Morgan & Morgan v EUIPO - Grupo Morgan & Morgan (Morgan & Morgan) (Judgment) [2017] EUECJ T-399/15 (19 January 2017)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark Morgan & Morgan — Earlier EU figurative mark MMG TRUST MIEMBRO DEL GRUPO MORGAN & MORGAN — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Morgan & Morgan Srl International Insurance Brokers, established in Conegliano (Italy), represented by F. Caricato and F. Gatti, lawyers,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and C. Martini, acting as Agents,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 7 May 2015 (Case R 1657/2014-1) relating to opposition proceedings between Grupo Morgan & Morgan and Morgan & Morgan International Insurance Brokers,

composed of V. Tomljenović, President, E. Bieliūnas and A. Marcoulli (Rapporteur), Judges,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 22 February 2013, the applicant, Morgan & Morgan Srl International Insurance Brokers, 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).

3 The services in respect of which registration was sought are in Class 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Insurance; Financial affairs; Monetary affairs; Real estate affairs; Banking; Renting of flats; Leasing of farms; Credit bureaux; Accommodation bureaux (apartments); Debt collection agencies; Customs brokerage; Real estate agencies; Real estate management; Apartment house management; Financial management; Financial analysis; Accident insurance underwriting; Fire insurance underwriting; Health insurance underwriting; Marine insurance underwriting; Life insurance underwriting; Insurance; Brokerage; Charitable fund raising; Insurance consultancy; Financial consultancy; Mutual funds; Deposits of valuables; Safe deposit services; Issuing of travellers’ checks (cheques); Issue of tokens of value; Issuance of credit cards; Factoring; Guarantees; Home banking; Financial information; Insurance information; Brokerage of carbon credits; Fund investments; Leasing of real estate; Hire-purchase financing; Rental of offices [real estate]; Insurance brokerage; Housing agents; Securities brokerage; Exchanging money; Clearing, financial; Instalment loans; Fiscal valuations; Lending against security; Loans (financing); Pawnbrokerage; Stock exchange quotations; Organization of collections; Rent collection; Actuarial services; Credit card services; Debit card services; Savings bank services; Debt advisory services; Financing services; Provident fund services; Business liquidation services, financial; Stock brokerage services; Retirement payment services; Mortgage banking; Fiduciary; Financial sponsorship; Financial valuation of standing timber; Real estate appraisal; Stamp appraisal; Jewelry appraisal; Art appraisal; Antique appraisal; Numismatic appraisal; Financial evaluation (insurance, banking, real estate); Repair costs evaluation [financial appraisal]; Financial evaluation of wool; Electronic funds transfer; Check (cheque) verification.’

4 The trade mark application was published in Community Trade Marks Bulletin No 57/2013 of 22 March 2013.

5 On 24 June 2013, Grupo Morgan & Morgan filed a notice of opposition pursuant to Article 41(1)(a) of Regulation No 207/2009 to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

6 The opposition was based on the earlier EU figurative mark, reproduced below, which was filed on 10 April 2012 under number 010794543 and registered on 6 September 2012, covering services in Classes 35, 36 and 45 and corresponding, for each of those classes, to the following description:

– Class 35: ‘Accounting services; Drawing up of statements of account; Administration (commercial) of the licensing of the goods and services of others; Advertising; Accounting and book-keeping services; Business advice; Business information; Business research; Business investigations; Business administration; Business management and organisation consultancy; Assistance in management of business activities; Business management consultancy; Business organization and management consulting; Business or industrial research; Business management assistance; Drawing up of statistics; Professional consultancy relating to business management; Economic forecasting; Invoicing; Secretarial services; Financial statement preparation and analysis for businesses; Transcription services; typewriting’;

– Class 36: ‘Financial analysis services; Building management; Merchant banking; Private banking; Financial banking; Financial services in connection with company liquidations; Capital investment; Financial clearing services; Credit card services; Debit card services; Management of land; Real estate management; Financial assessments, namely insurance, banking, real estate, fiduciary services, financial consultancy, financial information, financial management, financial sponsorship; Financial services; Fund investment; Electronic funds transfers; Guarantees; Insurance information; Leasing of real estate; Loans against securities and Mortgage brokering; Investment trusts; Cheque verification, including for banks or institutions connected thereto, including stock market brokers or financial clearing-houses; Financial services for credit institutions other than banks, including credit associations, credit cooperatives, individual financial companies, and moneylenders; Trustee services; Portfolio management; Financial management of holding companies; Stock and bonds brokerage; Financial services relating to monetary affairs insured by fiduciary agents; Building management; Fiscal assessments and valuations; Financial services relating to insurance, including services rendered by agents and brokers in the field of insurance’;

– Class 45: ‘Legal services; Arbitration services; Computer software licensing; Monitoring of intellectual property; Legal research and investigation; Licensing of industrial property rights; Litigation advice; Legal research services; Legal representation before others or before courts and all kinds of legal services in the jurisdiction of each country’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8 On 29 April 2014, the Opposition Division rejected the opposition. In particular, it considered that the common word element ‘morgan & morgan’ was not the dominant element in the signs at issue and that, accordingly, given the visual and phonetic differences between the signs and the higher-than-average level of attention of the relevant public, there was no likelihood of confusion.

9 On 30 June 2014, Grupo Morgan & Morgan filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 7 May 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division, upheld the opposition and rejected the EU trade mark applied for in respect of all the services. It took the view that there was a likelihood of confusion, in particular a likelihood of association, between the signs at issue. The Board of Appeal considered that the word element ‘morgan & morgan’, which appears in both signs, conveyed important information concerning the mark. Consumers were thus more likely to identify the mark applied for by the name Morgan & Morgan than by the figurative element and to identify the earlier mark as designating a trust which is a member of the Morgan & Morgan group. Under those circumstances, and in the light of the distinctive character of the word element ‘morgan & morgan’, the Board of Appeal took the view that the signs at issue bore a certain degree of similarity which, given the identity of the services covered, established a likelihood of confusion.

– order the opponent to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.

13 EUIPO maintains that the applicant’s first head of claim seeking alteration of the contested decision is inadmissible, on the ground that the applicant does not specify what constitutes the amendment requested. It also submits that the second head of claim of the application, requesting the Court to allow the definitive registration of the mark applied for, is inadmissible on the grounds that, first, it is not for the Court to issue directions to EUIPO and, secondly, the Court cannot make a decision, such as registering a mark, which does not come within the competence of the Board of Appeal.

14 First, it must be noted that, while the first head of claim of the application formally seeks the alteration of the contested decision, it is clear from the content of the application that, by the present action, the applicant seeks, in essence, annulment of the contested decision, on the ground that the Board of Appeal wrongly held that there was a likelihood of confusion between the marks at issue (judgments of 27 February 2014, Advance Magazine Publishers v OHIM — Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraph 16, and of 3 May 2016, Aranynektár v EUIPO — Naturval Apícola (Natür-bal), T‑503/15, not published, EU:T:2016:261, paragraph 13).

15 EUIPO’s plea of inadmissibility raised in respect of the first head of claim of the application cannot therefore, given that reformulation, be upheld.

16 Next, by its second head of claim, the applicant asks the Court to allow definitive registration of the mark applied for. In that regard, it is apparent from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the Courts of the European Union. It is therefore not for the Court to issue directions to EUIPO; rather, it is for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see judgment of 28 February 2014, Genebre v OHIM — General Electric (GE), T‑520/11, not published, EU:T:2014:100, paragraph 14 and the case-law cited).

17 It follows that the plea of inadmissibility raised by EUIPO in respect of the second head of claim of the application must be upheld and that the applicant’s claim that the Court should allow registration of the mark applied for must be rejected as inadmissible.

18 The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for may not be registered if, because of its identity with, or similarity to, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two 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.

20 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. 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).

21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).

22 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to conclude that the conditions for applying Article 8(1)(b) of Regulation No 207/2009 were satisfied in the present case.

23 As a preliminary point, it must be borne in mind that, according to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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).

24 For the purposes of defining the relevant public, it is necessary to take into account consumers likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see, to that effect, judgments of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23, and of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28).

25 In the present case, the Board of Appeal noted, in paragraph 10 of the contested decision, that the services at issue were intended for the general public, which has an average level of attention, and for a professional public, which has a high level of attention. Consequently, it took into consideration a public formed of average consumers in the European Union, who are reasonably well informed, attentive and circumspect.

26 The applicant maintains, contrary to the Board of Appeal, that the relevant public is made up of specialists in the field of insurance, where the applicant’s main activity lies. The consumers targeted are, therefore, more attentive.

28 In that regard, it should first be noted that, as the earlier mark is an EU trade mark, the Board of Appeal acted correctly in taking into account EU consumers.

29 Next, in order to determine the relevant public, it is necessary to take into account all of the services in respect of which registration of the mark is sought, regardless of the actual use of that mark (see, to that effect, judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 26). Consequently, even though the applicant claims that the relevant public is composed exclusively of specialists in the field of insurance, it is necessary to take into account each of the services for which registration is sought, inter alia sickness or accident insurance services, and to consider that each of those services is liable to be intended both for specialist consumers and for the general public.

30 According to settled case-law, when the relevant public is made up of two categories of consumers each having a different level of attention, the public with the lower level of attention must be taken into consideration (see judgments of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392 paragraph 21 and the case-law cited, and of 20 May 2014, ARIS, T‑247/12, EU:T:2014:258 paragraph 29). The Board of Appeal was therefore right to take into account the general public in order to determine whether there is a likelihood of confusion.

31 Finally, as regards the level of attention of consumers of the services in question, who, as already stated in paragraph 29 above, are consumers of all of the services in respect of which registration was sought, it must be held that the applicant has failed to adduce any evidence to show that the Board of Appeal erred in taking the view, in paragraph 10 of the contested decision, that the general public has an average level of attention.

32 Accordingly, for the purposes of assessing the likelihood of confusion, the general public having an average level of attention must be taken into account.

33 According to settled case-law, in assessing the similarity of goods or services, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 85, and of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 21). Other factors may also be taken into account, such as the distribution channels of the goods concerned (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).

34 In the present case, it follows from paragraph 11 of the contested decision that the Board of Appeal, like the Opposition Division, did not compare the services in question in detail. It took the view that they were identical, despite slightly different wording, noting that they concerned banking services, insurance services and real-estate services, and stated that that finding had not been seriously contested by the applicant.

35 The applicant submits, on the contrary, that the services in question are different on the ground that its sector of business, namely brokerage and insurance, differs from the financial sector in which the opponent operates.

36 In that regard, it must be noted that it is apparent from the list of services in respect of which registration was sought that they go beyond the mere brokerage and insurance services referred to by the applicant and cover also financial, monetary and real-estate matters. Likewise, it must be noted that the services covered by the earlier mark, in Class 36, relate not only to financial matters but also to insurance and other monetary and real-estate matters.

37 Under Article 8(1)(b) of Regulation No 207/2009, the comparison must concern the description of the services covered by the marks at issue and not the services for which those marks are actually used, unless, following an application in accordance with Article 42(2) and (3) of Regulation No 207/2009, the proof of use of the earlier mark is provided only in respect of some of the services for which it is registered (judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 30 and the case-law cited). Proof of use of the earlier mark has not, however, been requested in the present case. The applicant’s argument referred to in paragraph 35 above must therefore be rejected as ineffective.

38 Moreover, it is apparent from the comparison of the services in question, in paragraph 36 above, that the services covered by the marks at issue are largely identical.

39 It may, however, be stated that, as regards insurance services, the mark applied for covers the field of insurance in general and, in particular, several types of insurance or insurance services. The earlier mark, for its part, covers more specifically financial assessment in terms of insurance, insurance information and ‘financial services relating to insurance, including services rendered by agents and brokers in the field of insurance’. Accordingly, the services in respect of which registration has been sought have a broader scope than that of the services in respect of which the earlier mark was registered. According to case-law, services can be regarded as identical where the services covered by the earlier mark are included in a more general category, designated by the mark applied for (see, to that effect, judgment of 4 June 2015, Stayer Ibérica v OHIM — Korporaciya ‘Masternet’ (STAYER), T‑254/13, not published, EU:T:2015:362, paragraph 84 and the case-law cited).

40 In those circumstances, the Board of Appeal did not commit an error of assessment in concluding that the services in question were identical.

41 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 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).

42 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 on the basis of the dominant element alone. 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 of the mark are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43).

43 It is in the light of those principles that the signs at issue must be examined.

– The distinctive and dominant character of the elements comprising the signs at issue

44 The applicant submits that the Board of Appeal erred in basing its assessment on a secondary element of the signs at issue, namely the word element ‘morgan & morgan’, without noting the differences between the dominant elements of those signs, namely the figurative elements.

46 It follows from the contested decision that the Board of Appeal based the comparison of the signs at issue on the overall impression which they produced. It took the view, in particular, that, in the case of the mark applied for, the relevant public, without ignoring the figurative element, would focus its attention on the word element ‘morgan & morgan’. It also took the view, as regards the earlier mark, that important information concerning the mark was provided by the word element ‘morgan & morgan’, since the relevant public would understand the word element ‘mmg trust’, read in conjunction with the words appearing above, as designating a trust of the Morgan & Morgan group.

47 In that respect, as regards the mark applied for, it must be noted that it is a composite mark including a figurative element comprising three lines repeated twice and separated by an ampersand, which is likely to be perceived by the relevant public as meaning ‘m & m’. Given its position within the sign and its size, the figurative element occupies an important position. However, it is followed by a word element, ‘morgan & morgan’, which is, admittedly, smaller but not insignificant and which, on account of its meaning, that figurative element serves to highlight. It should also be noted that, when a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the services in question by citing the name rather than describing the figurative element of the mark (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 39, and of 25 May 2016, Ice Mountain Ibiza v EUIPO — Marbella Atlantic Ocean Club (ocean ibiza), T‑6/15, not published, EU:T:2016:310, paragraph 45 and the case-law cited). In those circumstances, the Board of Appeal did not commit an error of assessment in finding that the relevant public would focus its attention on the word element ‘morgan & morgan’.

48 As regards the earlier mark, it is also a composite mark, composed of a figurative element, representing three stripes slanted to the right followed by a word element, ‘mmg trust’, and a second word element in a smaller font, which is nonetheless entirely legible, ‘miembro del grupo morgan & morgan’. In that regard, it must be noted that the words ‘trust’ and ‘miembro del grupo’ are descriptive. Given that the figurative element is not particularly original and in view of the size of the word element ‘mmg trust’, the consumer’s attention will be drawn rather to the elements ‘mmg’ or ‘mmg trust’. By contrast, given its font and position at the bottom of the sign, the word element ‘miembro del grupo morgan & morgan’ is a secondary element, which is nonetheless not negligible in so far as concerns the element ‘morgan & morgan’ on account of that element’s distinctiveness and its capacity to provide consumers with information as to the origin of the supplier of the services.

49 In those circumstances, the applicant is not justified in claiming that the figurative element of the earlier mark is its dominant element. It is, however, justified in its assertion that the word element ‘morgan & morgan’ occupies a secondary position in the earlier sign.

50 Visually, the Board of Appeal took the view that the signs at issue showed a degree of similarity, since their overall structure, comprising a figurative element alluding to the letter ‘m’ and a word element, was identical and each of the signs included the word element ‘morgan & morgan’.

51 The applicant disputes the Board of Appeal’s assessment on the ground that the dominant figurative elements of each of the signs at issue are very different and that the common word element ‘morgan and morgan’, which constitutes only part of the word element of the earlier mark, is entirely secondary in the mark applied for.

52 In that regard, it must be noted, as stated by the Board of Appeal, that the signs at issue both include, before the word element, a figurative element consisting, for the sign for which registration is sought, of three stripes which appear twice separated by an ampersand and, for the earlier sign, of three stripes sloping to the right. Moreover, the signs at issue both contain the word element ‘morgan & morgan’, but differ in terms of colour and the additional presence, in the earlier sign, of the words ‘mmg trust’ and ‘miembro del grupo’, the latter element and the word ‘trust’ being, as stated in paragraph 48 above, descriptive. On account of the similarity of the overall structure of the two marks, the degree of similarity, albeit low, of the figurative elements, and the presence in the two signs of the word element ‘morgan & morgan’, there is some degree of similarity between the signs at issue which cannot be cancelled out by the differences established. The Board of Appeal therefore did not commit an error of assessment in finding that there was a degree of visual similarity between the signs at issue, which was nonetheless not high.

53 The Board of Appeal took the view that, phonetically, on account of the presence of the word element ‘morgan & morgan’ in both signs, they had a certain degree of similarity, which was nonetheless not high owing to the presence of additional text in the earlier mark.

54 The applicant disputes that assessment on the ground that, unlike the mark applied for, the earlier mark has the ‘musicality’ of eight English and Spanish words while the mark applied for has only the word element ‘morgan & morgan’.

55 In that regard, it should be noted that the signs at issue have the word element ‘morgan & morgan’ in common. The mere fact that the earlier mark contains eight words, including three Spanish words, which are, moreover, descriptive, cannot in itself deprive the marks at issue of all phonetic similarity, even a low degree of similarity. In those circumstances, the Board of Appeal was right to find that the signs at issue had a certain degree of phonetic similarity, which, nevertheless, was not high.

56 Without, however, establishing the degree of conceptual similarity between the marks at issue, the Board of Appeal took the view that the relevant public might perceive the signs at issue as designating an undertaking bearing the name Morgan & Morgan and their respective figurative elements as representing one or more stylised ‘m’s, referring to the name Morgan.

57 The applicant disputes that assessment, on the ground that the earlier mark refers, via the term ‘trust’, to the notion of trust, in the sense of confidence, whereas the mark applied for refers to the name Morgan & Morgan.

58 In that regard, as the applicant submits, the mark applied for refers to a name. However, the applicant cannot claim that the earlier mark refers to the notion of trust, in the sense of confidence, since the word ‘trust’ will probably be perceived as designating a financial arrangement and not as the word ‘trust’, in the sense of confidence. Furthermore, it may be considered that the earlier mark refers to joined upper-case initials MMG, which are likely to be perceived as standing for ‘Morgan & Morgan Group’ by the professional public. By contrast, contrary to what EUIPO claims, it is not very likely that the majority of the general public would make such a link immediately. However, the presence of the name Morgan & Morgan in the marks at issue, even though that element occupies only a secondary position in the earlier mark, allows the view that there is a degree of conceptual similarity, albeit low, between the marks at issue.

59 It is apparent from settled case-law that the risk that the public may believe that the goods or services in question come from the same undertaking, or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 17, and of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 26).

60 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 signs 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).

61 Having noted that there is a certain degree of similarity between the signs at issue owing to the presence in both signs of the word element ‘morgan & morgan’, which has inherent distinctive character, and that the services in question are identical, the Board of Appeal found that there was a likelihood of confusion.

63 In that regard, it should be noted, as stated by the Board of Appeal in paragraphs 16 and 17 of the contested decision, and as EUIPO submits, that, as regards financial services, the relevant public will attach particular importance to the name of the provider of the services. In the present case, the relevant public may consider that the services in respect of which registration is sought are supplied by the company Morgan & Morgan and that those covered by the earlier mark are provided by a company, in the present case a trust, which is a ‘member of the Morgan & Morgan group’. Moreover, the services in question are often used on the basis of written offers or via the internet, with the result that visual similarities acquire more importance than phonetic differences (see, to that effect, judgment of 26 November 2015, Junited Autoglas Deutschland v OHIM — United Vehicles (UNITED VEHICLEs), T‑404/14, not published, EU:T:2015:893, paragraph 44).

64 In those circumstances, it must be held that the Board of Appeal was correct in finding that there is a likelihood of confusion between the mark applied for and the earlier mark, given the identity of the services in question and the degree of similarity between the signs at issue, deriving inter alia from the presence in both signs of the distinctive word element ‘morgan & morgan’.

65 The two more specific arguments put forward by the applicant cannot call into question that finding.

66 In the first place, the applicant relies on the peaceful coexistence of the marks at issue, on the ground that the presence of the mark applied for on the market was tolerated by the opponent, which accepted the two domain names ‘morganemorgan.it’ and ‘morganemorgan.com’ of the mark applied for.

67 In that regard, it must be noted that, admittedly, the possibility cannot be entirely rejected that, in certain cases, the coexistence of earlier marks on the market might potentially eliminate the likelihood of confusion between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the EU trade mark has duly demonstrated that that coexistence was based upon the absence of any likelihood of confusion, on the part of the relevant public, between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier mark concerned and the conflicting marks are identical (see judgment of 2 October 2013, Cartoon Network v OHIM — Boomerang TV (BOOMERANG), T‑285/12, not published, EU:T:2013:520, paragraph 55 and the case-law cited).

68 In the present case, the applicant does not rely on an earlier mark but on mere domain names, the titles of which, moreover, differ from the word element of the mark applied for. In those circumstances, that argument must be rejected.

69 In the second place, the applicant invokes rights deriving from an unregistered mark, a trade name and domain names, which it argues that it acquired before registration of the earlier mark and on which it claims that it may rely in order to invalidate that mark.

70 By doing so, the applicant may be regarded as relying on the provisions of Article 8(4) of Regulation No 207/2009, under which the proprietor of a sign other than a registered trade mark may, under certain conditions, oppose the registration of an EU trade mark.

71 However, the applicant does not oppose the registration of an EU trade mark, but seeks rejection of the opposition filed against registration of its mark as an EU trade mark, and therefore cannot validly rely on those provisions. In that regard, if the applicant considers that the earlier mark was registered in breach of its earlier rights, it may apply for a declaration of invalidity under Article 53 of Regulation No 207/2009 (see, to that effect, judgment of 13 April 2011, Bodegas y Viñedos Puerta de Labastida v OHIM — Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, not published, EU:T:2011:173, paragraph 65).

72 Consequently, the argument is ineffective and must, for that reason, be rejected, without it being necessary to rule on the existence of the earlier rights invoked.

73 It follows from all of the foregoing considerations that the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and that the action must therefore be dismissed in its entirety.

74 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.

75 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Morgan & Morgan v EUIPO - Grupo Morgan & Morgan (Morgan & Morgan) (Judgment) [2017] EUECJ T-399/15 (19 January 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T39915.html Cite as: ECLI:EU:T:2017:17, EU:T:2017:17, [2017] EUECJ T-399/15

Court of Justice of the European Communities (including Court of First Instance Decisions)