Biriu Kroviniu Terminalas v EUIPO - BTK (BKT) (EU trade mark - Judgment) [2024] EUECJ T-56/24 (04 December 2024)

Judgment By its action under Article 263 TFEU, the applicant, Birių Krovinių Terminalas UAB, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 December 2023 (Case R 637/2023-4) (‘the contested decision’). Background to the dispute On 6 April 2021, the applicant filed with EUIPO an application for registration of an EU trade mark in respect of the following figurative sign: The mark applied for covered a number of services in Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and relating, in particular, to the transport of persons and goods, especially by rail and sea. On 25 June 2021, the intervener, BTK Befrachtungs-und Transportkontor GmbH, filed a notice of opposition to registration of the mark applied for in respect of all the services covered by that mark. The opposition was based on international registration No 1 299 624 designating the European Union (‘the earlier mark’) for the word mark ‘BTK’, registered on 8 December 2015, designating, inter alia, various services in Class 39 and relating, in particular, to the transport of goods. The grounds relied on in support of the opposition were those 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). On 24 January 2023, the Opposition Division rejected the opposition in its entirety on the ground that, in its view, there was no likelihood of confusion. In that regard, for reasons of procedural economy, it did not carry out a full comparison of the services at issue, stating that that approach was the best for the opponent for the purpose of examining the opposition. Accordingly, it found that, even if the services at issue were identical, there was no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the ground, in essence, of the low degree of overall similarity of the signs at issue. On 24 March 2023, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal annulled the decision of the Opposition Division on the ground that it had made a number of errors of assessment in the comparison of the signs at issue. According to the Board of Appeal, the degree of similarity of those signs was such that it was necessary to carry out an examination of the degree of similarity between the services at issue in order to assess whether there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. For that purpose, in accordance with Article 71(1) of that regulation, it remitted the case to the Opposition Division for further prosecution. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – uphold the decision of the Opposition Division in its entirety; – order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs if a hearing is convened. The intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of the action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. 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. 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). 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). In the present case, the applicant claims, in essence, that the Board of Appeal made errors of assessment in the comparison of the signs at issue. In that regard, it puts forward four complaints, the first three of which, which should be examined together, concern the distinctive and dominant elements of the mark applied for, whereas the fourth concerns the visual, phonetic and conceptual comparison of those signs. The distinctive and dominant elements of the mark applied for According to the case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). 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). In the present case, the Board of Appeal stated, in paragraphs 30 to 34 of the contested decision, that the mark applied for was composed of the sequence of the three capital letters ‘BKT’, diagonally arranged, which appeared in the middle of two figurative elements, the one on the left side depicting part of a goods train and, the one on the right side, a ship’s hull with an anchor. According to the Board of Appeal, the colour scheme and stylisation were not particularly outstanding. It also found that the figurative elements of that mark were allusive to, if not descriptive of, an important part of the services covered by that mark, namely, in essence, transport services of persons and goods by rail and sea. Moreover, those figurative elements could be perceived as purely decorative at the very least by part of the relevant public. Accordingly, the Board of Appeal contends that, even though those figurative elements will not be completely disregarded, that public is unlikely to attribute a particular significance to them, because of either their limited degree of distinctive character, their position or their rather decorative role. It maintains that it is therefore the word element, meaningless for that public, which attracts the most attention and is likely, consequently, to be used by the relevant public for the purpose of identifying the commercial origin of the services at issue. The applicant submits, first of all, that the Board of Appeal erred in finding that the figurative elements of the mark applied for lacked distinctive character. According to the applicant, those figurative elements will not immediately be perceived as depicting, respectively, a train and a ship on account of their stylisation and unexpected composition, which depart from a true-to-life portrayal of the services at issue. Next, according to the applicant, the Board of Appeal erred in finding that the figurative elements of the mark applied for were purely decorative. It takes the view that those figurative elements cannot be assimilated to mere elementary lines, geometrical figures or ordinary lines, dots, underlines, or otherwise, which will be perceived as decorative elements playing a secondary role in that mark. Lastly, the applicant claims that the Board of Appeal erred in finding that the figurative elements of the mark applied for were not dominant. According to the applicant, even if those figurative elements did not have a strong distinctive character, they should nonetheless be regarded as being the dominant elements, or at the very least as one of the dominant elements in the overall impression conveyed by that mark, given that they occupy the major part of that mark and are larger than the word element ‘BKT’. EUIPO and the intervener dispute the applicant’s arguments. In the present case, the mark applied for is depicted as follows: It must be stated, as observed by the Board of Appeal, that the mark applied for is a figurative sign composed of a clearly perceptible word element, which consists of the sequence of the three capital letters ‘BKT’, diagonally arranged and positioned in the middle of that mark. To the left of the word element of the mark applied for is the depiction of part of a goods train and, to the right of that word element, a depiction of a ship’s hull, on which a smaller-sized anchor is positioned. That word element and those figurative elements each occupy a place of comparable size in that mark. The colour scheme is not particularly outstanding. In the first place, as regards the distinctive elements of the mark applied for, it should be recalled that, for the purpose of assessing 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 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 for which the mark has been registered (see judgment of 13 June 2006, Inex v OHIM - Wiseman (Representation of a cowhide) , T‑153/03, EU:T:2006:157 , paragraph 35 and the case-law cited). As a general rule, the public will not consider a descriptive element forming part of a complex mark to be the distinctive and dominant element in the overall impression conveyed by that mark (see judgment of 27 November 2007, Gateway v OHIM - Fujitsu Siemens Computers (ACTIVY Media Gateway) , T‑434/05, not published, EU:T:2007:359, paragraph 47 and the case-law cited). Again, in accordance with the case-law, where some elements are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, degree of distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM - Aceites del Sur (La Española) , T‑363/04, EU:T:2007:264 , paragraph 92, and of 13 December 2007, Cabrera Sánchez v OHIM - Industrias Cárnicas Valle (el charcutero artesano) , T‑242/06, not published, EU:T:2007:391 , paragraph 52 and the case-law cited). It should also be noted that, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM - Stroschein Gesundkost (SELENIUM-ACE) , T‑312/03, EU:T:2005:289 , paragraph 37; see, also, judgment of 8 July 2020, Scorify v EUIPO - Scor (SCORIFY) , T‑328/19, not published, EU:T:2020:311 , paragraph 58 and the case-law cited). In the present case, it is common ground that the word element ‘BKT’ of the mark applied for is meaningless for the relevant public, with the result that the Board of Appeal correctly found that that word element had a normal degree of distinctive character. As for the figurative elements of the mark applied for, depicting a goods train and a ship, the Board of Appeal was entitled to find, without making an error of assessment, that, from the point of view of the relevant public, those elements will be regarded as allusive to, if not descriptive of, an important part of the services covered by that mark, namely transport services of goods and persons by rail or sea. It is true that the mark applied for has, as the applicant submits, a certain stylisation. The fact remains, however, that the allusive or descriptive message conveyed by its figurative elements is not altered by that stylisation, in so far as that stylisation is not particularly striking, unexpected or far from a true-to-life portrayal. It follows that, unlike the word element of the mark applied for, the figurative elements of that mark have only a low degree of distinctive character. Moreover, as EUIPO and the intervener correctly contend, the applicant misreads the contested decision. The Board of Appeal did not find that the figurative elements of the mark applied for lacked distinctive character, but that that distinctive character was ‘limited’. The applicant also relies on a common communication of the EU trade mark offices, entitled ‘Common communication on the common practice of distinctiveness - Figurative marks containing descriptive/non-distinctive words ’, from which it follows that where the figurative element of a sign consists of a representation of the goods and services claimed, that representation is considered to be descriptive or devoid of distinctive character where it is either a true-to-life portrayal of the goods and services, or a symbolic or stylised portrayal of the goods and services that does not depart significantly from the common representation of those goods and services. Furthermore, even if a figurative element does not represent goods or services, it may still have a direct link with the characteristics of the goods or services, in which case the sign will be considered non-distinctive, unless it is sufficiently stylised. Without it being necessary to rule on the legal value of the common communication at issue, it is sufficient to refer to paragraphs 34 and 35 above, from which it follows that the stylisation of the figurative elements of the mark applied for is not particularly striking, unexpected or far from a true-to-life portrayal, with the result that, unlike the word element of that mark, those figurative elements have only a low degree of distinctive character. Therefore, the applicant’s argument based on that communication cannot succeed. In addition, the Board of Appeal also found that the figurative elements of the mark applied for could be perceived as purely decorative at the very least by part of the relevant public, which the applicant disputes. In that respect, it should be noted that, in the contested decision, the Board of Appeal’s assessment, according to which the word element ‘BKT’ of the mark applied for will attract the relevant public’s attention the most, because that public would not attribute a particular significance to the figurative elements of that mark, was based on two alternative grounds, namely, first, the low degree of distinctive character of those figurative elements on account of their allusive, if not descriptive, nature of an important part of the services covered, and, second, the decorative function of those figurative elements. Since the applicant’s arguments concerning that first ground have been rejected in paragraphs 32 to 38 above, that Board of Appeal could, without making an error, find, solely on the basis of that ground, that those figurative elements had only a low degree of distinctive character. In those circumstances, it is not necessary to examine whether such figurative elements are, moreover, purely decorative and, for that reason too, weakly distinctive. In the second place, as regards the applicant’s arguments that the figurative elements of the mark applied for are nonetheless dominant or, at the very least, co-dominant, it should be recalled that, in assessing the dominant character of one or more given components of a complex 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 that mark (judgment of 23 October 2002, Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) , T‑6/01, EU:T:2002:261 , paragraph 35). In that regard, contrary to what the applicant claims, the figurative elements of the mark applied for may not be regarded as being the dominant or co-dominant elements of that mark. First, the word element of that mark is clearly visible in the composition of that mark, in which it occupies a central position. In addition, that word element is highlighted not only by its positioning in the middle of that mark, but also by the fact that it is surrounded by those figurative elements, the stylisation of which is not particularly striking, unexpected or far from a true‑to‑life portrayal and which are not, therefore, likely to distract the relevant public’s attention from the word element in question. Second, according to the case-law cited in paragraph 29 above, the relevant public will not, as a general rule, consider a descriptive element forming part of a complex mark to be the distinctive and dominant element in the overall impression conveyed by that mark. That is the case here, in so far as, for the reasons stated in paragraphs 33 and 34 above, the figurative elements of the mark applied for will be perceived as being allusive to, if not descriptive of, an important part of the services covered by that mark, with the result that the relevant public will not regard them as being the dominant or co-dominant element of that mark. In the light of the foregoing, the first three complaints of the applicant’s single plea must be rejected. The comparison of the signs at issue In the first place, as regards the visual comparison of the signs at issue, the Board of Appeal noted, in paragraphs 35 to 41 of the contested decision, that the word element ‘BKT’ of the mark applied for and the word element ‘btk’ of which the earlier mark consists contained the same three letters and that they both began with the letter ‘b’, whereas the order in which the letters ‘k’ and ‘t’ appeared was reversed. Accordingly, it contends that, since the public’s attention, where the signs are short, is focused more on the initial part of those signs, and the stylisation and the depiction of the figurative elements are not sufficiently striking to reduce the visibility of the element ‘BKT’ in the mark applied for, the overall visual impression conveyed by those signs is similar to an average degree. The applicant claims that the Board of Appeal did not sufficiently take into account the figurative elements of the mark applied for. Moreover, it asserts that the differences between the word element ‘BKT’ of that mark and the word element ‘btk’ of which the earlier mark consists are significant, particularly as they are short word elements. Consequently, it submits that the signs at issue are visually similar to a very low degree. EUIPO and the intervener dispute the applicant’s arguments. In that respect, it must be pointed out, as observed by the Board of Appeal, that the word element ‘BKT’ of the mark applied for and the word element ‘btk’ of which the earlier mark consists are composed of three identical letters. Furthermore, those word elements begin with the same letter ‘b’. Their only dissimilarity is that the order in which the last two letters appear is reversed, namely the letter combination ‘kt’ in the mark applied for and the letter combination ‘tk’ in the earlier mark. In addition, as stated in paragraph 36 above, and contrary to what the applicant submits, the Board of Appeal took into account the figurative elements of the mark applied for in the visual comparison of the signs at issue, acknowledging that they did, admittedly, constitute an element of differentiation, but noting that they were nonetheless not sufficiently striking to reduce the visibility of the word element of that mark. It is also true that, when faced with short signs, the relevant public is likely to perceive more clearly what differentiates them. The fact remains that it is appropriate to ascertain, in each case, by an actual assessment, whether such differences lead to different overall impressions of the signs at issue and whether they are therefore sufficient to rule out any similarity between them (see, to that effect, judgment of 20 June 2019, Nonnemacher v EUIPO - Ingram (WKU) , T‑389/18, not published, EU:T:2019:438 , paragraph 63). In the present case, the similarities between the signs at issue, observed in paragraph 48 above, relate to the most distinctive element of the mark applied for, namely the word element ‘BKT’, and to the earlier mark in its entirety, namely the word element ‘btk’. The fact that the letters ‘k’ and ‘t’ are in reverse order in those signs is not capable of sufficiently distinguishing the word element ‘BKT’ of the mark applied for from the word element ‘btk’ of which the earlier mark consists, particularly because the average consumer only rarely has the chance to make a direct comparison between the various marks but has to rely on his or her imperfect recollection of them (see judgment of 20 December 2023, Pierre Balmain v EUIPO - Story Time (Representation of a lion’s head encircled by rings forming a chain) , T‑564/22, not published, EU:T:2023:851 , paragraph 57 and the case-law cited). Likewise, for the reasons set out in paragraphs 34 and 38 above, the stylisation of the figurative elements of the mark applied for is not sufficiently striking to distract the relevant public’s attention from the visual similarities between those signs. Accordingly, by carrying out an overall assessment of the similarities and the differences between the signs at issue, the Board of Appeal was entitled, without making an error of assessment, to find that those signs were visually similar to an average degree. In the second place, as regards the phonetic comparison of the signs at issue, the Board of Appeal found, in paragraph 42 of the contested decision, that those signs had at the very least an average degree of similarity, since they coincided in their initial sound, namely ‘b’, which consumers will pronounce first, reading from left to right, and in the identical sound of the other two letters, even though those letters will be pronounced in a different order. The applicant takes the view that, in so far as the signs at issue will be pronounced letter by letter, their phonetic similarity is only weak. In that respect, it is common ground that the signs at issue will be pronounced as the sequence, respectively, of the letters ‘b’, ‘k’, ‘t’ for the mark applied for, and ‘b’, ‘t’, ‘k’ for the earlier mark. Accordingly, as EUIPO and the intervener contend, it must be stated that those signs phonetically coincide in their first sound. Moreover, the other two letters of those signs are pronounced identically, albeit in a different order, which is likely to create, having regard to the relevant public, an impression of an average degree of phonetic similarity. That finding is particularly true given that, as has already been recalled in paragraph 51 above, the average consumer only rarely has the chance to make a direct comparison between the various marks but has to rely on his or her imperfect phonetic recollection of them. Therefore, the Board of Appeal found, without making an error of assessment, that the signs at issue had an average degree of phonetic similarity. In the third place, the Board of Appeal took the view, in paragraph 43 of the contested decision, that the conceptual comparison of the signs at issue was neutral on the ground that the word element ‘BKT’ of the mark applied for and the word element ‘btk’ of which the earlier mark consists had no meaning for the relevant public. The applicant does not dispute that assessment. In the light of all the foregoing considerations, the fourth complaint of the applicant’s single plea must be rejected. Accordingly, the single plea must be rejected and, therefore, the action must be dismissed in its entirety. 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 incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, it is appropriate, since no hearing has been held, to order EUIPO to bear its own costs. On those grounds, THE GENERAL COURT (Eighth Chamber) hereby: 1. Dismisses the action; 2. Orders Birių Krovinių Terminalas UAB to bear its owns costs and to pay those incurred by BTK Befrachtungs-und Transportkontor GmbH; 3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs. Kornezov De Baere Kingston Delivered in open court in Luxembourg on 4 December 2024. V. Di Bucci S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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