Diego v EUIPO - Forbo Financial Services (WOOD STEP LAMINATE FLOORING) (EU trade mark - Judgment) [2022] EUECJ T-498/20 (26 January 2022)

Judgment I. Background to the dispute On 5 January 2018, the applicant, Diego Kereskedelmi és Szolgáltató Kft., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 goods and services in respect of which registration was sought are in Classes 27 and 37 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, inter alia, the following description: – Class 27: ‘Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings [non-textile]’; – Class 37: ‘Repair; installation services’. The trade mark application was published in European Union Trade Marks Bulletin No 47/2018 of 8 March 2018. On 7 June 2018, the intervener, Forbo Financial Services AG, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of, inter alia, the goods and services referred to in paragraph 3 above. The opposition was based on the international registration designating the European Union in respect of the word mark STEP, which was registered on 18 December 1998 under the number 706306 and has been renewed until 18 December 2028 in respect of goods in Class 27 corresponding to the following description: ‘Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile tapestry and wall coverings’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001. On 27 May 2019, the Opposition Division upheld the opposition in respect of the goods and services referred to in paragraph 3 above. On 25 July 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division. By decision of 4 June 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. It found, in essence, that there was a likelihood of confusion with regard to the goods and services referred to in paragraph 3 above. In particular, as regards the dominant and distinctive elements in the marks at issue, the Board of Appeal found, first, that, in the mark applied for, the word elements ‘wood’ and ‘step’ were dominant and that the distinctive character of the elements ‘wood’ and ‘laminate flooring’ was extremely weak, since they described features of the goods and services covered by that mark. As regards the distinctive character of the element ‘step’, which is common to the marks at issue, the Board of Appeal stated that, even though that element could evoke goods to be put on the floor and services connected with such goods, it could by no means be descriptive of goods which were meant to be placed on walls. Secondly, as regards the comparison of the signs, the Board of Appeal found that the marks at issue were visually similar to, at most, an average degree and were phonetically and conceptually similar to, at least, an average degree. II. Forms of order sought The applicant claims, in essence, that the Court should: – annul the contested decision; – order EUIPO to register the mark applied for; – order EUIPO to reject the opposition; – order the unsuccessful party to pay the costs. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. III. Law In support of the action, the applicant relies, in essence, on two pleas in law, alleging (i) infringement of Article 4, of Article 7(1)(b), (c) and (d) and of Article 8(1)(a) and (b) of Regulation 2017/1001 and (ii) infringement of Article 26(2) and of Articles 34 to 36 TFEU. A. The issue of whether the pleas are admissible EUIPO submits, principally, that the present action should be dismissed as inadmissible or manifestly unfounded, since the pleas in law put forward in support of the action have not been put forward expressly, coherently and intelligibly, contrary to Article 177(1)(d) of the Rules of Procedure of the General Court. In that regard, it must be borne in mind that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which is applicable to the procedure before the General Court pursuant to the first paragraph of Article 53 thereof, and Article 177(1)(d) of the Rules of Procedure, an application lodged in an action brought against EUIPO must contain, inter alia, the subject matter of the proceedings and a summary of the pleas in law relied on. It must, accordingly, specify the nature of the grounds on which the action is based, with the result that a mere abstract statement of the grounds does not satisfy the requirements of the Statute of the Court of Justice of the European Union and of the Rules of Procedure. Moreover, that summary – albeit concise – must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the action, if necessary, without any further information. In order to ensure legal certainty and the sound administration of justice, it is necessary – if an action or, more specifically, a plea in law is to be admissible – that the basic factual and legal particulars relied on be indicated coherently and intelligibly in the application itself (see judgment of 13 May 2020, Peek & Cloppenburg v EUIPO – Peek & Cloppenburg (Vogue Peek & Cloppenburg) , T‑443/18, EU:T:2020:184 , paragraph 27 (not published) and the case-law cited). According to settled case-law, any plea which is not adequately articulated in the application initiating the proceedings must be held to be inadmissible. Similar requirements apply where a claim or an argument is relied on in support of a plea in law (see judgment of 26 February 2019, Athletic Club v Commission , T‑679/16, not published, EU:T:2019:112 , paragraph 38 and the case-law cited). In that regard, it must be stated that the applicant, in the context of its first plea, confines itself to alleging infringement of Article 4 and of Article 7(1)(b) to (d) of Regulation 2017/1001 in a general and abstract manner, without putting forward any specific argument in support of those claims. Those claims must therefore be rejected as inadmissible, in accordance with the case-law cited in paragraphs 17 and 18 above. As regards the claim relating to infringement of Article 8(1)(a) of Regulation 2017/1001, it must be borne in mind that that provision provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected. It must be stated that the Board of Appeal did not examine, or base the contested decision on, that provision, which the intervener had not relied on in its notice of opposition, but exclusively based that decision on Article 8(1)(b) of Regulation 2017/1001. It is not therefore for the Court to rule on an issue which was not examined by the Board of Appeal (see, to that effect, judgment of 29 March 2012, You-Q v OHIM – Apple Corps (BEATLE) , T‑369/10, not published, EU:T:2012:177, paragraph 80 and the case-law cited). Consequently, the claim alleging infringement of Article 8(1)(a) of Regulation 2017/1001 must also be rejected as inadmissible. By contrast, as regards the alleged infringement of Article 8(1)(b) of Regulation 2017/1001, it may easily be deduced from the applicant’s arguments that it disputes the Board of Appeal’s assessments relating to the distinctive elements of the marks at issue, in particular as regards the distinctive character of the element ‘step’, which is common to those marks, and, consequently, submits that there is no likelihood of confusion in the present case. Likewise, it submits that the Board of Appeal was not entitled to rely on the perception of the signs by the English-speaking part of the relevant public. Consequently, that claim complies with the requirements of the case-law referred to in paragraphs 17 and 18 above and cannot be rejected as inadmissible on the ground that it infringes Article 177(1)(d) of the Rules of Procedure. It follows from all of the foregoing considerations that the first plea is admissible only in so far as it alleges infringement of Article 8(1)(b) of Regulation 2017/1001. As regards the second plea, it must be pointed out that, in paragraphs 20 to 27 of the application, the applicant put forward arguments seeking to show that the contested decision was contrary to the principle of the free movement of goods and other provisions of the FEU Treaty. It is sufficient to point out that those arguments are sufficiently developed for the other parties to be capable of replying to them and for their merits to be capable of being assessed by the Court, with the result that the second plea complies with the requirements of the case-law referred to in paragraphs 17 and 18 above and cannot therefore be rejected as inadmissible on the ground that it infringes Article 177(1)(d) of the Rules of Procedure. B. Substance 1. The first plea, alleging infringement of Article 8 (1)(b) of Regulation 2017/1001 In the context of the first plea, the applicant claims, in essence, first, that the Board of Appeal’s choice to examine whether there was a likelihood of confusion with regard to the English-speaking part of the relevant public is unlawful and unfounded, secondly, that the earlier mark is devoid of any distinctive character, thirdly, that the marks at issue are different and, fourthly, that there is no likelihood of confusion. EUIPO and the intervener dispute the applicant’s claims. Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iv) of that regulation, ‘earlier trade marks’ means, inter alia, trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark. 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). Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that the relative ground for refusal set out in 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). 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). It is in the light of the abovementioned principles that the present plea must be examined. (a) The relevant public and its level of attention In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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). In the present case, in paragraph 20 of the contested decision, the Board of Appeal found that the goods and services at issue were aimed at the general public and at business consumers with specific professional expertise or knowledge and that the level of attention of the relevant public as thus defined was average. Furthermore, in paragraph 21 of the contested decision, the Board of Appeal pointed out that the relevant territory was that of the European Union. It, however, stated, in paragraph 23 of that decision, that it would focus its analysis on the English-speaking part of the relevant public, which would understand the meaning of the word elements of the marks at issue. The Board of Appeal’s assessments in paragraphs 20 and 21 of the contested decision, relating to the definition of the relevant public and of its level of attention, which are not, moreover, disputed by the parties, comply with the case-law cited in paragraph 32 above and must be upheld. The applicant, however, disputes the Board of Appeal’s choice, which is expressed in paragraph 23 of the contested decision, to examine whether there was a likelihood of confusion with regard to the English-speaking part of the relevant public. The applicant submits that ‘EUIPO’s position that English-speaking consumers should be protected is unlawful and unfounded’. In that regard, it must be pointed out that, in the present case, since the earlier mark is an international registration designating the European Union, it is protected in a unitary manner throughout the territory of the European Union, in accordance with Article 1(2) of Regulation 2017/1001. In such a case, it is not a requirement of Article 8(1)(b) of Regulation 2017/1001 that, for the mark applied for to be refused registration, the likelihood of confusion must exist in all the Member States and in all the language areas of the European Union. The unitary character of the EU trade mark means that such an earlier trade mark can be relied on against any application for registration of an EU trade mark or any registered trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (see, to that effect and by analogy, judgment of 16 January 2018, Sun Media v EUIPO – Meta4 Spain (METABOX) , T‑204/16, not published, EU:T:2018:5 , paragraph 74 and the case-law cited). It follows that the Board of Appeal did not err in relying on the perception of the marks at issue by the English-speaking part of the relevant public, because, according to the case-law referred to in paragraph 36 above, the possible existence of a likelihood of confusion on the part of a section of the relevant public in the European Union is sufficient for registration of the mark applied for to be refused. (b) The comparison of the goods and services In the present case, the Board of Appeal found, in paragraphs 51 to 53 of the contested decision, that the goods covered by the marks at issue were identical and that the ‘repair’ and ‘installation’ services covered by the mark applied for were similar to a low degree to the goods covered by the earlier mark. That assessment, which is not, moreover, disputed by the parties, must be upheld. (c) The comparison of the signs The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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. 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, it is necessary to compare, on the one hand, the earlier word mark STEP and, on the other hand, the figurative mark applied for, which consists of several word elements, namely the elements ‘wood’ and ‘step’, which are separated by a red dot, and, situated below those elements, the element ‘laminate flooring’, which is smaller. All of those word elements are written in a standard white font and are placed on a rectangular green background. (1) The distinctive and dominant elements of the marks at issue For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods and 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, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide) , T‑153/03, EU:T:2006:157 , paragraph 35, 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 51). A term with a clear meaning is considered to be descriptive if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 24 February 2016, Tayto Group v OHIM – MIP Metro (REAL HAND COOKED) , T‑816/14, not published, EU:T:2016:93 , paragraph 63 and the case-law cited). Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. As a result, 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 judgment of 22 June 2010, CM Capital Markets v OHIM – Carbon Capital Markets (CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance ), T‑490/08, EU:T:2010:250, paragraph 39 and the case-law cited). With regard 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 the 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 the present case, the Board of Appeal, in paragraphs 31 to 33 of the contested decision, rejecting the argument which the applicant derived from the submission that a great number of marks containing the English term ‘step’ had already been registered as EU trade marks or as national trade marks in a number of Member States, found that that word element, which was common to the marks at issue, ‘might not be particularly distinctive’ with regard to goods ‘which [made] a surface to step on’ and the repair or installation services related to such goods. By contrast, as regards ‘wall hangings [non-textile]’ and ‘tapestry and wall coverings’, it found that that element would have a normal distinctive character. As regards the English term ‘wood’ and the English expression ‘laminate flooring’, the Board of Appeal found, in paragraphs 34 to 38 of the contested decision, that they described features of the goods and services at issue and therefore had, at best, only an extremely weak distinctive character with regard to those goods and services. As regards the dominant elements of the mark applied for, the Board of Appeal found, in paragraph 39 of the contested decision, that the elements ‘wood’ and ‘step’ were visually more prominent, since they were significantly larger in size than the expression ‘laminate flooring’, which was placed below those elements and occupied a secondary position within that mark. It added, in paragraph 40 of the contested decision, that the figurative elements of the mark applied for would, at most, be perceived as banal features which were aimed at enhancing the importance of the word elements. The applicant submits in essence, first, that the earlier mark is devoid of any distinctive character and, secondly, that the marks at issue can be clearly distinguished from one another. In the first place, referring to EU trade mark registrations and registrations of trade marks in Member States containing the element ‘step’ in respect of goods and services in Classes 27 and 37, the applicant submits that that element does not, in itself, have any distinctive character, since it is present in more than 100 marks which have been registered in the European Union. According to the applicant, that figure also demonstrates that ‘it is not the mark STEP itself that benefits from the protection conferred on trade marks, but rather a name containing the element STEP to which a distinctive individual element is linked’. In the second place, the applicant submits that the element ‘step’ has a meaning, is ‘too general’ and, in the earlier mark, is written in black on a white background in a standard font. The applicant argues that, on account of the lack of distinctive character of that element, the earlier mark should not have been registered. According to the applicant, the mark applied for, by contrast, has a unique character which differentiates it clearly from the earlier mark and stems from the following features: first, the ‘characteristic’ green colour of the rectangular background, secondly, the element ‘wood’, which indicates that the product in question is made of wood, thirdly, the expression ‘laminate flooring’, which refers to the fact that the product in question is a laminated product used as a floor covering, and, fourthly, the fact that the earlier mark does not clearly indicate the range of goods for which it is used, whereas the mark applied for clearly refers to a laminated floor covering product. EUIPO and the intervener dispute the applicant’s arguments. In that regard, it is true that it has been held that a distinction must be made between the assessment of the distinctive character of an element of a composite mark, which relates to the ability of that element to dominate the overall impression created by the mark, and the analysis of the distinctive character of the earlier mark, which is linked to the scope of the protection afforded to such a mark. The distinctive character of an element of a composite mark is examined at the stage of assessing the similarity of the signs and the degree of distinctive character of the earlier mark is one of the elements to be taken into consideration in the context of the global assessment of the likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM , C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177 , paragraph 58). However, since the earlier mark consists of a single word element and the applicant disputes both the Board of Appeal’s analysis relating to the distinctive character of the elements of which the marks at issue consist and that relating to the distinctive character of the earlier mark, it is appropriate to examine that latter analysis at the present stage as well. In the first place, as regards the element ‘step’, which is common to the marks at issue, it must be stated that the applicant does not dispute the Opposition Division’s assessment, which the Board of Appeal endorsed in paragraph 31 of the contested decision, that it will be understood by the relevant public as referring to ‘the action of lifting one’s foot and putting it down in a different place’ or to ‘a raised flat surface in front of a door’. In the light of the meaning of the term ‘step’, which was correctly pointed out by the Board of Appeal, it must be held that the Board of Appeal did not make an error of assessment in finding that that term was evocative of goods which consisted of a surface to step on and the repair or installation services related to such goods. Consequently, it was right, in accordance with the case-law referred to in paragraph 45 above, in finding, in paragraph 33 of the contested decision, that that element ‘might not be particularly distinctive’, which must be understood as corresponding to, at least, a weak distinctive character with regard to the carpets, rugs, mats and matting, linoleum and coverings for floors and hard floors in Class 27 and the repair and installation services related to those goods in Class 37. The Board of Appeal was also right in not conferring the same evocative capacity on the term ‘step’ as regards the other goods in Class 27, namely the wall hangings [non-textile] and the non-textile tapestry and wall coverings, which are goods which are meant to be placed on walls and which are not therefore to be stepped upon or walked on. Consequently, the Board of Appeal was justified in finding that the element ‘step’ had a normal distinctive character with regard to those goods and the reparation and installation services related to those goods in Class 37. Those findings cannot be called into question by the arguments which the applicant derives from the number of marks containing the element ‘step’ which were, at the time when it brought its appeal before EUIPO, registered in respect of goods or services in Classes 27 and 37 as EU trade marks or as trade marks in the Member States. In that regard, it must be borne in mind that, according to the case-law, the mere fact that there are registrations of marks which contain a certain term, without any reference to the use of those marks on the market and to any challenge to them on account of the existence of a likelihood of confusion, does not make it possible to conclude that the distinctive character of that term has been weakened in relation to the goods and services in respect of which those marks are registered (see, to that effect, judgment of 6 July 2016, Mozzetti v EUIPO – di Lelio (ALFREDO’S GALLERY alla Scrofa Roma) , T‑97/15, not published, EU:T:2016:393 , paragraph 39 and the case-law cited). Those registrations, on their own, do not make it possible to establish the extent to which the relevant public is actually confronted with marks containing the term in question (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 57 and the case-law cited). Furthermore, as the intervener rightly points out, the applicant does not explain how it is possible to deduce from the figures which it cites that ‘it is not the mark STEP itself that benefits from the protection conferred on trade marks, but rather a name containing the element STEP to which a distinctive individual element is linked’. Moreover, it must be stated that, contrary to what the applicant claims, the arguments referred to in paragraph 51 above were duly examined by the Board of Appeal, as is apparent from paragraphs 31 and 32 of the contested decision. Furthermore, as EUIPO rightly points out, the applicant conflates, in those arguments, registrations made at EUIPO and in the Member States. However, in addition to the fact that the EU trade mark regime and the trade mark regimes of the Member States are autonomous and the registration of national marks does not fall within the competence of EUIPO, national decisions on registration are based on national provisions which are implemented according to national procedures in a national context and on the basis of factual circumstances with regard to which it cannot be presumed that they are comparable to those in the present case. In the second place, as regards the arguments set out in paragraph 52 above, first, it must be stated that, in the context of those arguments, the applicant claims that the earlier mark is devoid of any distinctive character and should not therefore have been registered. That claim cannot succeed. As the Board of Appeal correctly pointed out in paragraphs 59 and 60 of the contested decision, in opposition proceedings, the fact that the earlier mark, on the basis of which the opposition has been brought, has, at least, the minimum degree of distinctiveness required in order to be registered cannot be called into question (see judgment of 26 June 2018, France.com v EUIPO – France (FRANCE.com) , T‑71/17, not published, EU:T:2018:381 , paragraph 56 and the case-law cited; see also, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM , C‑196/11 P, EU:C:2012:314 , paragraph 47). In that regard, it must be added that the grounds on which an opposition may be based, as laid down in Article 46(1) of Regulation 2017/1001, are solely the relative grounds for refusal set out in Article 8 of the regulation. Those are the terms on which EUIPO is required to give a decision on the opposition under Article 47(5) of Regulation 2017/1001 (see, to that effect, judgment of 9 April 2003, Durferrit v OHIM – Kolene (NU-TRIDE) , T‑224/01, EU:T:2003:107, paragraph 72). Furthermore, the applicant’s argument relating to the fact that the earlier mark is written in black on a white background in a standard font is irrelevant, since the protection which results from the registration of a word mark applies to the word mentioned in the application for registration and not to the specific graphic or stylistic characteristics which that mark might have (judgments of 29 March 2012, BEATLE , T‑369/10, not published, EU:T:2012:177, paragraph 42, and of 15 May 2012, Ewald v OHIM – Kin Cosmetics (Keen) , T‑280/11, not published, EU:T:2012:237, paragraph 26). Secondly, in so far as the applicant’s arguments set out in paragraph 52 above are capable of being understood as meaning that it also claims that the mark applied for, unlike the earlier mark, has distinctive character, it must be borne in mind that, in the context of opposition proceedings, the distinctive character of the mark applied for as a whole is irrelevant for the purposes of the assessment of the likelihood of confusion (see, to that effect, judgment of 20 October 2016, Clover Canyon v EUIPO – Kaipa Sportswear (CLOVER CANYON) , T‑693/15, not published, EU:T:2016:620 , paragraph 47). Although the distinctive character of the components of both the earlier mark and the mark applied for must be examined, the assessment of the distinctive character of the mark as a whole concerns only the earlier mark. Thirdly, and also in the context of its arguments set out in paragraph 52 above, the applicant seeks to show that the word elements of which the mark applied for consists other than the element ‘step’ describe certain characteristics of the goods and services at issue. In that regard, it must be stated that, in so doing, it in actual fact concurs with the Board of Appeal’s assessment in paragraphs 34 to 38 of the contested decision regarding the distinctive character of those elements. Accordingly, the applicant acknowledges that the element ‘wood’, when it is used in relation to the goods at issue, indicates that those goods are made of wood or have an appearance which imitates wood, which is the case as regards many indoor decoration and flooring materials. It also acknowledges that the expression ‘laminate flooring’ refers to laminated flooring, which may also be used for indoor decoration. It follows that, in the light of the principles referred to in paragraph 45 above, the Board of Appeal was right in finding that the element ‘wood’ and the expression ‘laminate flooring’ had, at best, only an extremely weak distinctive character with respect to the goods and services at issue. It must be added that the applicant’s claim that the mark applied for clearly refers to a laminated floor-covering product, unlike the earlier mark, which does not clearly indicate the range of goods for which it is used, is inconsistent with its argument that the mark applied for has distinctive character (see paragraph 69 above). In the third place, it must be pointed out that the applicant does not put forward any specific argument to refute the Board of Appeal’s assessment, which is, moreover, well founded, that, in the overall impression created by the mark applied for, the elements ‘wood’ and ‘step’ are more striking visually than the expression ‘laminate flooring’, which is written in markedly smaller characters and situated below those elements. In the fourth place, as regards the figurative elements of the mark applied for, it must be borne in mind that, according to settled case-law, 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 readily refer to the goods in question by citing their name than by describing the figurative element of the mark (see judgment of 3 October 2019, Puma v EUIPO – Destilerias MG (MG PUMA) , T‑500/18, not published, EU:T:2019:721 , paragraph 33 and the case-law cited). In the present case, the figurative elements of the mark applied for consist of the use of a standard white font for its word elements, the positioning of those word elements on a green rectangular background and the presence of a small red dot which separates the elements ‘wood’ and ‘step’. It must be held, as the Board of Appeal found, that those figurative elements constitute banal minor features which will not particularly attract the attention of the relevant public and could, at most, be perceived as being meant to make the word elements of the mark applied for stand out. The applicant’s argument that the green colour of the rectangular background is a ‘characteristic’ colour is not in any way substantiated and is, in any event, incorrect, because that colour does not have any specific features. It follows from the foregoing that the Board of Appeal did not err in finding in essence, first, that the element step, which is common to the marks at issue, had a distinctive character which was either, at least, weak, or normal, with regard to the goods and services at issue, secondly, that the earlier mark had a minimum degree of inherent distinctiveness, thirdly, that the elements ‘wood’ and ‘step’ were the most striking elements in the mark applied for and, fourthly, as is stated in paragraph 62 of the contested decision, that the element ‘step’ constituted ‘the more distinctive part of the most prominent element of the [mark] applied for’. (2) The visual, phonetic and conceptual comparison As regards the visual comparison, the Board of Appeal took the view, in paragraphs 42 to 46 of the contested decision, that the marks at issue were visually similar to, at most, an average degree, in particular in the light of the fact that they both contained the element ‘step’, which constituted the whole of the earlier mark and part of the visually most striking element of the mark applied for. As regards the phonetic comparison, the Board of Appeal found, in paragraphs 47 and 48 of the contested decision, that the marks at issue were phonetically similar to, at least, an average degree, on the ground, in essence, that a significant part of English-speaking consumers would be tempted to pronounce those marks as ‘step’ and ‘wood step’ respectively. As regards the conceptual comparison, the Board of Appeal found, in paragraph 49 of the contested decision, that the marks at issue were similar to, at least, an average degree, since the element ‘step’, which is common to those marks, conveyed the same semantic content and the other word elements of the mark applied for had very limited distinctiveness. The applicant claims that, for consumers, ‘the difference [between the marks at issue] is obvious, not only visually but also in terms of semantic content and use of the product (functionally)’. EUIPO and the intervener agree with the Board of Appeal’s analysis. It must be stated that the applicant does not put forward any specific argument that is capable of establishing that the reasoning and findings which the Board of Appeal set out in paragraphs 42 to 50 of the contested decision are incorrect. Even if the claim referred to in paragraph 80 above were based, in whole or in part, on the arguments of the applicant which have been referred to in paragraphs 50 to 52 above, it would have to be rejected as unfounded, for the reasons set out in paragraphs 56 to 76 above. As regards the Board of Appeal’s visual, phonetic and conceptual comparison of the marks at issue, the following points should be noted. In the first place, as regards the visual comparison, it must be stated that the earlier mark, which consists of the word element ‘step’, is reproduced in its entirety in the mark applied for. As has already been held in paragraphs 56 to 76 above, that element is not only one of the two most striking elements of the mark applied for in the overall impression created by that mark, but also, depending on the circumstances, has a weak or normal degree of distinctiveness, whereas the other dominant element, namely ‘wood’ has, at best, only an extremely weak distinctive character. In that regard, it must be added that, according to the case-law, the fact that the earlier mark is entirely contained in the mark applied for is an indication that those two marks are visually similar (see judgment of 13 June 2012, Seikoh Giken v OHIM – Seiko Holdings (SG SEIKOH GIKEN) , T‑519/10, not published, EU:T:2012:291, paragraph 27 and the case-law cited). Consequently, the presence, within the mark applied for, of the word elements ‘wood’ and ‘laminate flooring’ and of the figurative elements detailed in paragraph 74 above is not capable of eliminating the visual similarity between the marks at issue which arises from the presence of the element ‘step’ in each of them. In those circumstances, it must be held, as the Board of Appeal found, that the marks at issue are visually similar to an average degree. In the second place, as regards the phonetic comparison, the pronunciation of the marks at issue coincides in the sound of the word element ‘step’, which is the only element in the earlier mark and is included in its entirety in the mark applied for. That is, according to the case-law, liable to create a certain impression of phonetic similarity in the mind of the relevant public (see, to that effect, judgment of 11 July 2018, Link Entertainment v EUIPO – García-Sanjuan Machado (SAVORY DELICIOUS ARTISTS & EVENTS) , T‑694/17, not published, EU:T:2018:432 , paragraph 43 and the case-law cited). The pronunciation of the marks at issue differs, however, in the sound of the element ‘wood’, which is situated at the beginning of the mark applied for. The mark applied for also contains the expression ‘laminate flooring’, which has no counterpart in the earlier mark. However, as the Board of Appeal correctly pointed out in paragraph 48 of the contested decision, it may reasonably be held that, in the light of the secondary position of that expression in the mark applied for and its extremely weak distinctive character, a significant part of the relevant English-speaking public will ignore that expression when it pronounces that mark. Moreover, it must be observed that consumers tend to omit certain word elements in a mark when pronouncing it, in order, inter alia, simply to economise on words, if those elements are easily separable (see, to that effect, judgment of 6 October 2017, Kofola ČeskoSlovensko v EUIPO – Mionetto (UGO) , T‑176/16, not published, EU:T:2017:704 , paragraph 62 and the case-law cited). Accordingly, in the present case, the relevant public will tend not to pronounce the expression ‘laminate flooring’ simply to economise on words, since that rather long expression is easily separable from the most striking word elements in the mark applied for, namely ‘wood’ and ‘step’. In the third place, as regards the conceptual comparison, it must be stated that the English-speaking part of the relevant public will understand the term ‘step’, which is common to the marks at issue, as referring to the idea of steps, the act of stepping or a raised flat surface in front of a door. Consequently, those marks have a semantic content which is the same. It is true that the other word elements in the mark applied for, which have no counterpart in the earlier mark, also have a semantic content. However, as has been stated in paragraph 70 above, they have only very limited distinctiveness. As regards the figurative elements of the mark applied for, it must be stated that no meaning can be attributed to them. Consequently, it must be held, as the Board of Appeal correctly found, that the marks at issue are conceptually similar to, at least, an average degree. (d) The likelihood of confusion A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and of 14 December 2006, VENADO with frame and others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). The Board of Appeal found, in paragraphs 54 to 64 of the contested decision, that there was in the present case a likelihood of confusion on the part of the relevant public. It referred to its assessments relating to the similarity of the marks at issue and to the identity or similarity of the goods and services at issue and to its finding that the element ‘step’ might be perceived by a part of the relevant English-speaking public as ‘not particularly distinctive’ for most of those goods and services. The Board of Appeal pointed out, however, that, even in a case involving an earlier mark with a weak distinctive character, there might be a likelihood of confusion and that, furthermore, since that mark was validly registered, it had to be recognised as having a minimum degree of inherent distinctiveness in the context of opposition proceedings. It added that the presence of elements other than the element ‘step’ in the mark applied for was not capable of ruling out the existence of a likelihood of confusion arising from the fact that the earlier mark was fully included in the mark applied for and constituted the more distinctive part of the most striking element in that mark. For the sake of completeness, the Board of Appeal, in paragraph 65 of the contested decision, rejected, as irrelevant for the purposes of the opposition proceedings, the applicant’s argument relating to its use of the mark applied for before the date on which the application for registration of that mark was filed. The applicant claims that there is no likelihood of confusion in the present case. It submits, inter alia, that the contested decision is discriminatory, since the Board of Appeal did not state in what respect the assessment in the present case differs from the practice followed with regard to more than 100 registered trade marks containing the element ‘step’. EUIPO and the intervener, by contrast, take the view that the Board of Appeal was justified in finding that there was a likelihood of confusion. In the present case, the goods and services covered by the mark applied for are, in part, identical and, in part, similar to a low degree to the goods covered by the earlier mark (see paragraphs 38 and 39 above). Furthermore, it has been established that, taken as a whole, the marks at issue are visually similar to an average degree and phonetically and conceptually similar to at least an average degree (see paragraphs 84 to 92 above). In that context, the Board of Appeal correctly stated that the sole element of which the earlier mark consisted, ‘step’, was contained in its entirety in the mark applied for. The Board of Appeal was also right in finding that the other elements in the mark applied for, since they had, at best, only an extremely weak distinctive character, were not capable of ruling out the existence of a likelihood of confusion. Furthermore, the fact that the earlier mark has a weak distinctive character with regard to some of the goods it covers (see paragraphs 57 and 76 above) does not preclude the finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES. COM) , T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited). As regards the applicant’s argument relating to the discriminatory nature of the contested decision in so far as it differs from the practice which EUIPO followed with regard to more than 100 registered trade marks (see paragraph 96 above), it is sufficient to point out that the applicant manifestly confuses the application of the absolute grounds for refusal set out in Article 7 of Regulation 2017/1001 at the time of the registration of a mark with that of the relative ground for refusal set out in Article 8(1)(b) of that regulation, which has been relied on in the present proceedings, with the result that it cannot, in any event, be held that there has been any infringement of the principle of equal treatment. In the light of the considerations set out in paragraphs 98 to 101 above and in view of the principle of interdependence referred to in paragraph 93 above, it must be held that the Board of Appeal did not err in finding that there was a likelihood of confusion on the part of the relevant public. It follows from all of the foregoing considerations that the first plea, in so far as it is based on the claim alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected. 2. The second plea, alleging infringement of Article 26 (2) and of Articles 34 to 36 TFEU The applicant claims that the contested decision is contrary to the provisions of the FEU Treaty relating to the free movement of goods, since it is based on an ‘overly biased’ interpretation of the distinctiveness test and a narrow interpretation of the absence of a likelihood of confusion. It argues that that decision is also the result of an overly broad interpretation of the derogation relating to the protection of industrial and commercial property laid down in Article 36 TFEU. In that context, the applicant submits that the sign in respect of which registration as an EU trade mark has been applied for has, for more than 20 years, been registered as a trade mark in Hungary and used with regard to goods and services in Classes 27 and 37. It claims that those goods and services are marketed not only in Hungary, where they are well known, but also in other Member States. It submits that EUIPO and the intervener therefore seek to prevent goods which are legally marketed in one of the Member States from being marketed in other Member States. EUIPO and the intervener dispute the applicant’s claims. In that regard, it must be stated that the present plea is based, in essence, on the premiss that the Board of Appeal was not justified in finding that there was a likelihood of confusion in the present case and, in particular, in recognising that the element ‘step’ had some distinctiveness. However, that premiss is incorrect, as has been established in the context of the examination of the first plea. Since the Board of Appeal thus applied Regulation 2017/1001 correctly, it cannot in any way be held that the contested decision is based on an overly broad interpretation of Article 36 TFEU, which, even if it were applicable in the present case, expressly provides that the ‘protection of industrial and commercial property’ is one of the grounds that is capable of justifying obstacles to the free movement of goods which constitute quantitative restrictions or measures having equivalent effect. As regards the applicant’s arguments alleging that the submission that the sign which constitutes the mark applied for has, for more than 20 years, been registered as a trade mark in Hungary and used in order to market goods and services in Classes 27 and 37 in that country and in other Member States, it is sufficient to state, as the Board of Appeal correctly pointed out in paragraph 65 of the contested decision, that circumstances relating to the use of the mark applied for prior to the filing of the application for registration of that mark as an EU trade mark are irrelevant for the purposes of the present opposition proceedings. It is the date on which that application was filed which is, in the context of such proceedings, relevant with regard to the assessment of the likelihood of confusion. It follows that the second plea must be rejected and that the action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility, which EUIPO disputes, of the applicant’s second and third heads of claim, since those heads of claim are based on the premiss that the first head of claim has been upheld (see, to that effect, judgment of 13 May 2020, adp Gauselmann v EUIPO – Gameloft (City Mania) , T‑381/19, not published, EU:T:2020:190 , paragraph 63 and the case-law cited). Costs Under Article 134(1) of the Rules of Procedure, 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 (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders Diego Kereskedelmi és Szolgáltató Kft. to pay the costs. Costeira Perišin Zilgalvis Delivered in open court in Luxembourg on 26 January 2022. 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