For Tune v EUIPO - Simplicity trade (opus AETERNATUM) ((EU trade mark : Opposition proceedings : Judgment) [2017] EUECJ T-815/16 (12 December 2017)

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(EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark opus AETERNATUM — Earlier EU word mark OPUS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

For Tune sp. z o.o., established in Warsaw (Poland), represented by K. Popławska, lawyer,

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 14 September 2016 (Case R 152/2016-2), relating to opposition proceedings between Simplicity trade and For Tune,

composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 22 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 7 February 2017,

having regard to the fact that no request for a hearing was submitted by the 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 13 June 2012, the applicant, For Tune sp. z o.o., 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)).

3 In the trade mark application, the applicant claimed the colours blue ‘pantone cyan c’, white and black and describes the mark in the following manner:

‘A figurative mark consisting of two words, in colour. The word “opus” is in blue (pantone cyan c) and the letter “o” is in white inside a rhombus in blue (pantone cyan c). The word “aeternatum” is in black, upper-case letters.’

4 The goods and services in respect of which registration was sought are Classes 9, 16, 35, 40 and 41 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 9: ‘Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers and pre-recorded discs’;

– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes, printed matter; book-binding material, photographs, plastic materials for packaging (not included in other classes)’;

– Class 35: ‘Advertising; business management; business administration; office functions’;

– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

5 The EU trade mark application was published in Community Trade Marks Bulletin No 2012/165 of 30 August 2012.

6 On 19 November 2012, Simplicity trade 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 the goods and services referred to in paragraph 4 above.

7 The opposition was based on the earlier EU word mark OPUS, which was filed on 6 January 2011 and registered on 4 August 2015 under the number 9642026 and covers, inter alia, goods and services in Classes 16, 35 and 41 corresponding, for each of those classes, to the following description:

– Class 16: ‘Goods made from paper and cardboard, included in class 16, namely fashion catalogs; printed matter, namely fashion catalogs; bookbinding material; photographs; stationery, namely writing utensils; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office machines (except furniture); plastic materials for packaging, included in Class 16; printers’ type; printing blocks’;

– Class 35: ‘Advertising; business management services; business administration; office functions; organization of fairs and exhibitions for commercial or advertising purposes; business management and organisation consultancy, procurement services, for others (acquisition of goods and services for other companies), import and export agencies, professional business consultancy, computerised file management, advertising agencies, invoicing, commercial administration of the licensing of goods and services, for others, marketing research, public relations, arranging trade fairs for commercial or advertising purposes, sales promotion (for others), rental of advertising space, publicity material rental, rental of advertising time on communication media (all of the aforementioned services of class 35 only relating to the fashion branch and not relating to the IT-branch); retail and wholesale services (including via the internet and by mail order) in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, spectacles, spectacle and sunglasses cases, sunglasses, skiing goggles, goggles for sports, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers’ type, printing blocks, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, pocket wallets, purses, travelling bags, shopping bags, rucksacks, handbags, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, bed and table covers, clothing, footwear, headgear, belts (clothing), scarves, neckties, collar protectors, headbands, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile)’;

– Class 41: ‘Providing of training, entertainment; presentation of live performances, arranging and conducting of seminars, arranging and conducting of workshops (training), arranging of exhibitions for cultural or educational purposes; (all of the aforementioned services of class 41 are only relating to the fashion branch and not relating to the IT-branch)’.

8 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9 On 23 November 2015, the Opposition Division partially upheld the opposition, in respect of the goods and services in Classes 16, 35 and 41 corresponding, for each of those classes, to the following description:

– Class 35: ‘Advertising; business management; business administration; office functions’;

– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

10 On 22 January 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

11 By decision of 14 September 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

12 First, the Board of Appeal found, that, as regards the goods in Class 16, the relevant public was the general public, the degree of attention of which was average. As regards the services in Class 35, it found that that public consisted of consumers who were professionals and whose level of attention was consequently rather high. Furthermore, with regard to the services in Class 41, the Board of Appeal stated that, as those services were very varied and were aimed both at the general public and at professionals, the level of attention of the public was normal, and that, even though some of the services were limited to the ‘fashion branch’, in which the public consisted of professionals, some of those services were also aimed at the general public and that, in that case, in accordance with the case-law, a lower level of attention had to be taken into consideration.

13 Secondly, as far as the comparison of the goods and services was concerned, the Board of Appeal found that the goods in Class 16 and the services in Class 35 covered by the mark applied for were identical to the goods and services covered by the earlier mark. As regards the services in Class 41 covered by the mark applied for, the Board of Appeal found, in essence, that those services were either identical or similar to the services covered by the earlier mark.

14 As far as the comparison of the marks at issue was concerned, the Board of Appeal found, in the first place, that they were visually similar, because, in essence, the differences between the two marks were incapable of counterbalancing the element in common, ‘opus’, which constitutes the whole of the earlier mark. In the second place, from a phonetic standpoint, it took the view, first, that the signs were similar, if not almost identical, given that the pronunciation of the marks coincided in the syllables ‘o’ and ‘pus’, which are present in both signs. Secondly, it found that it was likely that a significant part of the relevant public would not pronounce the element ‘aeternatum’ when it read the sign applied for. In the third place, from a conceptual standpoint, it found that, for a significant part of the relevant public, the signs had in common the concept corresponding to the word ‘opus’, understood as a musical composition or an artistic work, whereas the word ‘aeternatum’ and the figurative elements had no independent meaning.

15 Thirdly, as regards the distinctive character of the earlier mark, the Board of Appeal found, in essence, that that distinctive character was normal, because, since the word ‘opus’ referred to an artistic work or a musical composition, it was relatively original in relation to the goods and services covered by the earlier mark, which did not relate to the music sector.

16 Fourthly, as regards the global assessment of the likelihood of confusion, the Board of Appeal found, first, that the signs were similar overall to at least a normal degree and the goods and services at issue were either identical or similar to at least a normal degree. Secondly, it took the view that the relevant public had a level of attention which varied from average to high and that the earlier mark had a normal degree of distinctiveness. In the light of those findings, the Board of Appeal therefore concluded that there was a risk that the relevant public might think that the goods and services at issue came from the same undertaking or, as the case may be, from two economically-linked undertakings.

– order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs.

19 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

20 The applicant disputes, in essence, that the signs at issue are similar and takes issue with the Board of Appeal’s assessment relating to the likelihood of confusion. That plea comprises four complaints, alleging, in essence, (i) that the difference in the relevant public with regard to Classes 16 and 41, on the one hand, and Class 35, on the other, was not taken into account, (ii) that the comparison of the marks at issue from the visual, phonetic and conceptual standpoints was incorrect, (iii) that the assessment of the earlier mark’s distinctive character was incorrect, and (iv) that the assessment as to the likelihood of confusion was incorrect.

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

22 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).

23 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).

24 That legal context having been referred to, it is now appropriate to examine the single plea put forward by the applicant in the present case.

25 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 or 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).

26 From a geographical standpoint, the Court, first of all, upholds the finding set out in paragraph 18 of the contested decision — a finding which has not, moreover, been disputed by the applicant — that the relevant territory is that of the European Union.

27 As regards the definition of the relevant public, the applicant does not dispute the Board of Appeal’s analysis, but takes the view, first, that the Board of Appeal did not take into account the fact that the services in Class 35 were aimed at professionals with a high level of attention and, secondly, that the Board of Appeal’s decision is unlawful because the likelihood of confusion must be analysed separately, on the one hand, with regard to Classes 16 and 41 and, on the other hand, with regard to Class 35, and that that is so precisely because of the difference in the relevant public’s level of attention.

28 In the response, EUIPO submits that, the Board of Appeal did indeed take the high level of attention of the relevant public with regard to the services in Class 35 into consideration in assessing the likelihood of confusion and that there is therefore no need to carry out a separate assessment of the likelihood of confusion with regard to Classes 16 and 41, on the one hand, and Class 35, on the other hand.

29 In the first place, it must be stated, as the Board of Appeal correctly pointed out in paragraph 19 of the contested decision, that the goods and services at issue are aimed at the general public and also at ‘business customers with specific professional knowledge or expertise’. The Board of Appeal then deduced from this that the level of attention could vary from average, with regard to the goods in Class 16, which are aimed at the general public, to high, with regard to the services in Class 35, which are aimed at consumers who are professionals. Lastly, as regards the services in Class 41, the Board of Appeal concluded that, as they are services which are rather varied and are aimed at both the general public and at professionals, the level of attention was normal.

30 According to settled case-law, the relevant public with regard to which the likelihood of confusion has to be assessed consists of users who are likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (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 15 January 2013, Gigabyte Technology v OHIM — Haskins (Gigabyte), T‑451/11, not published, EU:T:2013:13, paragraph 37).

31 In the present case, it is first of all common ground that the Board of Appeal analysed the relevant public category by category and concluded, on the basis of the assessments that it had made, which are correct, that the level of attention could vary from average to high.

32 Consequently, the applicant cannot reasonably maintain that the Board of Appeal did not take account of the level of attention of the relevant public in assessing the likelihood of confusion. It is clear from paragraph 55 of the contested decision that, in carrying out the global assessment of the likelihood of confusion, the Board of Appeal expressly referred to the fact that, in the present case, the relevant public consisted of the general public and of consumers who are professionals with specific knowledge.

33 The applicant’s claims referred to in paragraph 27 above cannot therefore succeed.

34 As regards the comparison of the goods and services, the Court upholds the Board of Appeal’s assessment, which has not, moreover, been disputed by the applicant, that the goods in Class 16 and the services in Class 35 covered by the mark applied for are identical to the goods and services covered by the earlier mark and that the services in Class 41 covered by the mark applied for are either identical or similar to the services covered by the earlier mark.

35 Regarding the comparison of the signs, it should, in the first place, be noted that, according to settled case-law, 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 ultimately plays a decisive role in the global assessment of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not, in general, engage in a specific 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).

36 Furthermore, assessment of the similarity between two marks, one of which is a composite trade mark, means more than taking just one component of that composite trade mark and then 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).

37 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 element is one which is capable, by virtue of its characteristics, 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 (see, to that effect, 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).

38 That case-law having been referred to, it is now appropriate to assess, in that order, whether the marks at issue are, first, visually similar, secondly, phonetically similar and, lastly, conceptually similar.

39 In paragraph 45 of the contested decision, the Board of Appeal found, having regard to its assessment of their distinctive and dominant elements, that the signs were visually similar because the differences between them were incapable of counterbalancing the element in common ‘opus’, which is the only element in the earlier mark.

40 In that regard, the applicant maintains in essence that the marks at issue are ‘totally different’ and that the Board of Appeal therefore erred in finding that the signs under comparison were visually similar.

41 EUIPO submits that the differentiating elements in the mark applied for do not neutralise the similarity resulting from the reproduction of the word ‘opus’, which is dominant in the mark applied for, and that, in particular, the figurative element and the colours in the contested sign will, since they cannot be considered to be distinctive graphic elements, be perceived by the relevant public as purely decorative and will have no impact on the public’s capacity to perceive, read and pronounce the word element ‘opus’.

42 It is therefore appropriate to analyse, first, whether the word element ‘opus’ in the mark applied for is dominant and, secondly, whether the elements in that mark are distinctive.

43 In assessing whether one or more given components of a composite trade mark is dominant, account must be taken, according to the relevant case-law, principally 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).

44 That said, it must be pointed out that, in paragraph 39 of the contested decision, the Board of Appeal takes the view that, in the present case, the relevant public will focus its attention above all on the word element ‘opus’, because it is the largest element in the composite mark applied for and is placed above the smaller element, ‘aeternatum’.

45 Although the applicant submits, on the contrary, that there is no dominant or negligible element in the mark applied for and that it is thus the overall impression created by that mark which must be taken into account in the comparison with the earlier mark, the fact, however, remains that the word element ‘opus’ is indisputably larger than the word element ‘aeternatum’ and is placed above that latter word element. The figurative elements in the mark applied for, namely, in essence, the graphic stylisation of the word element ‘opus’ and the design of the first letter, ‘o’, only increase further the attention paid to that element.

46 Consequently, it must be held, as the Board of Appeal found, that, in the mark applied for, the word element ‘opus’ is indeed dominant in relation to the other word element ‘aeternatum’ and the applicant’s claim must therefore be rejected.

47 The applicant submits that the graphic elements in the mark applied for are very distinctive. In particular, it takes the view, first, that the composition of the two word elements, ‘opus’ and ‘aeternatum’, has been emphasised by means of two different and distinctive colours, blue and white, and, secondly, that the first letter in the word ‘opus’ has a very fanciful design, because it consists of rings placed in a blue rhombus. In the applicant’s opinion, a less observant part of the relevant public may not even read the letter ‘o’, regarding it merely as a graphic element.

48 As regards those arguments on the part of the applicant, it must be pointed out, first of all, that, in paragraph 36 of the contested decision, the Board of Appeal states that the letter ‘o’ is contained within a blue square with a geometric shape which will be perceived by the relevant public as a decorative and meaningless element and, secondly, that, in paragraph 44 of that decision, it states that the slightly stylised typeface of the mark applied for and the difference in the use of upper- or lower-case letters does not have an effect on the overall impression that the mark produces.

49 Since those visual assessments are correct and objective, it must be held that the Board of Appeal did not make any error of assessment in stating that the graphic elements of the mark applied for were essentially decorative and non-distinctive.

50 Consequently, since the word element in common, ‘opus’, is dominant, as has already been held in paragraph 46 of the present judgment, and the graphic elements in the mark applied for are weakly distinctive, the Board of Appeal was right in finding that the mark applied for was visually similar to the earlier word mark.

51 Moreover, that finding cannot be called into question by any of the additional arguments put forward by the applicant.

52 Although it is evident that elements of a graphical nature must be taken into account in comparing the signs, whether differences of a graphical nature are decisive depends on the assessment of the distinctiveness and dominant nature of the elements of the marks. In the present case, that assessment led the Board of Appeal to find, correctly, and contrary to what the applicant submits, that the graphic elements in the mark applied for were essentially decorative and subordinate in relation to the dominant element ‘opus’, the word element which the marks at issue have in common.

53 It must also be pointed out, as the Board of Appeal noted in paragraph 45 of the contested decision, that the earlier mark is fully included in the mark applied for. That fact alone is liable to create both a strong visual and phonetic similarity between the signs at issue (see, to that effect, judgments of 8 March 2005, Leder & Schuh v OHIM — Schuhpark Fascies (JELLO SCHUHPARK), T‑32/03, not published, EU:T:2005:82, paragraph 39; of 25 October 2012, riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, paragraph 49, and of 29 January 2013, Fon Wireless v OHIM — nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 48).

54 Furthermore, it must be borne in mind, contrary to what the applicant submits in one of its claims, that, according to settled case-law, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of EUIPO (see, to that effect, judgments of 16 February 2000, Procter & Gamble v OHIM (Soap bar shape), T‑122/99, EU:T:2000:39, paragraphs 60 and 61; of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraphs 46 and 47, and of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 35), with the result that EUIPO cannot, in any event, be bound by its own previous decisions (judgment of 22 March 2017, Intercontinental Exchange Holdings v EUIPO (BRENT INDEX), T‑430/16, not published, EU:T:2017:198, paragraph 43).

55 It must also be pointed out, as regards the visual comparison, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited; judgment of 5 May 2017, Globo Media v EUIPO — Globo Comunicação e Participações (GLOBO MEDIA), T‑262/16, not published, EU:T:2017:315, paragraph 37).

56 The applicant, relying on the judgment of 4 February 2014, Mega Brands v OHIM — Diset (MAGNEXT) (T‑604/11 and T‑292/12, not published, EU:T:2014:56), submits that the figurative nature of a mark including a dominant word element tends, in an overall impression, to reduce its similarity with another sign containing a word element which is identical or similar to that element. However, it must be pointed out that such an interpretation of that judgment cannot, in any event, constitute a criterion which applies in every case, because the assessment as to whether the signs are similar is contingent on a set of factors which must be analysed on the basis of the circumstances of each particular case.

57 The applicant’s arguments must therefore be rejected and it must be held that the marks at issue are indeed visually similar.

58 In paragraph 47 of the contested decision, the Board of Appeal found that the signs were also phonetically similar, if not almost identical. According to the Board of Appeal, first, the pronunciation of the marks coincides in the syllables ‘o’ and ‘pus’, which are present identically in both signs, and, secondly, it is likely that a significant part of the relevant public will not pronounce the element ‘aeternatum’ as the latter plays a subordinate role due to its position, its size and the fact that it is longer and more difficult to pronounce than the first word, ‘opus’.

59 The applicant maintains, by contrast, that the word element ‘aeternatum’ differentiates the marks at issue because consumers tend to perceive a mark as a whole and because that word element is easier to read and not likely to be omitted since it has no graphical elements and is written in capital letters.

60 That argument is, however, unfounded. The fact remains that the pronunciation of the mark applied for includes the pronunciation of the earlier mark in its entirety, which necessarily presupposes that there is a degree of similarity (see also paragraph 53 of the present judgment), particularly because the word ‘opus’ will be read first, or will even be the only element to be read. Since the consumer generally pays greater attention to the initial part of a mark than to the final part, the first word ‘opus’ therefore plays a decisive part in the phonetic assessment of the mark applied for (see, to that effect, judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51).

61 Furthermore, that finding cannot be called into question by the fact that there is a second word, ‘aeternatum’, in the mark applied for, in particular in view of the length of that word and of the probable difficulty which the relevant public will have in pronouncing a word which is not part of everyday vocabulary. The word ‘aeternatum’, which is present only in the mark applied for, admittedly results in a difference in sound between the two signs in question, but does not affect the phonetic identity between the only word element in the earlier mark, ‘opus’, and the first word element in the mark applied for, which is clearly separate from the rest of that sign.

62 In conclusion, it must be held that, assessed as a whole, the difference in sound between the signs at issue does not make it possible to conclude that the phonetic identity as regards the first word element is completely cancelled out by the presence of the term ‘aeternatum’. The applicant’s claim must therefore be rejected and the marks at issue must be held to be phonetically similar to an average degree.

63 In paragraph 48 of the contested decision, the Board of Appeal found that, from a conceptual standpoint, the signs at issue had the concept of ‘opus’ in common for a significant part of the relevant public, whereas the word ‘aeternatum’ and the additional figurative elements had no meaning for a significant part of the relevant public, that is the entire European Union.

64 By contrast, the applicant submits that the Board of Appeal underestimated the conceptual differences between the two marks at issue, because the relevant public which has had a secondary education will be capable of grasping the meaning of a Latin expression such as the words ‘opus’ and ‘aeternatum’. It may therefore, in the applicant’s view understand the terms ‘opus’ and ‘aeternatum’ as meaning ‘everlasting piece of work’. The applicant maintains that, in any event, the part of the relevant public which cannot understand that expression does not ultimately understand either of the two words, thus giving the visual perception and the interpretation of the graphic element of rings in a rhombus as a compact disc (CD) in a box precedence over the conceptual perception.

65 It must, however, be pointed out that, irrespective of the fact that the official languages of some Member States have Latin roots, the two marks at issue have in common one and the same word, ‘opus’, which is understood by a significant part of the relevant public, and that that public will therefore be led to regard those marks as conceptually similar.

66 The conceptual similarity between the marks at issue is not called into question by the presence of the term ‘aeternatum’ in the mark applied for. Even if that word were to be understood by a significant part of the relevant public as referring, in that public’s mother tongue, to the concept of eternity, the understanding of the terms ‘opus’ and ‘aeternatum’ as a whole would still refer, from a conceptual standpoint, to the concept of a ‘work’ as conveyed by the word ‘opus’, which is common to both marks, on its own.

67 Furthermore, it must be pointed out that, contrary to what the applicant maintains, even if a part of the relevant public were not able to understand either of the two terms, that would not call into question the fact that another part of the relevant public might actually be able to understand them (see paragraphs 65 and 66 above). In those circumstances, that argument has no bearing on the assessment of the conceptual similarity.

68 Consequently, the applicant’s arguments must be rejected and the Board of Appeal’s assessment regarding the conceptual similarity of the marks at issue must be upheld.

69 In paragraphs 49 to 52 of the contested decision, the Board of Appeal found that the distinctive character of the earlier mark was normal because the word ‘opus’ was relatively original in relation to the goods and services covered by the earlier mark, which do not relate to the musical sector.

70 By contrast, the applicant submits that the earlier mark has a very low degree of distinctiveness and that the proprietor of that mark did not, moreover, claim that that sign was particularly distinctive by virtue of its intensive use or reputation.

71 According to well-established case-law, the assessment of the likelihood of confusion also depends on the distinctive character that characterises the earlier mark, either because such a character is inherent in the mark in question or because it is recognised as having such a character on account of its recognition by the relevant public on the market at issue. Although the likelihood of confusion will be greater the more distinctive the earlier mark is, it cannot be concluded from that that the earlier trade mark’s weak distinctive character constitutes a condition under which a finding of a likelihood of confusion, on account, in particular, of a visual, phonetic or conceptual similarity between the signs and a similarity between the goods or services covered, would be prevented (see, to that effect, 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).

72 In the present case, contrary to what the applicant submits, the Board of Appeal’s reasoning that the distinctive character of the earlier mark is normal because of the originality of the word ‘opus’ in relation to the goods and services covered by that mark, which include, inter alia and by way of guidance, goods made from cardboard, advertising services and the service of providing of training, must be upheld. That mark has a normal degree of inherent distinctiveness arising out of the fact that it is not, as a whole, descriptive, allusive or laudatory with regard to the goods and services for which it is registered.

73 In that regard, it must also be pointed out that the other party before the Board of Appeal, the proprietor of the earlier mark, did not claim that that sign has enhanced distinctiveness on account of its use.

74 Consequently, the arguments which the applicant has put forward in that regard must be rejected and the findings which the Board of Appeal arrived at in that regard with a view to establishing that there was a likelihood of confusion must be upheld.

75 The applicant submits, in essence, that the differences between the marks at issue are sufficient to exclude the possibility that a part of the public might believe that the goods at issue come from the same undertaking or, at least, from economically-linked undertakings. Furthermore, it takes the view that the similarities between the two marks and the identity or similarity of the goods and services are not sufficient to conclude that there is a likelihood of confusion on the part of the relevant public, which, in general, demonstrates a reasonable level of attention.

77 According to settled case-law, a global assessment of the likelihood of confusion implies that there is some interdependence between the factors taken into account, 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).

78 In paragraphs 53 to 59 of the contested decision, the Board of Appeal found, in essence, that there was a likelihood of confusion between the marks at issue in respect of the identical or similar goods and services covered by those marks.

79 It must first of all be pointed out that, in the present case, the goods and services covered by the marks at issue are either identical or similar to a normal degree. Secondly, it must, once again, be stated that the distinctive word element ‘opus’ in the mark applied for is not only common to both of the marks at issue, but is also the dominant element in the mark applied for, which means that the two marks in question are visually and conceptually similar and are phonetically similar to an average degree.

80 Consequently, as has already been stated in paragraph 50 above, since the word element ‘opus’ in the mark applied for is the dominant element in the present case, it will ultimately have more impact on consumers than the other element of which that mark also consists (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).

81 On account of the interdependence of those factors and since the distinctive character of the earlier mark must be regarded as normal, it must, for the reasons set out in paragraph 79 above, be held that there is a likelihood of confusion on the part of the relevant public inasmuch as it might think that the goods and services at issue come from the same undertaking or from economically-linked undertakings.

82 Consequently, the arguments which the applicant has put forward in that regard must be rejected and it must be held that the Board of Appeal was right in finding that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion on the part of the relevant public between the mark applied for and the earlier mark.

83 In view of all of the foregoing, the single plea in law put forward by the applicant must be rejected and the action must therefore be dismissed in its entirety.

84 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.

85 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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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> For Tune v EUIPO - Simplicity trade (opus AETERNATUM) ((EU trade mark : Opposition proceedings : Judgment) [2017] EUECJ T-815/16 (12 December 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T81516.html Cite as: ECLI:EU:T:2017:888, [2017] EUECJ T-815/16, EU:T:2017:888

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