gastivo portal v EUIPO - La Fourchette (Representation d'une fourchette sur fond vert) (EU trade mark - Judgment) [2019] EUECJ T-267/19 (12 December 2019)

Judgment Background to the dispute On 25 May 2016, La Fourchette SAS 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 in, inter alia, Classes 35 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 35: ‘Promoting the goods and services of others, namely restaurants, by means of advertising; promoting the goods and services of others, namely restaurants, by means of discounts, special offers, incentives, reviews, and advertisements via computer networks and global information networks; promoting the goods and services of others, namely restaurants, by providing a website featuring discounts, special offers, incentives, reviews, and advertisements; sales of electronic devices to restaurants (computer, tablet)’; – Class 42: ‘Providing use of online non-downloadable software that allows users to share information about restaurants, make reservations and bookings for restaurants; hosting a website that allows users to make reservations and bookings for restaurants; computer services, namely, providing search engines for obtaining restaurant information via computer and global information networks; rental of electronic devices to restaurants (computer, tablet)’. The trade mark application was published in European Union Trade Marks Bulletin No 160/2016 of 25 August 2016. On 25 November 2016, the applicant, gastivo portal GmbH, 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 all of the services referred to in paragraph 3 above. The opposition was based on the following earlier EU figurative mark: That trade mark, registered under No 11975968 covers, inter alia, services in Classes 35 and 42 corresponding, in particular, for each of those classes, to the following description: – Class 35: ‘Advertising; business management; business administration; office functions’; – Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). By decision of 25 April 2018, the Opposition Division rejected the opposition. On 25 June 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision. By decision of 20 February 2019, the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it held that the Opposition Division was correct to find that there is no likelihood of confusion in the present case, even if the services in question were to be regarded as identical. It relied, in essence, principally on the absence of similarity between the marks at issue and, in the alternative, in connection with the global assessment of the likelihood of confusion, on the low degree of similarity between those marks in particular. Forms of order sought The applicant claims that the Court should: – annul the decision of the Fourth Board of Appeal of EUIPO of 20 February 2019; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. More specifically, the applicant submits, first, that the marks at issue are highly similar from a visual, phonetic and conceptual standpoint and, secondly, that the services in question are also highly similar or identical. EUIPO disputes the applicant’s arguments. Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, 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). The relevant public According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). In the present case, the Board of Appeal did not call into question the Opposition Division’s assessment that the relevant public consists of both the general public and professionals, whose level of attention is average or high. That assessment is not disputed by the applicant. Since, according to case-law, the public with the lowest attention level must be taken into consideration (see judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS) , T‑247/12, EU:T:2014:258, paragraph 29 and the case-law cited), the public with an average level of attention should be taken into consideration in the present case. Comparison of the services in question According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account (see judgment of 11 July 2007, El Corte Inglés v OHIM–Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) , T‑443/05, EU:T:2007:219 , paragraph 37 and the case-law cited). However, in the present case, the Board of Appeal relied, in essence, on the assumption made by the Opposition Division that the services in question are identical. The applicant submits that the services in question are identical or highly similar. In that regard, it should be noted that the more similar the goods or services covered, the greater will be the likelihood of confusion (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 28). Consequently, as EUIPO correctly points out, since the Board of Appeal found that there is no likelihood of confusion, and that includes the situation where all the services in question are regarded as identical, the arguments put forward by the applicant to establish that those services are identical or highly similar must be rejected as ineffective. The comparison of the marks at issue 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 (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 43). As its principal finding, the Board of Appeal took the view, in essence, that the marks at issue are not visually, phonetically or conceptually similar. The applicant submits that the figurative element of the earlier mark is dominant and that the word element of that mark is negligible in the overall impression created by the mark. It is therefore of the view that, in the light of the characteristics shared by that figurative element and the mark applied for, the marks at issue are highly similar from a visual, phonetic and conceptual standpoint. In that regard, in the first place, although, as the applicant submits, the relevant public usually attaches more importance to the first part of a trade mark, it should nevertheless be noted that that argument cannot hold in all cases or cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT) , T‑363/06, EU:T:2008:319, paragraph 38 and the case-law cited). In the present case, first, it is common ground that the word element of the earlier mark has no meaning for the relevant public in any language of the European Union, so that it must be considered as being inherently distinctive. Moreover, it should be noted that, contrary to what the applicant submits, where a trade mark is made up of verbal and figurative elements, the former are, as a rule, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name of the trade mark than by describing its figurative element (see judgment of 11 December 2014, Coca-Cola v OHIM — Mitico (Master) , T‑480/12, EU:T:2014:1062 , paragraph 49 and the case-law cited). Consequently, in the present case, the word element of the earlier mark cannot be less distinctive than its figurative element. Secondly, it must be noted, as regards the earlier mark, that the word element is significantly larger than the figurative element, with the result that it is dominant. In those circumstances, it must be concluded, in the light of the case-law referred to in paragraph 25 above, that the word element of the earlier mark is not insignificant in the overall impression created by that mark, even though the figurative element of the mark is positioned at the beginning of it. Neither the green colour of the figurative element of the earlier mark, the alleged distinctive character of that element, nor the use of lower-case letters in the word element of that mark are such as to cast doubt on that assessment. First, contrary to what the applicant appears to contend, while it is true that the word element is not green, unlike the figurative element, the fact remains that it is still of a colour that is sufficiently visible and is of an appreciable size so as not to be overlooked by the relevant public. Furthermore, the fact that it is written in lower-case letters does not affect its legibility for the relevant public. Second, the fact that the figurative element is, according to the applicant, distinctive, does not deprive the word element of its own distinctive character. Accordingly, in accordance with the case-law cited in paragraph 26 above, the visual, phonetic and conceptual comparison of the marks at issue cannot be limited to taking into consideration the figurative element of the earlier mark. In the second place, it should be pointed out that, as regards the visual comparison of the marks at issue, although, as the applicant correctly submits, the mark applied for and the figurative element of the earlier mark both comprise a green circle within which a stylised, four-pronged white fork is depicted, there are nevertheless some important differences between the mark applied for and the figurative element of the earlier mark. First, unlike the fork depicted in the figurative element of the earlier mark, the fork depicted in the mark applied for (i) is positioned vertically; (ii) extends beyond the green circle surrounding it; and (iii) has rectangular prongs. Next, unlike the mark applied for, the figurative element of the earlier mark contains, in addition to a representation of a fork, a representation of a knife. Finally, the green colour of the mark applied for is darker than that of the figurative element of the earlier mark. Consequently, given the distinctive and dominant character of the word element of the earlier mark, noted in paragraphs 30 and 31 above, and the differences between the mark applied for and the figurative element of the earlier mark, noted in paragraph 35 above, the Board of Appeal was right to find that the marks at issue are not visually similar. In the third place, as regards the phonetic comparison of the marks at issue, the applicant infers from the case-law of the Bundesgerichtshof (Federal Court of Justice, Germany) that the mark applied for and the figurative element of the earlier mark are highly similar. However, it must be recalled that the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see judgment of 6 September 2018, Bundesverband Souvenir — Geschenke — Ehrenpreise v EUIPO , C‑488/16 P, EU:C:2018:673 , paragraph 72 and the case-law cited). In those circumstances, it must be pointed out that, according to case-law, a phonetic comparison is not relevant in the examination of the similarity of a figurative mark without word elements with another mark (judgments of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle) , T‑424/10, EU:T:2012:58, paragraph 45, and of 16 October 2018, VF International v EUIPO — Virmani (ANOKHI) , T‑548/17, not published, EU:T:2018:686 , paragraph 74; see also, in that regard, judgment of 25 March 2010, Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe) , T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 67). A figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question (judgment of 7 February 2012, Representation of elephants in a rectangle , T‑424/10, EU:T:2012:58, paragraph 46). Consequently, since the mark applied for does not contain any word elements, there is no need to carry out a separate phonetic comparison with the earlier mark. In the fourth place, as regards the conceptual comparison of the marks at issue, it should be noted that the mark applied for and the figurative element of the earlier mark both depict cutlery, namely a fork in the former and a fork and knife in the latter. However, it should also be recalled, as noted in paragraph 30 above, that the word element of the earlier mark has no meaning for the relevant public. Since, according to case-law, two signs are not conceptually similar where one has no meaning while the other evokes a concept (see judgment of 14 September 2017, Aldi Einkauf v EUIPO — Weetabix (Alpenschmaus) , T‑103/16, not published, EU:T:2017:605 , paragraph 81 and the case-law cited), the word element of the earlier mark cannot be conceptually similar to the mark applied for. Consequently, it must be held that there is a conceptual similarity between the marks at issue which, given the distinctive and dominant character of the word element of the earlier mark, noted in paragraphs 30 and 31 above, is low. The Board of Appeal was therefore wrong to take the view, as its principal finding, that the marks are not conceptually similar. Overall assessment of 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, 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 74). The Board of Appeal found, in the alternative, that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even if the marks were to be regarded as being similar to a low degree. The applicant submits that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 is established in the present case in so far as there is a high degree of similarity between both the marks at issue and the services in question. In that regard, first, it should be noted that, given its distinctive and dominant character, as noted in paragraphs 30 and 31 above, the word element ‘gastivo’ of the earlier mark will be perceived by the relevant public as the primary indicator of the commercial origin of the services covered by the mark. Secondly, it should be recalled that, particularly where the earlier mark does not have a high degree of distinctiveness, the mere association which the relevant public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 (see, to that effect and by analogy, judgment of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraphs 24 to 26). In the present case, first, the Board of Appeal rightly found, without being challenged on this point by the applicant, that the earlier mark does not have a high degree of distinctiveness. Second, as can be seen from paragraphs 25 to 41 above, the marks at issue are not visually similar, a phonetic comparison between them is irrelevant and, conceptually, they are similar to only a low degree. In those circumstances, the Board of Appeal was correct to find that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 had not been established, notwithstanding the relevant public’s average attention level and the fact that the services concerned were assumed to be identical. Consequently, it follows from the above that the applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be dismissed, with the result that 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, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Tenth Chamber) hereby: 1. Dismisses the action; 2. Orders gastivo portal GmbH to pay the costs. Kornezov Kowalik-Bańczyk Hesse Delivered in open court in Luxembourg on 12 December 2019. E. Coulon A. Kornezov 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