JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
12 June 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark GPAY – Earlier national figurative mark ePay – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑78/23,
Google LLC, established in Mountain View, California (United States), represented by C. Schmitt and M. Kinkeldey, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
EPay AD, established in Sofia (Bulgaria), represented by V. Pavlov and M. Lazarov, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 18 January 2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Google LLC, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 November 2022 (Case R 1761/2021‑4) (‘the contested decision’).
Background to the dispute
2        On 17 October 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign GPAY.
3        The mark applied for covered goods and services in Classes 9 and 36 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: ‘Downloadable software for facilitating commercial transactions through electronic means via wireless networks, global computer networks and mobile telecommunication devices; downloadable software, namely, electronic financial platform that accommodates multiple types of payment and debt transactions; downloadable software for enabling the electronic transfer of money between users; downloadable software for enabling processing of electronic funds transfers and payments made via ACH, credit card, debit card, prepaid cards, wireless wallets, mobile wallets, electronic wallets, electronic check and electronic, mobile and online payments; downloadable software for organizing, storing, providing access to, redeeming, scanning, sharing, and providing information about goods, services, discounts, tickets, boarding passes, coupons, and consumer loyalty programs; downloadable software for capturing, managing, and storing credit card and debit card information; downloadable software for processing, facilitating, verifying, and authenticating mobile payments and contactless transactions with retailers, merchants, and vendors using a mobile device’;
–        Class 36: ‘Electronic payment services, namely, enabling electronic processing and transmission of electronic funds transfer and payments via ACH, credit card, debit card, prepaid cards, wireless wallets, mobile wallets, electronic wallets, electronic check and electronic, mobile and online payments; financial transaction services, namely, providing secure commercial transactions and payment options; financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; credit card and transaction processing terminal services using near field communication (NFC) technology’.
4        On 4 February 2020, the intervener, EPay AD, 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, inter alia, on the figurative mark reproduced below, registered in Bulgaria and covering goods and services in Classes 9 and 36 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus’;
–        Class 36: ‘Insurance services, financial affairs, monetary affairs, real estate affairs’.
6        The grounds relied on in support of the opposition included, inter alia, 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        Following the applicant’s request, EUIPO invited the intervener to adduce proof of genuine use of the earlier mark relied on in support of the opposition. The intervener complied with that request within the prescribed period.
8        On 30 September 2021, after finding that genuine use of the earlier mark had been proved only in connection with electronic payment services, which were part of ‘financial affairs’ and ‘monetary affairs’ in Class 36 covered by that mark, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
9        On 13 October 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal dismissed the appeal on the ground that the Opposition Division had not erred in finding that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of the goods and services covered by the mark applied for.
11      In the first place, the Board of Appeal found that the goods covered by the mark applied for were similar to an average degree to the electronic payment services covered by the earlier mark, whereas the services covered by the mark applied for were identical to those electronic payment services. In the second place, the Board of Appeal found that the signs at issue were similar overall to an average degree. In the third place, it found that the degree of distinctiveness of the earlier mark was average or high depending on the level of knowledge of the English language by the relevant Bulgarian public. In the fourth place, the Board of Appeal found that there was a likelihood of confusion for the whole of the relevant Bulgarian public.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
14      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
15      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. Essentially, the applicant submits that all of the relevant Bulgarian public understands the semantic content of the basic English word ‘pay’ which is found in the marks at issue, with the result that that common element of both marks is not distinctive and has no effect on the assessment of the similarity of those marks. According to the applicant, in view of the fact that the common element ‘pay’ is not distinctive and in view of the presence of the letter ‘g’, which is intrinsically distinctive and is situated at the beginning of the mark applied for, there is no likelihood of confusion.
16      EUIPO and the intervener dispute the applicant’s line of argument.
17      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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) of that regulation, ‘earlier trade marks’ means, inter alia, trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
18      The risk that the public might 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).
19      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
20      Furthermore, 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).
The relevant public and its level of attention
21      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
22      The relevant public for the purposes of the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for. Thus, as a general rule, where the goods or services of one of the marks at issue are included in the broader designation referred to by the other mark, the relevant public is defined by reference to the more specific wording (see judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraphs 38 and 39 and the case-law cited).
23      In paragraph 71 of the contested decision, the Board of Appeal found that the goods and services covered by the marks at issue all refer to commercial and financial transactions and, in particular, to electronic payment services. Those services are aimed at both the general public and the professional public. According to the Board of Appeal, since those services are of economic importance to the public, the level of attention will be relatively high.
24      Furthermore, in paragraph 72 of the contested decision, the Board of Appeal found that, given that the earlier mark is protected in Bulgaria, it is the general and professional Bulgarian public which should be taken into account.
25      It should be noted that those findings by the Board of Appeal are consistent with those of the Opposition Division and that, more generally, the file does not show that the issue of the definition of the relevant public and its level of attention was disputed between the parties during the proceedings before EUIPO.
26      However, before the Court, the applicant submits that, because the goods and services in question relate to electronic payment services, which are offered exclusively on the internet, the relevant Bulgarian public consists exclusively of professionals or consumers who are accustomed to carrying out internet transactions. Those consumers are mainly, or even exclusively, aged between 18 and 45, live in urban areas, have a higher than average level of education and are technologically sophisticated.
27      That definition of the relevant public put forward by the applicant is not supported by any evidence, but is based exclusively on the finding that electronic payment services require the use of the internet. However, that finding is not capable of demonstrating that that use requires technological sophistication or a higher than average level of education. On the contrary, the evidence in the file shows that electronic payment services are aimed at the general public in Bulgaria. In particular, as EUIPO rightly notes, the letters from the various public utility companies, included in the file, show that those companies provide the users of their services, namely the general public, with the option to pay their invoices by means of an electronic payment system.
28      It can therefore be concluded that the Board of Appeal was justified in finding that the relevant Bulgarian public also included the general public, and it can be concluded that the applicant’s line of argument must be rejected.
29      Furthermore, it should be noted that the applicant does not dispute, before the Court, the Board of Appeal’s finding relating to the level of attention paid by the relevant public, which is high.
The comparison of the goods and services
30      The Board of Appeal endorsed, in paragraph 77 of the contested decision, the Opposition Division’s finding that the goods covered by the mark applied for, in Class 9, were similar to an average degree to the electronic payment services covered by the earlier mark in so far as they are complementary to each other and could coincide in their end use, relevant public and distribution channels.
31      The Board of Appeal also endorsed, in paragraph 78 of the contested decision, the Opposition Division’s finding that the services covered by the mark applied for, in Class 36, were identical to the electronic payment services covered by the earlier mark, in so far as they all relate to various payment options, money transfers and commercial transactions and are all carried out electronically.
32      The applicant does not dispute the Board of Appeal’s assessments referred to above.
The comparison of the signs
33      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must 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. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
34      In the present case, before addressing the issue of the visual, aural and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.
The distinctive and dominant elements of the marks at issue
35      It should be noted that, in order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of 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 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 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 27 and the case-law cited).
36      In addition, it must be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he or she will identify the elements which, for him or her, suggest a concrete meaning or resemble words known to him or her (see judgment of 5 October 2020, NATURANOVE, T‑602/19, not published, EU:T:2020:463, paragraph 28 and the case-law cited).
37      Lastly, 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 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).
38      As regards the dominant elements of the marks at issue, the Board of Appeal found, in paragraph 82 of the contested decision, that the appearance of the earlier mark was not dominated by its font or graphical presentation and that, therefore, the relevant public, when faced with that mark, would remember the word ‘epay’. In paragraph 83 of the contested decision, the Board of Appeal noted that, since the mark applied for was a word mark, it was irrelevant whether it was written in lower-case or capital letters.
39      As regards the distinctive elements of the marks at issue, the Board of Appeal found, in paragraph 85 of the contested decision, that the element ‘pay’ is a common English word that will also be understood by a substantial part of the relevant public also in the non-English-speaking Member States, such as Bulgaria in the present case. According to the Board of Appeal, it is a habitual term used in the financial sector, as a reference to the process of carrying out transactions, namely payments, especially for the public used to carrying out transactions as a part of their business activity or through the internet, where English may be more common.
40      Thus, in paragraph 86 of the contested decision, the Board of Appeal stated that it may be assumed that a non-negligible part of the relevant Bulgarian public will distinguish the word ‘pay’ both in the earlier mark and in the mark applied for, will associate it with the abovementioned meaning and will therefore perceive it as a very weak element.
41      At the same time, in paragraph 88 of the contested decision, the Board of Appeal stated that, for a non-negligible part of the relevant Bulgarian public, namely consumers who do not have a basic knowledge of English, the common English word ‘pay’ is meaningless and will be regarded as distinctive.
42      In paragraph 89 of the contested decision, the Board of Appeal found that the prefix ‘e’ in the earlier mark was likely to be understood by the majority of the relevant public as an abbreviation of ‘electronic’, with the result that, in relation to electronic payment services, that prefix is a weak element.
43      In paragraph 90 of the contested decision, the Board of Appeal found that the letter ‘g’ in the mark applied for will be perceived as meaningless by the relevant public and that it therefore has an average degree of distinctiveness in relation to the goods and services in question.
44      The applicant puts forward two complaints against the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.
45      In the first place, the applicant disputes the Board of Appeal’s finding in paragraph 88 of the contested decision that a non-negligible part of the relevant Bulgarian public would not understand the meaning of the English word ‘pay’.
46      The applicant starts from the premiss that the relevant public is technologically sophisticated and capable of using the internet, as stated in paragraph 26 above. The applicant submits, therefore, that that public has a high level of proficiency in English and consequently would understand the word ‘pay’ as a reference to the process of carrying out transactions, namely payments.
47      The applicant also relies on a 2019 report on proficiency in English, prepared by a language training company, according to which the Bulgarian public was ranked in 24th position worldwide in terms of proficiency in English.
48      The applicant also relies on decisions of the Bulgarian Trade Mark Office which, in the applicant’s view, support its argument that the relevant Bulgarian public would directly and unambiguously understand the word ‘pay’.
49      The applicant thus concludes that, as a result of the relevant Bulgarian public’s understanding of the meaning of the word ‘pay’, that word constitutes a clear and essential indication of the main characteristics of the goods and services in question which relate to payments made through the internet. That word is not distinctive in relation to those goods and services and is purely descriptive.
50      In the second place, the applicant complains that the Board of Appeal did not take sufficient account of the degree of inherent distinctiveness of the first letter ‘g’ of the mark applied for, which, in view of the purely descriptive character of the element ‘pay’, plays a significant distinctive, or even dominant, role within that mark.
51      As regards the applicant’s first complaint, it follows from the case-law that knowledge of a foreign language cannot, in general, be assumed (see judgment of 14 July 2021, Cole Haan v EUIPO – Samsøe
& Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 39 and the case-law cited). Similarly, according to the case-law, understanding of a sign may be assumed to exist if a sign is applied for in respect of a territory in which the language of the sign is the native language of the population of the territory. However, it has to be proved in territories in which the relevant language is not the native language of the population, unless a sufficient knowledge of the language of the sign on the part of the target public in those territories is a well-known fact (see judgment of 29 April 2020, Cimpress Schweiz v EUIPO – Impress Media (CIMPRESS), T‑37/19, not published, EU:T:2020:164, paragraph 63 and the case-law cited).
52      In the present case, the applicant has not claimed, or a fortiori demonstrated, that knowledge of English by the relevant public in Bulgaria is a well-known fact. It is, therefore, for the applicant to demonstrate that the Board of Appeal’s finding in paragraph 88 of the contested decision (see paragraph 41 above) was incorrect.
53      The Court considers that the applicant has not succeeded in demonstrating that.
54      First of all, as stated in paragraph 28 above and contrary to the applicant’s arguments, the relevant Bulgarian public also includes the general public. Consequently, the premiss of the applicant’s line of argument, set out in paragraph 46 above, cannot be accepted.
55      Next, as regards the report referred to in paragraph 47 above, it classes countries in one of five categories, according to their population’s command of English. Those categories are entitled ‘very high proficiency’, ‘high proficiency’, ‘moderate proficiency’, ‘low proficiency’, ‘very low proficiency’. According to that report, Bulgaria is in the second category, namely ‘high proficiency’, and is in 24th position worldwide (out of a total of 100 countries taken into account in that report). The Court considers that the information provided in that report is not sufficient to demonstrate that the applicant’s line of argument is well founded. On the contrary, there is evidence in the file, in particular a Eurostat survey carried out in 2016 and statistics from the Bulgarian National Statistics Institute for 2017, showing that the majority of the Bulgarian population does not know or use a foreign language, including therefore English, and thus supports the findings of the Board of Appeal in the contested decision.
56      Furthermore, as regards the decisions of the Bulgarian Trade Mark Office relied on by the applicant, it should be noted that it is true that it is apparent from those decisions that the abovementioned office found that the relevant Bulgarian public would understand the meaning of the word ‘pay’, which is descriptive. However, in so far as those decisions were given in proceedings relating to the application of absolute grounds for refusal concerning the registration in Bulgaria of marks containing the element ‘pay’ and in so far as it was sufficient that the absolute ground for refusal concerns only a part of the Bulgarian population, the Court does not consider that the abovementioned decisions support the applicant’s argument that the relevant Bulgarian public, as a whole, would understand the meaning of the word ‘pay’.
57      In any event, it must be noted that the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities in similar circumstances (see, to that effect, judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
58      In the light of the foregoing considerations, the applicant’s first complaint must be rejected.
59      As regards the applicant’s second complaint (see paragraph 50 above), it is unfounded in so far as the Board of Appeal concluded, in paragraph 90 of the contested decision, that the letter ‘g’ of the mark applied for would be perceived by the relevant public as being meaningless and therefore has an average degree of distinctiveness in relation to the goods and services in question. The applicant has not explained why the Board of Appeal should have found that that letter had a high, and not merely an average, degree of distinctiveness. Furthermore, in view of the fact that the mark applied for is a word mark, therefore necessarily written in a standard font, the Court does not share the applicant’s argument that the letter ‘g’ is the dominant element of the mark applied for, namely the visually striking element of that mark. The applicant has also not challenged in a specific and precise manner the assessment set out in paragraph 83 of the contested decision (see paragraph 38 above).
60      In the light of the foregoing considerations, it must be concluded that the Board of Appeal’s assessment regarding the distinctive and dominant elements of the marks at issue is not vitiated by error.
The visual, aural and conceptual similarities of the signs at issue
61      The Board of Appeal found, in paragraph 93 of the contested decision, that, visually, the signs at issue are of the same length, namely four letters, that those signs coincide in their last three letters (‘p’, ‘a’ and ‘y’) and that the initial letter ‘g’ of the mark applied for resembles the lower-case letter ‘e’ of the earlier mark. The Board of Appeal also found that, for the relevant public understanding the word ‘pay’, the signs have the same structure, namely that of a single (similar) letter followed by that word ‘pay’.
62      Thus, in paragraph 95 of the contested decision, the Board of Appeal concluded that the signs at issue are visually similar to an average degree.
63      The Board of Appeal found, in paragraph 96 of the contested decision, that, aurally, the sound of the earlier mark is fully incorporated into the mark applied for, with the exception of the different consonant ‘g’ at the beginning of the latter mark. According to the Board of Appeal, that finding concerns both the substantial part of consumers who would recognise the English word ‘pay’ and the remaining part of the relevant public.
64      The Board of Appeal thus concluded, in paragraph 97 of the contested decision, that the signs at issue are aurally similar to an average degree.
65      The Board of Appeal found, in paragraph 98 of the contested decision, that, conceptually, the signs at issue will be understood, by a non-negligible part of the Bulgarian public who have a basic knowledge of English, as referring to payments. Those signs differ for consumers who see the letter ‘e’ of the earlier mark as being a reference to ‘electronic’.
66      Thus, the Board of Appeal concluded, in paragraph 99 of the contested decision, that, for that part of the public, the signs at issue are conceptually similar to a low degree.
67      Furthermore, in paragraph 100 of the contested decision, the Board of Appeal found that, for Bulgarian consumers who do not speak English and therefore do not understand the words, the signs at issue do not have a common concept.
68      The applicant disputes the Board of Appeal’s assessment relating to the visual and aural similarity of the signs at issue. It submits that the Board of Appeal did not take sufficient account of the fact that the word ‘pay’, incorporated into the signs at issue, will have a very low impact on the similarity of those signs on account of it being purely descriptive.
69      The applicant submits that the Board of Appeal’s assessment that the signs at issue are visually and aurally similar to an average degree is vitiated by an error of assessment in so far as it was wrong to consider that the word ‘pay’ attracts more attention than the different initial letters ‘e’ and ‘g’ of the signs at issue. Furthermore, the Board of Appeal did not take sufficient account of the distinctive, or even dominant, character of the letter ‘g’ in the visual and aural comparison of the signs at issue.
70      In that regard, it should be noted that the applicant’s line of argument set out in paragraph 68 above is based on the premiss that the whole of the relevant Bulgarian public would understand the meaning of the word ‘pay’, with the result that that word is purely descriptive of the goods and services in question. As already stated in paragraphs 51 to 58 above, the applicant has not demonstrated that that premiss is well founded.
71      Next, as regards the applicant’s argument set out in paragraph 69 above, it should be noted that, contrary to the applicant’s assertion, the Board of Appeal did not find that the word ‘pay’ would attract more attention than the different initial letters ‘e’ and ‘g’ of the signs at issue. In paragraph 94 of the contested decision, the Board of Appeal merely referred to the settled case-law of the General Court, which emphasises the importance of the principle that the assessment of the similarity of marks must take account of the overall impression given by them (judgments of 8 September 2010, Quinta do Portal v OHIM – Vallegre (PORTO ALEGRE), T‑369/09, not published, EU:T:2010:362, paragraph 29; of 6 June 2018, Uponor Innovation v EUIPO – Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 63; and of 20 January 2021, 12seasons v EUIPO – Société immobilière et mobilière de Montagny (BE EDGY BERLIN), T‑329/19, not published, EU:T:2021:22, paragraph 36).
72      Furthermore, as regards the applicant’s argument relating to the significant distinctive, or even dominant, role of the letter ‘g’ at the beginning of the mark applied for, that argument must be rejected for the reasons set out in paragraph 59 above.
73      It follows from the considerations set out in paragraphs 70 to 72 above that the applicant’s line of argument does not demonstrate that the Board of Appeal erred in its assessment of the visual and aural similarity of the signs at issue, since the Board of Appeal took into account and examined the entirety of those signs without ignoring any of the elements of which they consist. There is, therefore, no need to call that assessment into question. Nor is there any need to call into question the Board of Appeal’s assessment concerning the conceptual similarity of the signs at issue, since the applicant has not disputed it.
The likelihood of confusion
74      The 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).
75      As follows from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous factors, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer,
C‑342/97, EU:C:1999:323, paragraph 20).
76      In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 22).
77      The Board of Appeal found, in paragraph 106 of the contested decision, that, for the English-speaking part of the Bulgarian public, who will distinguish the element ‘pay’ and will understand the letter ‘e’ as being a reference to ‘electronic’, the earlier mark, as a whole, has only a low degree of inherent distinctiveness.
78      For the remaining part of the Bulgarian public, namely consumers who do not have a basic knowledge of English and who would regard the element ‘pay’ as a meaningless term, the Board of Appeal concluded, in paragraph 107 of the contested decision, that the earlier mark has an average degree of inherent distinctiveness.
79      That being so, in paragraph 110 of the contested decision, the Board of Appeal, after assessing the evidence submitted by the intervener relating to the use of the earlier mark in Bulgaria, found that that mark enjoyed a high degree of recognition among the relevant public in Bulgaria, who would be able to identify the electronic payment services as being provided by the intervener. The Board of Appeal thus concluded that the earlier mark had enhanced its distinctiveness for the English-speaking part of the public. For that part of the public, the distinctiveness of the earlier mark must be considered to be average for electronic payment services.
80      For the non-English-speaking part of the relevant Bulgarian public, the Board of Appeal found, in paragraph 111 of the contested decision, that the distinctiveness of the earlier mark had to be considered to be high in view of the degree of inherent distinctiveness and the enhanced distinctiveness acquired through use.
81      In the light of the abovementioned findings relating to the distinctiveness of the earlier mark and those relating to the similarity of the goods and signs, the Board of Appeal concluded, in paragraphs 114 to 120 of the contested decision, that there was a likelihood of confusion between the marks at issue, which included the likelihood of association.
82      In the first place, the applicant submits that the Board of Appeal erred in its assessment of the distinctiveness of the earlier mark. According to the applicant, the degree of inherent distinctiveness of that mark is not low, but very low, and the attribution to it of an enhanced degree of distinctiveness on the basis of evidence of its reputation grants it an excessive and unjustified protection, with the result that the intervener is entitled to monopolise the purely descriptive term ‘pay’ for electronic payment services.
83      In the second place, the applicant submits that the Board of Appeal erred in finding that the difference between the respective initial letters of the signs at issue is not sufficient to offset the common element between the signs, namely ‘pay’, which is purely descriptive of the goods and services in question. The applicant submits that the letter ‘g’, placed at the beginning of the mark applied for, plays, notwithstanding the length of the element ‘pay’, a decisive role for the purposes of the determination of the commercial origin of the goods and services covered by the mark applied for.
84      In that regard, it must be noted that the applicant’s line of argument set out in paragraphs 82 and 83 above is again based on the premiss that the whole of the relevant Bulgarian public would understand the meaning of the word ‘pay’, with the result that, in the applicant’s view, that word is descriptive of the goods and services in question and has only a minimal degree of distinctiveness.
85      That premiss is unfounded. As already noted in paragraphs 51 to 58 above, the applicant has not succeeded in demonstrating that the Board of Appeal had erred in finding, in paragraph 88 of the contested decision, that a non-negligible part of the relevant Bulgarian public would not understand the meaning of the word ‘pay’, with the result that that word is distinctive. Therefore, by basing its argument on that incorrect premiss, the applicant has not succeeded in calling into question the Board of Appeal’s finding, in paragraph 111 of the contested decision, that, for that part of the relevant Bulgarian public, the earlier mark enjoys an average degree of inherent distinctiveness, which becomes even higher on account of the widespread use of that mark in Bulgaria.
86      Since the applicant has not succeeded in calling into question the Board of Appeal’s assessment regarding the inherent distinctiveness of the earlier mark for a non-negligible part of the relevant Bulgarian public, it is necessary to uphold the Board of Appeal’s finding, in paragraph 120 of the contested decision, relating to the existence of a likelihood of confusion concerning that part of the relevant Bulgarian public, which is sufficient to uphold the opposition (see judgment of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraph 50 and the case-law cited).
87      In accordance with the case-law cited in paragraphs 74 and 75 above, the Board of Appeal took into account all the relevant factors in order to reach the abovementioned conclusion, since those factors relate not only to the distinctiveness of the earlier mark but also to the similarity of the goods and services concerned and to the similarity of the signs at issue. In that context, it is necessary to reject the applicant’s argument that the letter ‘g’ at the beginning of the mark applied for is sufficient to rule out the likelihood of confusion between the marks at issue, which have in common, in particular, three of the four letters of which they are composed.
88      Furthermore, it must be noted that, in so far as the Board of Appeal’s conclusion relating to the existence of a likelihood of confusion is based, inter alia, on the finding that the term ‘pay’, included in the marks at issue, was distinctive for a non-negligible part of the relevant Bulgarian public (thus contributing to the inherent distinctiveness of the earlier mark for that part of the relevant public), that conclusion is not inconsistent with the judgments of the General Court, relied on by both the applicant and EUIPO, in which a likelihood of confusion was ruled out on account, in essence, of the fact that the similarities between the marks at issue resulted solely from elements that were weakly distinctive or descriptive.
89      In the light of all the foregoing considerations, the single plea in law relied on by the applicant must be rejected. The action must, therefore, be dismissed.
Costs
90      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.
91      Since the applicant has been unsuccessful and a hearing has taken place, it must be ordered to pay the costs relating to the present proceedings before the Court, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Google LLC to pay the costs.
Kowalik-Bańczyk
Buttigieg
Dimitrakopoulos
Delivered in open court in Luxembourg on 12 June 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.