant public, the level of attention of which varied from average to higher than average (see paragraphs 19 and 21 above).
51      That finding is not called into question by the applicant’s argument that its services are purchased via the Internet, by means of an online platform, by consumers who display a high level of attention. It is not apparent from the wording of the list of services covered by the mark applied for that those services are confined to such services. In the present case, there is nothing to suggest, when analysing the likelihood of confusion, that the services covered by the mark applied for are different from those covered by the earlier mark. Likewise, as regards the relevant public, it must be borne in mind that that public comprises the general public as well as professionals and that it is not disputed that its level of attention with regard to the services at issue varies from average to higher than average, a factor which the Board of Appeal took into consideration in its assessment of the likelihood of confusion.
52      Consequently, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected as unfounded and the action must be dismissed as unfounded in its entirety, without it being necessary to rule on the admissibility of the applicant’s heads of claim requesting that the Court annul the Opposition Division’s decision of 29 November 2018 and remit the case to EUIPO.
Costs
53      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. 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 (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders eSky Group IP sp. z o.o. to pay the costs.
Marcoulli
Frimodt Nielsen
Norkus
Delivered in open court in Luxembourg on 10 June 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.