JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
11 October 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark brightblue – Earlier EU word mark BLUE – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Similarity of the goods and services – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑516/22,
Deutsche Glasfaser Wholesale GmbH, established in Borken (Germany), represented by A. Doepner-Thiele and U. Kelp, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
O2 Worldwide Ltd, established in Cambridge (United Kingdom), represented by P. Neuwald, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere and K. Kecsmár (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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
1        By its action under Article 263 TFEU, the applicant, Deutsche Glasfaser Wholesale GmbH, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2022 (Case R 24/2022-4) (‘the contested decision’).
Background to the dispute
2        On 7 June 2018, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covered goods and services in Classes 9, 35, 38 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, corresponding, for each of those classes, to the following description:
–        Class 9: ‘Magnetic data carriers; data processing equipment and accessories (electrical and mechanical); computer memories; data transmission apparatus’;
–        Class 35: ‘Marketing, advertising and promotion services; business mediation and business consultancy in the purchase and sale (whether or not via the Internet) of apparatus for recording, transmission or reproduction of text, sound and/or images, entertainment via internet protocol tv (IPTV)’;
–        Class 38: ‘Telecommunications services; broadcasting of interactive television and radio via internet protocol tv (IPTV); services of an online interactive television channel, (digital) transmission of data, sound and images, including via the Internet; providing of electronic telecommunication connections; providing information about telecommunication’;
–        Class 42: ‘Computer services for interactive communications and broadcasting; software design and development; design and development of computer hardware’.
4        On 18 February 2019, the intervener, O2 Worldwide Ltd, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based on, inter alia, the earlier EU word mark BLUE, which covers numerous goods and services in Classes 9, 35, 38 and 42.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).
7        On 9 November 2021, the Opposition Division upheld the opposition.
8        On 5 January 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the relevant public.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that the parties are summoned to attend a hearing.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant puts forward two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 95 of that regulation.
The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
14      The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, consists of five parts, in that the applicant submits that the Board of Appeal’s assessment is incorrect as regards, first, the consumers’ level of attention, secondly, the distinctive character of the earlier mark, thirdly, the most distinctive and dominant elements of the mark applied for, fourthly, the comparison of the signs at issue and, fifthly, the examination of the likelihood of confusion.
15      As a preliminary point, it must be observed that 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.
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. 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      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 Regulation 2017/1001 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).
18      It must be pointed out at the outset that, as regards the goods and services at issue, the Board of Appeal adopted the reasons in the Opposition Division’s decision. It thus found that the goods and services in Classes 9, 38 and 42 covered by the mark applied for were all identical and that those in Class 35 were partly identical and partly at least similar to the goods and services in the same classes covered by the earlier mark.
19      Furthermore, the Board of Appeal found that the earlier mark was an EU trade mark and that the relevant territory was that of the European Union.
20      It must be stated that the parties do not dispute those findings.
21      It must also be pointed out that the applicant does not call into question the definition of the relevant public on which the Board of Appeal relied, according to which that public consisted both of businesses with specific needs, particularly in relation to many of the services in Classes 35 and 42, and of the general public in the European Union. It does not, in addition, criticise the Board of Appeal for having decided to examine the likelihood of confusion from the perspective of the English-speaking part of the relevant public, namely the public in Ireland, the native language of which is English, and that in the Scandinavian countries, Cyprus, Malta, the Netherlands and Finland, in the light of the case-law resulting from the judgment of 9 December 2010, Earle Beauty v OHIM (NATURALLY ACTIVE) (T‑307/09, not published, EU:T:2010:509, paragraph 26).
The first part of the first plea, relating to the relevant public’s level of attention
22      The applicant submits that the Board of Appeal erred in finding that the level of attention of consumers could be average by relying on three different goods and services, namely ‘magnetic data carriers; data processing equipment and telecommunications services’, on the ground that the level of attention of the relevant public was average if something was used by consumers as a matter of course. Consequently, it argues that a high level of attention should have been assumed with regard to all the goods and services at issue.
23      EUIPO and the intervener dispute the applicant’s arguments.
24      In the present case, the Board of Appeal found that the target public with regard to the goods and services which had been found to be identical or similar consisted both of businesses with specific needs, particularly in relation to many of the services in Classes 35 and 42, and of the general public, which used certain of the goods and services such as ‘magnetic data carriers; data processing equipment and telecommunications services’ as a matter of course. It concluded that the level of attention of the relevant public varied from average to high.
25      It must be pointed out that the applicant submits, in essence, that the Board of Appeal should have found that the level of attention of the relevant public was high with regard to all the goods and services at issue.
26      However, as EUIPO points out, the Board of Appeal found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the English-speaking public, even taking into account a higher level of attention.
27      Consequently, the first part of the first plea must be rejected as ineffective.
The second part of the first plea, relating to the assessment of the distinctive character of the earlier mark
28      The applicant criticises the Board of Appeal for having found that the earlier mark was distinctive to a normal degree, although, according to EUIPO’s decision-making practice, the term ‘blue’ cannot, since it refers to a primary colour, be monopolised by its registration as a trade mark. It also submits that the number of goods and services in respect of which the earlier mark has been registered is neither very limited, nor is the relevant market very specific. Furthermore, it argues that, in view of the characteristics attributed to the colour blue, consumers will perceive the term ‘blue’, in the context of the goods and services, as a mere laudatory advertisement and not as an indication of origin, with the result that the Board of Appeal erred in finding that that term conveyed no direct meaning in the context of the goods and services at issue. Moreover, it contends that the Board of Appeal did not take into consideration that at least the goods in Class 9 could actually be blue. In that context, the applicant submits that the degree of distinctiveness of the earlier mark must be considered to be very low and therefore the scope of protection of that mark must be considered to be very narrow. It also submits that the term ‘blue’ has been heavily ‘diluted’ on account of the fact that there are a large number of trade mark applications and registrations which contain that term and that the Board of Appeal in its assessment ignored the fact that there are a number of marks on the market which contain either ‘blue’ or ‘blu’ and are still in use.
29      EUIPO and the intervener dispute the applicant’s arguments.
30      In the present case, the Board of Appeal pointed out that the earlier mark consisted solely of the term ‘blue’. It found, inter alia, that that term referred to a colour, that it had no direct meaning in the context of the goods and services at issue and that it was therefore distinctive to a normal degree. It also found that the rules which applied to words designating a colour differed from those which related to the depiction of colours in trade marks or colour marks per se. It also rejected the applicant’s argument that consumers would perceive the term ‘blue’ either as laudatory or as a reference to a characteristic of any of the goods or services in question. Furthermore, it rejected the applicant’s argument that the terms ‘blue’ or ‘blu’ constitute a recurrent feature of trade marks which have been entered in the EU trade marks register and that their distinctiveness is attenuated as a result.
31      According to the case-law, for the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser ability of that mark or that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark or element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).
32      In the first place, it must be borne in mind that the validity of an earlier mark cannot be called into question in the context of the procedure for registration of an EU trade mark, but only in the context of invalidity proceedings (see judgment of 24 September 2015, Primagaz v OHIM – Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 96 and the case-law cited).
33      In the second place, the Board of Appeal was right in finding, first, that the term ‘blue’, which is the only element of which the earlier mark consists, referred to a colour and, secondly, that that term had no direct meaning in the context of the goods and services at issue.
34      In the light of the case-law which has been referred to in paragraph 31 above, it must be stated that the applicant confines itself to claiming that the colour blue is, for the relevant public, an inherent characteristic of the goods and services at issue or that there is a direct and immediate link between it and the nature of the goods and services, an argument to which the Board of Appeal, moreover, expressly replied in the contested decision. Furthermore, it must be borne in mind that the mere fact that the goods at issue may be available in that colour, just as they may be available in other colours, is irrelevant, since it is not reasonable to believe that, for that reason alone, that colour will immediately and directly be recognised by the relevant public as descriptive of an intrinsic characteristic which is inherent to the nature of those goods (see, to that effect, judgments of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 46, and of 9 June 2021, Philip Morris Products v EUIPO (SIENNA SELECTION), T‑130/20, not published, EU:T:2021:341, paragraph 59 and the case-law cited).
35      As regards the press article on which the applicant relies in order to maintain that consumers will perceive the term ‘blue’ as a mere laudatory advertisement, it must be stated that that article does not, having regard to the case-law which has been referred to in paragraph 31 above, serve to show that the relevant public will directly and immediately associate that characteristic with all of the goods and services at issue.
36      As regards the claim that there are a large number of marks which contain the term ‘blue’, at least as one of the word elements, it must be borne in mind that the mere existence, even in large numbers, of marks which include that term is not sufficient to establish that those marks are weakly distinctive. According to the case-law, for that claim to be relevant for the purposes of such a finding, it must be shown that there are significant similarities as regards not only the presence of the element in question in earlier marks but also the position, typeface, the type of ornamental presentation, any special font of a particular letter of that word and, as the case may be, the presence of verbal or figurative additional elements before or after that word. Furthermore, the marks at issue must refer to the same goods or services (judgment of 21 February 2013, Seven for all mankind v Seven, C‑655/11 P, not published, EU:C:2013:94, paragraphs 48 and 49). However, although the applicant did, in the context of the proceedings before EUIPO, submit a list of marks which are registered and which contain the terms ‘blu’ or ‘blue’, it does not show that the other conditions for the purposes of the case-law cited above are satisfied.
37      Lastly, in so far as the applicant relies on a ‘risk of dilution’ of the earlier mark, it must be borne in mind that that is the notion that detriment to the distinctive character of the earlier mark is usually established where use of the mark applied for would have the effect that the earlier mark would no longer be capable of arousing immediate association with the goods for which it is registered and used (see, to that effect, judgment of 15 September 2016, Arrom Conseil v EUIPO – Puig France (Roméo has a Gun by Romano Ricci), T‑358/15, not published, EU:T:2016:490, paragraph 58 and the case-law cited). Such considerations are not, however, relevant as regards the determination of the inherent distinctiveness of the earlier mark for the purposes of Article 8(1)(b) of that regulation.
38      Consequently, the Board of Appeal did not err in finding that the earlier mark had a normal degree of distinctiveness.
39      The second part of the first plea must therefore be rejected.
The third part of the first plea, relating to the most distinctive and dominant elements of the mark applied for
40      The applicant submits that the Board of Appeal erred in finding that the mark applied for was essentially characterised by the term ‘blue’. It argues that it is true that the Board of Appeal correctly pointed out that the mark applied for did not consist of the word ‘blue’ alone, but that it should not, however, have considered that the additional term ‘bright’ was not capable of contributing to the overall impression created by that mark. It submits that the Board of Appeal also stated that the term ‘bright’ had the function of an adjective which qualified the term ‘blue’ and was descriptive of that latter term. However, that reasoning does not, in the applicant’s view, explain why the relevant public would perceive the term ‘bright’ less in the overall impression created by the mark applied for as a whole. It contends that the term ‘blue’ does not occupy an independent position in the mark applied for and is not dominant, but that it will be understood by the relevant public, whether English-speaking or not, as an inseparable part of the term ‘brightblue’. It argues that that is particularly true in view of the prevailing principle in trade mark law that the consumer generally pays greater attention to the beginning of a sign than to its end.
41      Furthermore, the applicant submits that it was contradictory on the part of the Board of Appeal, on the one hand, to state that the figurative elements in the mark applied for were striking, sizeable and prominently positioned and, on the other hand, to find that there was nothing about them that would lead the consumer to focus on them as well.
42      EUIPO and the intervener dispute the applicant’s arguments.
43      In the present case, first of all, the Board of Appeal observed that the mark applied for was a figurative mark which contained the word element ‘brightblue’ and pointed out that the relevant public would break it down into elements which suggested a specific meaning or which resembled words known to it. It also took into account the fact that the English words ‘bright’ and ‘blue’ were represented in standard, white, lower-case letters beneath a figurative element which was also in white and that all were set against a contrasting blue rectangular background which was decorative. In addition, it took the view that, although it was striking, sizeable and prominently positioned, the figurative element above the word element would be perceived as an abstract configuration of shapes and radiating lines. It also found that the figurative element had limited distinctive character, since there was nothing about it which would lead the consumer to focus on it.
44      Next, the Board of Appeal found that, since the word ‘blue’ was distinctive within the mark applied for, the word ‘bright’ would be perceived by the relevant public as an adjective which qualified the noun that followed it, namely ‘blue’, and as referring to a colour that was ‘strong and noticeable, and not dark’. It took the view that, as a result, despite being the initial word element, it would, in the present case, be perceived as a secondary element within a logical and conceptual unit, with less impact on consumers and less significance in that mark. It found that the radiating lines of the figurative element might be perceived as reinforcing the qualifying element ‘bright’.
45      Lastly, the Board of Appeal also took into account that consumers tended to focus on the textual elements in a sign. It then found that, in the mark applied for, the public’s attention would remain on the word element ‘brightblue’, and in particular on the distinctive element ‘blue’ therein, and that the remaining elements played a secondary role in the overall impression created by that mark.
46      In that regard, it must be borne in mind that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
47      In the first place, it must be pointed out that, contrary to what the applicant, in essence, submits, the Board of Appeal did not confine itself to taking into consideration the term ‘blue’ within the mark applied for.
48      As regards the word element ‘brightblue’ in that mark, the Board of Appeal correctly found, a finding which the applicant does not dispute, that the relevant public would break it down into two word elements, ‘bright’ and ‘blue’, which had a specific meaning for that public or which resembled words known to it. It must also be observed that the Board of Appeal took into account the figurative element of the mark applied for and the rectangular background on which the word elements and decorative elements were placed. It must therefore be held that, in so doing, the Board of Appeal examined the mark applied for as a whole, in accordance with the case-law which has been referred to in paragraph 46 above.
49      In the second place, the applicant’s argument that the Board of Appeal contradicted itself must be rejected. The fact that the Board of Appeal described the figurative element in the mark applied for as ‘striking, sizeable and prominently positioned’ does not contradict the finding that that element had limited distinctive character, since it took the view that it would be perceived as ‘an abstract configuration of shapes and radiant lines’ and that there was ‘nothing about it which w[ould] lead the consumer to focus on it in the relevant sense i.e. for identification purposes’. Furthermore, it must be borne in mind that, where a trade mark consists of word and figurative elements, the former are, in principle, considered to be more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by citing the name of the trade mark than by describing the figurative element of that mark (see judgment of 29 April 2020, Abarca v EUIPO – Abanca Corporación Bancaria (ABARCA SEGUROS), T‑106/19, not published, EU:T:2020:158, paragraph 51 and the case-law cited).
50      In the third place, the applicant submits that the element ‘bright’ is situated at the beginning of the word element ‘brightblue’ in the mark applied for and that the relevant public is more likely to focus on that element. However, it must be borne in mind that, although it is true that the initial part of word marks may be more likely to hold the consumer’s attention than the following parts, that consideration cannot apply in all cases. Furthermore, it cannot, in any event, call into question the principle that the examination of the similarity of the marks must take into account the overall impression which they create, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 14 December 2022, Nemport Liman İşletmeleri Ve Özel Antrepo Nakliye Ticaret v EUIPO – Newport Europe (NEMPORT LİMAN İŞLETMELERİ), T‑18/22, not published, EU:T:2022:815, paragraph 44 and the case-law cited).
51      In the fourth place, it must be observed that the applicant does not dispute the Board of Appeal’s finding that the term ‘bright’ is used as an adjective which qualifies the term ‘blue’, since it refers to a colour that is ‘strong and noticeable, and not dark’, or the finding that the radiating lines of the figurative element could be perceived as reinforcing that adjective ‘bright’. The Board of Appeal was therefore right in finding that the word element ‘bright’, as an adjective which qualifies the element ‘blue’, would be perceived by the relevant public as a secondary element and therefore as having less significance in the mark applied for.
52      Accordingly, it must be held that the element ‘bright’ has, at most, a low degree of distinctiveness within the mark applied for.
53      Since the Board of Appeal was right in finding that the relevant public would break the word element of the mark applied for down into two word elements, ‘bright’ and ‘blue’, in which the element ‘blue’ has a normal degree of distinctiveness, for the same reasons as those set out in paragraph 38 above, and in which the element ‘bright’ has, at most, a low degree of distinctiveness, for the reasons set out in paragraphs 51 and 52 above, it must be held that the Board of Appeal was right in finding that the element ‘bright’ played a secondary role in the overall impression created by the mark applied for in relation to the other word element ‘blue’.
54      Consequently, the third part of the first plea must be rejected as unfounded.
The fourth part of the first plea, relating to the comparison of the signs at issue
55      The applicant criticises the Board of Appeal for having found that the signs at issue were visually, phonetically and conceptually similar. From a visual standpoint, it submits that the element ‘blue’ in the mark applied for recedes into the background and is less noticeable because of its position at the end of the sign. Furthermore, it argues that the signs at issue are of very different lengths. Moreover, it contends that the mark applied for includes distinctive figurative elements. From a phonetic standpoint, it submits that the Board of Appeal did not take sufficient account of the fact that the mark applied for does not consist solely of the word element ‘blue’, but also of the word element ‘bright’. From a conceptual standpoint, it argues that, if the term ‘bright’ is to be regarded as an adjective, then the Board of Appeal failed to take into account that that term, in precisely that function, creates a sufficient distance from the earlier mark.
56      EUIPO and the intervener dispute the applicant’s arguments.
57      In the present case, the Board of Appeal carried out an assessment of the similarity of the signs at issue. Visually, it concluded that the signs at issue were similar to a below-average degree, taking the view, inter alia, that those signs differed in the first word element of the mark applied for, ‘bright’, which was secondary since it qualified the noun which follows it, namely the distinctive element ‘blue’, in the abstract figurative element of that mark, which was also secondary, and in the colours and background used, which were purely decorative. Phonetically, it found that the signs at issue differed in the first syllable of the mark applied for, ‘bright’, and that therefore those signs were similar to an average degree. Conceptually, it took the view that the additional concept ‘bright’ conveyed by the mark applied for, which was perhaps reinforced by the radiating lines of the figurative element, had less distinctive character as an adjective or qualifier of the distinctive noun ‘blue’ which it preceded, with the result that the signs at issue were similar to at least an average degree.
58      In that regard, it must be borne in mind that the greater or lesser degree of distinctiveness of the elements that are common to a mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of the signs (see, to that effect, judgment of 14 September 2017, Alpenschmaus, T‑103/16, not published, EU:T:2017:605, paragraph 47 and the case-law cited).
59      In the present case, it must be pointed out that, having regard to the case-law which has been referred to in paragraph 46 above, the Board of Appeal did not consider the word element ‘bright’ and the figurative element of the mark applied for to be negligible and that it did not carry out the assessment of the similarity of the signs at issue solely on the basis of the element ‘blue’ or by taking the view that that element was capable on its own of dominating the image of that mark which the relevant public would retain.
60      On the contrary, the Board of Appeal carried out the assessment of the visual, phonetic and conceptual similarity of the signs at issue by taking into account not only the element ‘blue’, which is common to both signs, but also by taking into consideration the word element ‘bright’ and the figurative element in the mark applied for, without, however, failing to take into account their secondary nature in relation to the element ‘blue’, which it had found to be distinctive to a normal degree.
61      Accordingly, first of all, it must be observed that the Board of Appeal took into account, in particular, the characteristics of the signs at issue, in finding that those signs differed in the first word element of the mark applied for, ‘bright’, which was secondary, in the abstract figurative element of that mark, which was also secondary, and in the colours and background used, which were purely decorative. Furthermore, for the reasons set out in paragraphs 51 to 53 above, the Board of Appeal was right in finding, in particular, that, in the overall impression created by the mark applied for, the element ‘bright’ played a secondary role in relation to the other word element ‘blue’. Consequently, the Board of Appeal did not err in reaching the conclusion that the signs at issue were visually similar to a low degree.
62      Next, it is sufficient to point out that the Board of Appeal did take into consideration the fact that the signs at issue differed in the first syllable of the word element of the mark applied for, ‘bright’, and that that term differentiated that mark from the earlier mark, which consists solely of the distinctive element ‘blue’. Consequently, the Board of Appeal was fully entitled to reach the conclusion that the signs at issue were phonetically similar to an average degree.
63      Lastly, it must be pointed out that the Board of Appeal did acknowledge that the term ‘bright’ conveyed an ‘additional concept’. However, the applicant has not provided any material that is capable of calling into question the Board of Appeal’s finding that the concept conveyed by the term ‘bright’, which was perhaps reinforced by the radiating lines of the figurative element, had less distinctive character as an adjective or qualifier of the distinctive noun which it precedes, namely ‘blue’. It must therefore be held that the signs at issue are conceptually similar to a high degree.
64      Consequently, the fourth part of the first plea must be rejected as unfounded.
The fifth part of the first plea, relating to the examination of the likelihood of confusion
65      The applicant criticises the Board of Appeal for finding that there was a likelihood of confusion between the signs at issue. It submits that not only did the Board of Appeal incorrectly determine the relevant factors, but it also incorrectly assessed their interdependence. It argues that it is unlikely that a significant part of the relevant public would be misled into thinking that the goods and services bearing the signs at issue come from the same undertaking or, as the case may be, from undertakings that are economically linked. The applicant contends that that public would also not perceive the mark applied for as a sub-brand or a variant of the earlier mark, since those marks are sufficiently different visually, phonetically and conceptually. It submits that that is particularly true because the relevant public is accustomed to the fact that there are many trade marks that contain the term ‘blue’ or ‘blu’.
66      EUIPO and the intervener dispute the applicant’s arguments.
67      In the present case, the Board of Appeal found that, taking into account the below-average degree of visual similarity, the average degree of phonetic similarity and the above-average degree of conceptual similarity between the signs, owing to their distinctive element in common, which constituted the sole element of the earlier mark reproduced within the mark applied for, as well as the identity and similarity between the goods and services, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the English-speaking public, even taking into account a high level of attention on the part of the relevant public.
68      In that regard, it must be borne in mind that, 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).
69      It must be pointed out, having regard to paragraph 18 above, that the goods and services in Classes 9, 38 and 42 covered by the mark applied for are all identical and that those in Class 35 are partly identical and partly at least similar to the goods and services in those classes covered by the earlier mark.
70      Furthermore, for the reasons set out in paragraphs 61 to 63 above, there is a below-average degree of visual similarity, an average degree of phonetic similarity and a high degree of conceptual similarity between the signs at issue, on account of their distinctive element in common, which constitutes the sole element of the earlier mark reproduced in the mark applied for. In addition, as has been pointed out in paragraph 60 above, the Board of Appeal carried out the assessment of the similarity of the signs at issue not only by taking into account the element ‘blue’, in which those signs coincided, but also by taking into consideration the word element ‘bright’ and the figurative element in the mark applied for, without, however, failing to take into account their secondary nature in relation to the element ‘blue’, which is distinctive to a normal degree. Thus, contrary to what the applicant claims, the Board of Appeal did not err in determining the relevant factors or in assessing the interdependence between the similarity of the signs and that of the goods or services at issue, in accordance with the case-law cited in paragraph 16 above.
71      It must therefore be held that the Board of Appeal was fully entitled to find that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the English-speaking public, even taking into account a high level of attention on the part of the relevant public.
72      Consequently, the fifth part of the first plea must be rejected as unfounded and, in the light of all of the foregoing, that plea must be rejected, in part, as ineffective and, in part, as unfounded.
The second plea, alleging infringement of Article 95 of Regulation 2017/1001
73      By its second plea, alleging infringement of Article 95 of Regulation 2017/1001, the applicant complains that the Board of Appeal did not take into account an annex to the statement of grounds of its appeal before the Board of Appeal. It submits that that annex shows that the colour blue has a specific meaning with regard to the goods and services at issue. It contends that the question of whether a specific meaning can be attributed to a colour is of considerable importance with regard to the question of whether a word mark which is designated in that manner can have any distinctive character at all attributed to it. The applicant submits that the Board of Appeal also did not take into consideration the fact that at least the goods in Class 9 can actually be blue.
74      Furthermore, the applicant claims that the Board of Appeal did not take into account the evidence in a number of other annexes to the statement of grounds of its appeal before the Board of Appeal and, in particular, the number of trade marks listed, and the number of marks used, which contained the term ‘blue’ or the term ‘blu’.
75      EUIPO and the intervener dispute the applicant’s arguments.
76      Article 95 of Regulation 2017/1001 is worded as follows:
‘1.      In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. In invalidity proceedings pursuant to Article 59, the Office shall limit its examination to the grounds and arguments submitted by the parties.
2.      The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’
77      In the present case, it is sufficient to point out that the Board of Appeal found, in particular, that the applicant had not convinced it that consumers would perceive the term ‘blue’, which referred to the colour blue, either as a laudatory term or as a reference to a characteristic of any of the goods or services in question.
78      Consequently, it must be held that the Board of Appeal not only took that annex into account, but refuted the arguments which the applicant derived from it regarding the specific meaning of the colour blue in the context of the present case. That complaint must therefore be rejected.
79      Furthermore, as regards the evidence in a number of other annexes to the statement of grounds of appeal before the Board of Appeal, it is sufficient to observe that it is apparent from a reading of the contested decision as a whole that the Board of Appeal did take account of those documents, which concerned, in particular, the number of trade marks listed and the number of active marks which contained the term ‘blue’ or the term ‘blu’. It examined the arguments which the applicant derived from them and rejected them. That claim must thus be rejected.
80      It must therefore be pointed out that the Board of Appeal ruled on the facts, evidence and arguments provided by the applicant and that it took into account evidence submitted in due time, in accordance with Article 95 of Regulation 2017/1001.
81      Consequently, the second plea must be rejected as unfounded and the action must therefore be dismissed in its entirety.
Costs
82      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.
83      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. Since EUIPO has applied for the applicant to be ordered to pay the costs in the event that the parties are summoned to attend a hearing, it is appropriate, since no hearing has been organised, to order EUIPO to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Deutsche Glasfaser Wholesale GmbH to bear its own costs and to pay those incurred by O2 Worldwide Ltd;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kornezov
De Baere
Kecsmár
Delivered in open court in Luxembourg on 11 October 2023.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.