adp Gauselmann v EUIPO - Gameloft (GAMELAND) (EU trade mark - Judgment) [2021] EUECJ T-17/20 (02 June 2021)

Judgment I. Background to the dispute On 4 August 2016, the applicant, adp Gauselmann GmbH, 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)). Registration as a mark was sought for the following figurative sign. The services in respect of which registration was sought are, after the restriction made in the course of the proceedings before EUIPO, in Classes 38, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: – Class 38: ‘Transmission, forwarding and supplying of data and other information and images for others’; – Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; rental of automatic slot machines and entertainment machines for casinos; arranging and conducting of games; gambling; operating of lotteries; operating games on the Internet, including online and being applications for smartphones; on-line games (over the Internet); provision of entertainment and/or educational content for apps for mobile devices and computers; conducting quizzes by means of smartphone applications; providing casino facilities (gambling), betting offices; operating gaming establishments, arcades and/or online Internet casinos and betting platforms; gambling services via the Internet; recreation facilities (providing -)’; – Class 42: ‘Development and rental of computers and data processing equipment; technical consultancy with regard to the use of automatic machines, computers, data processing equipment, alarms and monitoring installations; computer programming; database services, namely compilation, storage, updating and analysis of data; providing of electronic memory space for data, programs, information, sound and images; data processing for others; design, namely furnishing and decoration of business spaces for others, in particular for pubs and venues, including planning and technical and design consultancy’. The trade mark application was published in European Union Trade Marks Bulletin No 2016/248 of 30 December 2016. On 13 January 2017, the intervener, Gameloft SE, 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. The opposition was based on the earlier EU word mark Gameloft, registered on 13 December 2006 under number 002473767, covering, inter alia, goods and services in Classes 9, 35, 38, 41 and 42 and corresponding, for each of those classes, to the following description: – Class 9: ‘Apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, microcomputer games, video games’; – Class 35: ‘Telecommunications, electronic mail, storage and transmission of messages, conference services accessible via electronic networks or other means of online communication, online communication services’; – Class 38: ‘Telecommunications, communications by computer terminals, radio broadcasting, communications by telegraph, communications by telephone, digital communications for digital or interactive television; telecommunications via the Internet, Intranet, Internet for and by means of mobile phones, by means of digital, satellite, cable and terrestrial networks, transmission of data transmission information, services enabling persons to send or receive computer information, programs, files or data; services enabling or participating in radio and television broadcasting, both interactive and non-interactive; wireless telephony, broadcasting and transmission of video games to and from a mobile telephone, a digital personal assistant (organiser) or a computer, digital or analogue decoders providing access to a site or portal after connection to the Internet, connection to a telecommunications network to download video games, interactive scripts and videography by telecommunications networks, electronic mail’; – Class 41: ‘Education and entertainment’; – Class 42: ‘Access and leasing access time to video games via a telecommunications network and for a server, including the Internet and cable, satellite or terrestrial television networks; leasing access time to telecommunications networks and Internet sites and digital or analogue or interactive television; computer programming and computer programs, peripherals, smart cards, Internet, intranet and Internet for mobile telephones, computers and digital or analogue television decoders; design and production of games for digital or analogue television decoders, for mobile telephones, for digital personal assistants (organisers) or for computers’. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). Following the request made by the applicant, EUIPO asked the intervener to provide, pursuant to Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), proof of genuine use of the earlier mark relied on in support of the opposition in respect of all the goods and services for which it was registered and on which the opposition was based. The intervener complied with that request within the prescribed period. On 26 October 2018, the Opposition Division granted the opposition in respect of the services referred to in paragraph 3 above, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. On 18 December 2018, 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. By decision of 5 November 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First, it found that the evidence adduced by the applicant in the opposition proceedings and taken as a whole was sufficient to establish genuine use of the earlier mark as regards ‘microcomputer games, video games’ in Class 9 and ‘entertainment’ in Class 41. Second, it found that, in the light of the enhanced distinctiveness acquired through the use of the earlier mark, a significant part of the relevant public will take the view that the services at issue, which are identical or similar, come from the same undertaking or, at the very least, from economically linked undertakings. According to the Board of Appeal, the differences between the signs at issue are not capable of precluding the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. II. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – grant the application for registration; – order EUIPO and the intervener to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs. III. Law A. Determination of the applicable regulation ratione temporis In the light of the date of the application for registration at issue, in the present case, 4 August 2016, which is decisive for the purposes of identifying the applicable substantive law, the present dispute is governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 2 and the case-law cited). Furthermore, since, in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain , C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001. Accordingly, in this case, as regards substantive rules, the references to Article 8(1)(b) of Regulation 2017/1001 made by the Board of Appeal and the parties in their written pleadings must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, which is identical in content. B. Restriction of the services covered by the mark applied for By its application lodged at the Court Registry on 23 September 2020, the applicant requested that the proceedings be stayed on the ground that, on 22 September 2020, it filed with EUIPO an application for registration restricting the list of services covered by the mark applied for (‘the restriction of services’), so that registration of that mark was now sought in respect of the services in Classes 38, 41 and 42 corresponding to the following description: – Class 38: ‘Transmission, forwarding and supplying of data and other information and images for others related to automatic machines’; – Class 41: ‘Education related to automatic machines; providing of training related to automatic machines; entertainment related to automatic machines; sporting and cultural activities related to automatic machines; rental of automatic slot machines and entertainment machines for casinos related to automatic machines; arranging and conducting of games related to automatic machines; gambling related to automatic machines; operating of lotteries related to automatic machines; operating games on the Internet, including online and being applications for smartphones related to automatic machines; on-line games (over the Internet) related to automatic machines; provision of entertainment and/or educational content for apps for mobile devices and computers related to automatic machines; conducting quizzes by means of smartphone applications related to automatic machines; providing casino facilities (gambling), betting offices related to automatic machines; operating gaming establishments, arcades and/or online Internet casinos and betting platforms related to automatic machines; gambling services via the Internet related to automatic machines; recreation facilities (providing -) related to automatic machines’; – Class 42: ‘Development and rental of computers and data processing equipment related to automatic machines; technical consultancy with regard to the use of automatic machines, computers related to automatic machines, data processing equipment related to automatic machines, alarms and monitoring installations; computer programming with regard to the use of automatic machines; database services with regard to the use of automatic machines, namely compilation, storage, updating and analysis of data related to automatic machines; providing of electronic memory space for data, programs, information, sound and images with regard to the use of automatic machines; data processing for others with regard to the use of automatic machines; design, namely furnishing and decoration of business spaces for others, in particular for pubs and venues, including planning and technical and design consultancy’. In its observations, dated 8 October 2020, on the request for a stay of the proceedings of the applicant, first, EUIPO stated that the restriction of services had been accepted and that the list of services in Classes 38, 41 and 42, covered by the mark applied for, corresponded to the description set out in the previous paragraph. Second, it stated that that restriction changed the subject matter of the dispute before the Board of Appeal and therefore could not be taken into account in the action. The Court requested the applicant and the intervener to submit observations in that regard by way of a measure of organisation of procedure. In response to the measure of organisation of procedure, the applicant submits, contrary to EUIPO, that the restriction of services does not change the subject matter of the dispute in that the restriction of the list of services was carried out in such a way as to make that list more precise, without, however, limiting the scope of the trade mark application. The intervener and EUIPO take the view, in essence, that the restriction of services was possible, but that it cannot be taken into consideration by the Court in its review of the legality of the contested decision, which must be examined exclusively in the light of the initial list of services. More specifically, EUIPO submits that the new list of services referred to in the trade mark application, in Class 38, that is to say, the services of ‘transmission, forwarding and supplying of data and other information and images for others related to automatic machines’, changed the factual context initially presented before the Board of Appeal, which led the Board of Appeal to decide, in paragraph 83 of the contested decision, that the services in Class 38 and covered by the mark applied for (‘transmission, forwarding and supplying of data and other information and images for others’) were similar to the ‘video games’ in Class 9 covered by the earlier mark. It should be borne in mind that, under Article 49(1) of Regulation 2017/1001, the applicant may at any time withdraw its application for an EU trade mark or restrict the list of goods or services contained therein. Where the application has already been published, the withdrawal or restriction shall also be published. In accordance with settled case-law, for reasons of procedural economy, the Court may take account of a restriction of the goods and services covered in the trade mark application on condition that that restriction is not such as to change the factual context to which the Board of Appeal’s examination related as regards the goods or services not affected by that restriction. Thus, a restriction carried out in accordance with Article 49(1) of Regulation 2017/1001 subsequent to the adoption of the contested decision may be taken into consideration by the Court where the applicant for the trade mark limits itself strictly to reducing the subject matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application. Since the Board of Appeal must assess the likelihood of confusion in relation to each of the goods and services in respect of which the EU trade mark has been applied for, the mere withdrawal of one or more categories of goods and services from the list in respect of which the trade mark application is filed is not, in principle, capable of changing the factual context to which the Board of Appeal’s examination related as regards the goods and services not affected by that restriction (see judgment of 30 April 2015, Tecalan v OHIM – Ensinger (TECALAN) , T‑100/14, not published, EU:T:2015:251 , paragraph 31 and the case-law cited). Where, on the other hand, that restriction leads to a change in the subject matter of the dispute, in that it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the contested decision, it may not, in principle, be taken into account by the Court. Such is the case where the restriction of the goods and services consists in specifications capable of influencing the assessment of the similarity of the goods and services or the determination of the target public and of changing, consequently, the factual context presented before the Board of Appeal (see, to that effect, judgment of 30 April 2015, TECALAN , T‑100/14, not published, EU:T:2015:251 , paragraph 32 and the case-law cited). In the present case, it should be noted that the restriction of services consisted of the addition of the specification ‘related to automatic machines’ to the list of services covered by the mark applied for. In this respect, as EUIPO rightly observed (see paragraph 20 above), it must be held that, first, that specification is capable of influencing the assessment of the similarity of the goods and services and, second, it could have the effect of changing the composition of the relevant public. Consequently, it should be noted that that restriction changes the factual context which was presented before the Board of Appeal. Accordingly, the restriction of services sought by the applicant results in a change in the subject matter of the dispute, so that it must be rejected as being inadmissible. C. Substance In support of its action, the applicant raises, in essence, two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, an error of assessment by the Board of Appeal concerning proof of genuine use of the earlier mark. It is appropriate to examine, first of all, the second plea. 1. The second plea in law, alleging an error of assessment by the Board of Appeal concerning proof of genuine use of the earlier mark In the context of that plea, the applicant submits, in essence, that the intervener has not demonstrated genuine use of the earlier mark with regard to the goods and services in respect of which it is registered. First, it claims that the evidence adduced relates to publishing services of multimedia entertainment software in respect of which the earlier mark is not registered and which, according to the TMclass database, are not included in the ‘education and entertainment’ services in Class 41 covered by the earlier mark. Second, it submits that the general public is not in a position to associate the ‘video games’ in Class 9 with the earlier mark since it will understand that it is a publisher of video games which manages its activity under such a name. EUIPO and the intervener dispute the arguments of the applicant and refer, in essence, to the statement of reasons in the contested decision. In the first place, as regards the applicant’s argument that the evidence adduced demonstrates the use of the earlier mark only in respect of the publishing services of multimedia entertainment software, which do not form part of the ‘education and entertainment’ services covered by that mark, it should be pointed out, as the Board of Appeal noted, that the intervener also develops, publishes and provides video games which can be played online and which constitute a subcategory of the entertainment services in Class 41 which the applicant claims. Furthermore, it should be noted, as EUIPO and the intervener assert, as regards the reference made by the applicant to the classification tool for goods and services TMclass, and as indicated moreover in the specifications for that tool, it is not part of the Nice classification system and has no legal effect on trade mark examination or the comparison of goods and services (judgment of 30 September 2015, Gat Microencapsulation v OHIM – BASF (KARIS) , T‑720/13, not published, EU:T:2015:735 , paragraph 44). The applicant’s line of argument in relation to that categorisation tool thus cannot be reasonably upheld. In the second place, as regards the applicant’s claim that the sign Gameloft refers to the company name of the intervener and not to the earlier mark, it should be borne in mind that, when a word mark, as in this case, is also a company name, it is possible for the company name to be used as a trade mark (see, to that effect, judgment of 15 July 2015, Cactus v OHIM – Del Rio Rodríguez (CACTUS OF PEACE CACTUS DE LA PAZ) , T‑24/13, not published, EU:T:2015:494 , paragraph 62 and the case-law cited). However, it is apparent from the case-law that the purpose of a company name is to identify a company and is not, of itself, to distinguish goods or services. Accordingly, there is use in relation to goods or services where a third party affixes the sign constituting its company name to the goods which it markets or, even where the sign is not affixed, where the third party uses that sign in such a way that a link is established between the sign which constitutes the company of the third party and the goods marketed or the services provided by the third party (see, to that effect, judgment of 11 September 2007, Céline , C‑17/06, EU:C:2007:497 , paragraphs 21 to 23). In this case, first of all, the Board of Appeal rightly noted that, while it is true that the games offered by the intervener bear names which refer to certain specific characters or indicate the topic of a game, the fact remains that, on the website of the intervener and on ranking websites and online app stores, the sign Gameloft was displayed in proximity to the designation of those video games or apps. That fact is capable of demonstrating that a link is established between that sign and the goods marketed or the services provided by the intervener, for the purposes of the case-law referred to in the previous paragraph, and therefore that that sign is used as a mark. It follows from the foregoing that the second plea in law must be rejected. 2. The first plea, concerning infringement of Article 8 (1)(b) of Regulation No 2 07/2009 The applicant alleges that the Board of Appeal erred in finding that there was a likelihood of confusion, infringing Article 8(1)(b) of Regulation No 207/2009. (a) Preliminary observations Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. In accordance with settled case-law, the risk that the public might believe that the goods or services at issue come from the same undertaking or, where appropriate, from economically linked undertakings, constitutes a likelihood of confusion. In accordance with the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services at issue 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). For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two 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). Where the protection of the earlier trade mark extends to the whole 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 at issue in that territory. However, it must be borne in mind that, in order for registration of an EU trade mark to be refused, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the 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). It should also be borne in mind that, according to the case-law, where a trade mark is composed of word and figurative elements, the word elements of the mark are, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the product at issue by quoting the word element (see judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco) , T‑498/18, EU:T:2019:763, paragraph 78 and the case-law cited). It is in the light of the abovementioned principles that the present plea must be examined. (b) The relevant public In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. Account should also be taken of the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services at issue (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). Furthermore, that assessment of the likelihood of confusion must be made in relation to the perception of the part of the public with the lowest level of attention, since it will be more prone to confusion (see, to that effect, judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS) , T‑247/12, EU:T:2014:258, paragraph 29). In this case, the Board of Appeal found, in paragraphs 74, 78 and 79 of the contested decision, that, as regards the goods and services in Classes 9 and 41 and the other services in Classes 38 and 42, the relevant public consisted of both the general public and professionals in the territory of the Union, displaying a level of attention which may vary from average to high. In addition, on the basis of the English words used, the Board of Appeal took account of the understanding of the signs by the English-speaking part of that public. As regards ‘computer programming [and] database services, namely compilation, storage, updating and analysis of data’, the Board of Appeal found that those services were addressed to a professional public displaying an average level of attention. That assessment was not disputed by the parties. (c) Comparison of the goods and services at issue The Board of Appeal found, in essence, that the services in Classes 38, 41 and 42 covered by the application for registration were either identical or similar, some of which were similar to a low degree to the goods in Class 9 and the services in Class 41 covered by the earlier mark. That assessment by the Board of Appeal was not disputed by the parties. (d) Comparison of the conflicting signs The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those 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 at issue plays a decisive role in the global appreciation of that likelihood of confusion. In this 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). Furthermore, it should be noted that the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see, to that effect, judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus) , T‑103/16, not published, EU:T:2017:605 , paragraph 47 and the case-law cited). The applicant disputes the assessment carried out by the Board of Appeal in relation to the distinctiveness of the elements making up the marks at issue. In accordance with the case-law referred to in paragraph 46 above, it is necessary to examine the arguments of the applicant relating to that question before making a visual, phonetic and conceptual comparison of the signs at issue. The Board of Appeal found, first, that the earlier mark consisted of the word element ‘gameloft’ and, second, that the mark applied for consisted of the word element ‘gameland’ in stylised letters of different colours and of a figurative element representing a smiling sun. (1) The distinctive and dominant elements of the signs at issue 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 at issue 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 (judgments of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 42, and of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 42). That may be the case, in particular, where that component is capable, on its own, of dominating the image of that mark which the relevant public will keep in memory, so that all the other components of the mark 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). As to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) , T‑6/01, EU:T:2002:261 , paragraph 35). In this case, first of all, the Board of Appeal rightly noted that the earlier mark consisted of the word ‘gameloft’ and that the mark applied for consisted of the word element ‘gameland’, represented in slightly stylised capital letters in green, orange, yellow and red, and the stylised image of a smiling sun positioned above the word element. Next, the Board of Appeal found, on the basis of the online Collins Dictionary, that the word element ‘game’, which is common to the signs at issue, would be understood by the relevant public as being ‘an activity or sport usually involving skill, knowledge, or chance, in which you follow fixed rules and try to win against an opponent or to solve a puzzle’. It adds that the word ‘game’ indicates directly the purpose, nature or subject matter of all the goods and services at issue and, therefore, it must be regarded as non-distinctive in relation to those goods and services. Next, as regards, in particular, the earlier mark, it noted that it was made up of the terms ‘game’ and ‘loft’, the latter having the meaning, according to that dictionary, of ‘the space inside a roof’ or ‘an apartment in the upper part of a building such as a warehouse or factory that has been converted for people to live in’. According to the Board of Appeal, that sign is understood, as a whole, as a loft for games, that is to say, a place indoors where a game is played. The Board of Appeal therefore found that the earlier mark was of limited inherent distinctiveness since it referred to the nature and purpose of the goods and services concerned. That aspect did not preclude a subsequent finding of its enhanced distinctiveness acquired through use. As regards the mark applied for, the Board of Appeal found that its word element was made up of the terms ‘game’ and ‘land’, the latter having the meaning, according to that dictionary, of ‘the part of the world that consists of ground, rather than sea or air’ or, alternatively, ‘a country in a poetic or emotional way’. Therefore, the word element ‘gameland’ would be understood as a land, a large space where games are played. It inferred from this that the word element of the mark applied for had limited distinctiveness in that it referred to the nature and purpose of the services at issue. Furthermore, the Board of Appeal found that the relevant public would perceive the slight stylisation and the various coloured letters of the mark applied for as a mere decorative momentum without any distinctiveness. Next, it found that the stylised representation of a smiling sun was a common element to indicate enjoyment, pleasure and a positive aura or a positive feeling in general, which should be regarded as having limited distinctiveness. Lastly, the Board of Appeal found that the word element ‘gameland’ of the mark applied for produced an overall impression that was stronger than the figurative elements. First, the applicant claims that, contrary to what the Board of Appeal found, the figurative element represented by a smiling sun has distinctiveness since it does not refer to the concept of enjoyment. Relying on previous decisions of EUIPO, it submits that the presence of a smiling sun does not make it possible to designate the quality, feature, origin or any other characteristic of the telecommunications services in Class 38 in relation to those relating to education, sport and culture, in Class 41, and to computer services in Class 42. Second, the applicant submits that the word element ‘game’ should not be taken into account in the comparison of the signs in respect of the goods in Class 9 and the services in Class 41. According to the applicant, that element, despite being in the first part of the sign, will not attract the attention of the relevant public, who will perceive it as descriptive of those goods and services. As regards the telecommunication services in Class 38, some of the services in Class 41 and all the services in Class 42, the applicant takes the view that that element has distinctiveness. Third and last, the applicant takes the view that the term ‘loft’ in the earlier mark and the word ‘land’ in the mark applied for constitute the distinctive and dominant elements of those marks. EUIPO and the intervener dispute the arguments of the applicant. In the first place, the Board of Appeal was right to find that, first, the word element of the mark applied for would have a greater influence on the perception of the relevant public than its figurative element consisting of a smiling sun and, second, even if it were not negligible in the overall impression created by the earlier mark, it would simply be perceived as a decorative element. Accordingly, it must be held, as the Board of Appeal found, that the distinctiveness of that figurative element is low. Furthermore, in so far as the applicant bases its arguments on previous decisions of EUIPO, it should be borne in mind that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (see judgments of 26 April 2007, Alcon v OHIM , C‑412/05 P, EU:C:2007:252 , paragraph 65 and the case-law cited, and of 12 April 2016, Auyantepui Corp. v EUIPO – Magda Rose (Mr Jones) , T‑8/15, not published, EU:T:2016:213 , paragraph 48 and the case-law cited). In the second place, as regards the argument of the applicant that the word element ‘game’, which is common to the signs at issue, is descriptive and therefore devoid of distinctiveness, it should be borne in mind that, in accordance with the case-law, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character (see 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). It should be noted that, in accordance with the case-law referred to in the previous paragraph, the word element ‘game’, despite its low distinctiveness, is not negligible in the impression created by the signs at issue and must be taken into account in the comparison of the signs. Lastly, as regards the distinctiveness of the word elements ‘loft’ in the earlier mark and ‘land’ in the mark applied for, it must be held, as the Board of Appeal found in paragraph 95 of the contested decision, that the former of those two terms would be understood by consumers who understand English and, according to the online Collins Dictionary, as a ‘the space inside a roof’ or ‘an apartment in the upper part of a building such as a warehouse or factory that has been converted for people to live in’ and the latter as ‘the part of the world that consists of ground, rather than sea or air’ or, alternatively, ‘a country in a poetic or emotional way’. It follows that the word elements ‘loft’ and ‘land’ have average distinctiveness in respect of the goods and services at issue. It is in the light of the foregoing considerations that it is necessary to examine whether the visual, phonetic and conceptual comparison of the marks at issue carried out by the Board of Appeal is vitiated by errors. (2) Visual similarity The Board of Appeal found that the marks at issue coincided in their first five letters, ‘g’, ‘a’, ‘m’, ‘e’ and ‘l’, but differed in their endings, ‘oft’ in respect of the earlier mark and ‘and’ in respect of the mark applied for, and the stylisation of the mark applied for. The Board of Appeal therefore found, as the Opposition Division did, that the signs at issue were visually similar to an average degree. The applicant does not expressly set out a conclusion on the visual comparison and merely states, in essence, first, that the signs at issue differ essentially by the presence of a humanised sun and stylised letters in the mark applied for and, second, that the words ‘loft’ and ‘land’ are elements which are sufficiently different to rule out any likelihood of confusion. EUIPO and the intervener dispute the arguments of the applicant. It must be stated that each sign consists of word elements formed of two words joined together, the former of which is identical in both signs, namely ‘game’, and the latter is the word ‘loft’ in the earlier mark and ‘land’ in the mark applied for, which both begin with the letter ‘l’. In addition, the identical sequence of the first five letters ‘g’, ‘a’, ‘m’, ‘e’, ‘l’, placed at the beginning of both marks, and the fact that those word elements consist of the same number of letters, as the intervener rightly noted, introduce elements of visual similarity between the signs at issue. The difference resulting from the presence of the smiling sun and the stylisation of the letters of the mark applied for makes it possible to establish, as the Board of Appeal rightly noted, that there is average visual similarity between those signs. (3) Phonetic similarity The Board of Appeal found that, phonetically, the signs coincided in the identical sequence of letters ‘g’, ‘a’, ‘m’, ‘e’ and ‘l’, that the respective last letters of the marks at issue, ‘t’ and ‘d’, created a similar sound, that the vowels and consonants composing the word elements at issue were similar and that they were pronounced in two syllables. The Board of Appeal adds that the signs differ only in the sound of their respective groups of letters ‘of’ and ‘an’, with the result that the signs at issue have a degree of phonetic similarity ‘above average’. That assessment has not been contested by the parties. (4) Conceptual similarity Conceptually, the Board of Appeal noted that the signs at issue, taken as a whole, referred to an identical concept, namely ‘a certain place or space, where a game is played’ and that, in view of the distinctiveness of their elements, they were conceptually similar to an average degree. The applicant, for its part, claims that the words ‘loft’ and ‘land’ are conceptually different in that the former refers to an indoor space, built for a human in the upper part of a building, while the latter refers an open natural ground in the natural area. EUIPO and the intervener dispute the arguments of the applicant. It is therefore necessary to examine whether the Board of Appeal was right to find that the signs at issue were conceptually similar to a low degree. It should be noted, as the Board of Appeal correctly found, that the marks at issue refer to the concept of gambling because of their common element ‘game’. In addition, the terms ‘loft’ and ‘land’ will immediately be understood by a significant part of the relevant public as conveying a clear and similar meaning, namely place or space, where a game is played. Accordingly, they refer to the same concept. As regards the figurative element of the mark applied for representing a smiling sun, which has no equivalent in the earlier mark, it must be regarded, as stated in paragraph 60 above, as an essentially decorative element. Therefore, it must be held, as the Board of Appeal found, that the signs at issue are conceptually similar to an average degree. In the light of the foregoing, it must be held that the marks at issue are visually and conceptually similar to an average degree and phonetically similar to an above-average degree. (e) The likelihood of confusion A global assessment of the likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services covered 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). The Board of Appeal found, in paragraphs 108 and 115 of the contested decision, that, in view of the interdependence between the factors and, in particular, the enhanced distinctiveness acquired through the use of the earlier mark, there was reason to find that at least a non-negligible part of the relevant public, made up of average English-speaking consumers, could take the view that the identical and similar services at issue came from the same undertaking or, as the case may be, from economically linked undertakings. The applicant disputes the existence of a likelihood of confusion despite the presence of the common word element ‘game’ appearing at the beginning of the two marks at issue, since, first, that element is descriptive of the goods and services in Classes 9 and 41 covered by the earlier mark and, second, the distinctive elements ‘land’ and ‘loft’ are sufficiently different to exclude such a likelihood. EUIPO and the intervener dispute the applicant’s arguments. In that regard, it should be borne in mind that, in accordance with the case-law referred to in paragraphs 37, 43 and 75 above, the likelihood of confusion must be assessed globally, according to the perception of the relevant public, with the lowest level of attention, of the signs at issue and taking into account all of the factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods and services covered. Furthermore, it should be pointed out that the more distinctive the earlier mark – and the fact that the marks, which have enhanced distinctiveness, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character – the greater the likelihood of confusion (judgment of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 18). It follows from the considerations set out in paragraphs 42 to 76 above, first of all, that the relevant public displays a level of attention from average to high and that the goods and services at issue are either identical or similar, some of which are similar to a low degree. As regards the signs at issue, although they include, as the applicant claims, different terms, respectively ‘loft’ and ‘land’, they have an average visual and conceptual similarity and a phonetic similarity from average to high. Furthermore, the fact that the common word element ‘game’ of the signs at issue is weakly distinctive will be offset by the enhanced distinctiveness acquired through the use of the earlier mark. In those circumstances, having regard to the case-law referred to in paragraphs 79 to 81 above, the Board of Appeal was right to find that the relevant public with an average level of attention could take the view that the goods and services at issue come from the same undertaking or from economically linked undertakings, when sold under the marks at issue. Since the Board of Appeal was right to find that there was a likelihood of confusion, the first plea must be rejected, and therefore the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim requesting the Court to grant the EU mark applied for, since that head of claim depends on the success of the action for annulment being upheld, so that it is made only in the event that the first head of claim succeeds (see, to that effect, judgment of 27 February 2019, Aytekin v EUIPO – Dienne Salotti (Dienne) , T‑107/18, not published, EU:T:2019:114 , paragraph 84 and the case-law cited). Costs 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 (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders adp Gauselmann GmbH to pay the costs. Spielmann Spineanu-Matei Mastroianni Delivered in open court in Luxembourg on 2 June 2021. E. Coulon M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII