France.com v EUIPO - France (FRANCE.com) (EU trade mark - Judgment) [2018] EUECJ T-71/17 (26 June 2018)

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(EU trade mark - Opposition proceedings - Application for the EU figurative mark FRANCE.com - Earlier international figurative mark France - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

France.com, Inc., established in Coral Gables, Florida (United States), represented by A. Bertrand, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

French Republic, represented by F. Alabrune, D. Colas and D. Segoin, acting as Agents,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 20 October 2016 (Case R 2452/2015-1) relating to opposition proceedings between the French Republic and France.com,

composed of A.M. Collins, President, R. Barents and J. Passer (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 26 January 2017,

having regard to the response of EUIPO lodged at the Court Registry on 26 May 2017,

having regard to the response of the intervener lodged at the Court Registry on 9 June 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks 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 9 August 2014, Mr Jean-Noël Frydman 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 The services in respect of which registration was sought are in Classes 35, 39 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 35: ‘Advertising services, namely, promoting and marketing the goods and services of others in the field of travel, shopping, business, entertainment, home decor, fashion, wines, food and education’;

– Class 39: ‘Providing an on-line searchable computer database featuring information on travel; Provision of travel information; Travel and transport information service’;

– Class 41: ‘On-line publications, including blogs featuring articles in the field of travel, shopping, business, entertainment, home decor, food, wine, education, cultural activities and news’.

4 The trademark application was published in Community Trade Marks Bulletin No 168/2014 of 9 September 2014.

5 On 5 December 2014, the intervener, the French Republic, 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 the services referred to in paragraph 3 above.

6 The opposition was based on international registration No 1032440 designating the European Union for the following mark:

7 The goods and services in respect of which the earlier mark is registered are in, inter alia, Classes 9, 35 and 41, and correspond, as regards the goods and services concerned by the present dispute, to the following description:

– Class 9: ‘Apparatus and media for recording, transmission or reproduction of sound, images and data; data processing equipment; computer software’;

– Class 35: ‘Advertising, promotion of third parties’ goods and services on all media; public relations; business management and organisation consultancy; organisation of trade shows, exhibitions and events for commercial or advertising purposes’;

– Class 41: ‘Training, entertainment, cultural activities, organisation of competitions (education or entertainment); arranging and conducting of colloquiums, conferences and congresses and events for cultural or educational purposes; publication of texts, other than publicity texts; publication of electronic books and journals on-line; game services provided on-line from a computer network’.

8 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).

9 On 4 June 2015, EUIPO registered the assignment of the mark applied for to the applicant, France.com, Inc.

11 On 9 December 2015, the intervener 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.

12 By decision of 20 October 2016 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division.

13 It found, in paragraphs 13 and 14 of the contested decision, that the services covered by the mark applied for were aimed at both the general public and professionals, that the level of attention of the relevant public was average to high and that the territory in respect of which the likelihood of confusion had to be assessed was the European Union.

14 With regard to the comparison of the services, the Board of Appeal upheld, in paragraph 15 of the contested decision, the finding of the Opposition Division that the services in question were in part identical and in part similar.

15 With regard to the comparison of the signs at issue, it concluded, in paragraph 23 of the contested decision, that the signs had an average degree of visual similarity on account of their structure and the features they had in common and notwithstanding their different designs. It found, in paragraph 24 of the contested decision, that the signs at issue were phonetically identical, as (i) the word ‘france’ was the only word in the earlier mark and also appeared in a central position in the mark applied for and (ii) consumers would hardly notice the abbreviation ‘.com’ in that mark. The Board of Appeal found, in paragraph 25 of the contested decision, that the signs at issue were also conceptually identical, as they both referred to France and to the image of the Eiffel Tower. It therefore concluded, in paragraph 26 of the contested decision, that the signs in question were highly similar overall.

16 As regards the examination of the likelihood of confusion between the signs at issue, the Board of Appeal concluded, in paragraph 29 of the contested decision, that - as the services covered by the mark applied for are in part identical and in part similar to those in respect of which the earlier mark is registered and the signs at issue are almost identical phonetically and conceptually - a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 could not be ruled out.

– refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

‘(i) In light of [Article] 8(2) [now Article 8(2) of Regulation 2017/1001] and Article 41(1) [now Article 46(1) of Regulation 2017/1001] of [Regulation No 207/2009] and Rule 15(2)(b) and Rule 17 of [Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark] [now Articles 2(2)(b) and 5 of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)], in opposition [proceedings], does the applicant, as the defendant to the opposition, have the right to invoke prior rights which could constitute prior rights to the earlier trademark used as a prior right in the opposition?

(ii) Does the French [Republic] have any kind of prior intellectual property right [in] the word ‘France’, which is not the official name of the French State and is just a geographical entity?

(iii) If the answer to the question (ii) is ‘no’, should the name ‘France’ be considered as a word which is in the public domain and [in respect of] which no one can claim any intellectual [property] right?

(iv) If the answer to the question (ii) is ‘yes’, should the fact that the French [Republic] [to date] has never claim[ed] any rights in the word ‘France’, except [as] against [the applicant] be considered as […] discrimination against the applicant?’

– reject the notice of opposition filed by the intervener to registration of the mark applied for;

– order EUIPO to bear its own costs and to pay those incurred by the applicant in connection with the proceedings before the Court;

– order EUIPO and the intervener to each pay half of the costs necessarily incurred by the applicant in connection with the proceedings before the Board of Appeal of EUIPO.

The applicant’s request that the General Court refer questions to the Court of Justice for a preliminary ruling

19 In its application, the applicant requests that the Court refer the questions set out in paragraph 17 above to the Court of Justice for a preliminary ruling.

20 First, it should be noted that the procedure laid down by Article 267 TFEU is an instrument for cooperation between the Court of Justice and the national courts. Accordingly, it is solely for a national court before which a dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine, in the light of the particular circumstances in each case, both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court (see judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 37 and the case-law cited).

21 Secondly, the powers of the General Court are those set out in Article 256 TFEU, read subject to Articles 50a and 51 of the Statute of the Court of Justice of the European Union. Under those provisions, the General Court has no power to refer questions to the Court, pursuant to Article 267 TFEU, for a preliminary ruling (see, to that effect, judgment of 15 January 2015, MONACO, T‑197/13, EU:T:2015:16, paragraph 38).

22 Consequently, the request that questions be referred to the Court of Justice for a preliminary ruling must be rejected as inadmissible.

23 By letter of 28 July 2017, the applicant challenged the response lodged with the Court by the French Republic on the ground that it is inadmissible. First, it is alleged that the response was lodged by persons who were not duly authorised to represent the French Government. Second, the French version had not been signed by all the persons named at the end of the response. Third, the English version of the response had not been signed, even though the language of the case is English.

24 In that regard, it suffices to note, first, that, as the intervener in the present case is a Member State, it is represented by agents, in accordance with the first paragraph of Article 19 of the Statute of the Court of Justice of the European Union; secondly, that the signatories of the French Republic’s response are duly recognised at the Court Registry as agents of that Member State and, thirdly, that Member States are entitled to use their own official language in procedural documents lodged before the Court, pursuant to Article 46(4) of the Rules of Procedure, and that, in such a case, the General Court is responsible for the translation of the document into the language of the case, which does not therefore need to be signed by the representative of the Member State in question.

25 The fact that the response lodged by the French Republic was not signed by all the persons named as authors of the response is irrelevant. Under the first paragraph of Article 19 of the Statute of the Court of Justice of the European Union, a Member State may be represented by just one agent.

27 In support of its action, the applicant raises two pleas in law, the first alleging infringement of Articles 8(2) and 41(1) of Regulation No 207/2009 and Rules 15(2) and 17 of Regulation No 2868/95, and the second alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

The first plea: infringement of Articles 8(2) and 41(1) of Regulation No 207/2009 and Rules 15(2) and 17 of Regulation No 2868/95

28 By its first plea, the applicant submits, in essence, that the contested decision infringes Regulation No 207/2009 and Regulation No 2868/95, in that it fails to take account of the applicant’s rights, which predate the rights on which the intervener relies. In that regard, the applicant refers, first, to the name of the domain france.com, which it has been using for over 21 years via the website www.france.com, second, to its trade name France.com, Inc., registered in 1999 and used in France since 2002, and, third, to several EU figurative marks of which it is the proprietor, which also contain the word element ‘france.com’ and were all lodged on 4 January 2010 - that is to say, before the EU mark on which the intervener relies was lodged, on 14 January 2010 - and registered, on 22 June 2010. Lastly, the applicant claims that it has used a sign identical to the mark applied for in the course of trade since 2007. According to the applicant, Articles 8(2) and 41(1) of Regulation No 207/2009 and Rules 15(2)(b) and 17 of Regulation No 2868/95 should be interpreted as meaning that, in opposition proceedings, the applicant for an EU trade mark may defend itself against the opposition by relying on such rights.

30 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, an 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.

31 Article 8(2) of Regulation No 207/2009 provides a definition of ‘earlier trade marks’ for the purposes of Article 8(1).

32 It follows that any earlier rights relied on by the applicant in the present case have no bearing on the outcome of the dispute, given that the only rights to be taken into consideration in the opposition proceedings in question are the mark applied for and the earlier mark (see, to that effect, judgment of 1 March 2005, Fusco v OHIM - Fusco International (ENZO FUSCO), T‑185/03, EU:T:2005:73, paragraphs 62 and 63).

33 If Article 8(1)(b) and (2) of Regulation No 207/2009 were to be interpreted along the lines advocated by the applicant, that would be at odds with the system established by the legislature.

34 Admittedly, according to case-law, the EU trade mark registration system is based on the ‘first-to-file’ principle, laid down in Article 8(2) of Regulation No 207/2009. In accordance with that principle, a sign may be registered as an EU trade mark only in so far as this is not precluded by an earlier mark, whether that be an EU trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State, or a trade mark registered under international arrangements which have effect in the European Union. Moreover, where the criteria set out in Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) are met, then that principle also extends to non-registered marks (see, to that effect, judgment of 14 February 2012, Peeters Landbouwmachines v OHIM - Fors MW (BIGAB), T‑33/11, EU:T:2012:77, paragraph 16).

35 However, that principle does not mean that a mark registered in accordance with the ‘first to file’ principle is automatically protected. On the contrary, that protection requires constant vigilance on the part of the first person to file the mark, which entails taking, if need be, appropriate legal measures.

36 If the applicant holds rights that predate the EU mark on which the intervener relies, it is for the applicant, if it considers that it is so entitled and if it so wishes, to seek protection of those rights by means of opposition or cancellation proceedings or, where appropriate, before the competent national court in the context allowed by Article 110 of Regulation No 207/2009 (now Article 137 of Regulation 2017/1001). On the other hand, as long as the earlier EU mark on which the intervener relies is in fact protected, the existence of earlier rights is irrelevant where an EU trade mark application is opposed, even if the EU mark applied for is the same as an EU mark that predates the EU mark on which the opposition is based (see, to that effect, judgment of 1 March 2005, ENZO FUSCO, T‑185/03, EU:T:2005:73, paragraph 63).

37 Consequently, any decision by national courts concerning the EU figurative marks referred to in paragraph 28 above, such as the judgment of 27 November 2015 of the Tribunal de grande instance de Paris (Regional Court, Paris, France), produced by the intervener before the Board of Appeal, is also irrelevant to the present dispute.

38 Article 41(1) of Regulation No 207/2009 and Rules 15(2) and 17 of Regulation No 2868/95, to which the applicant also refers, do not in any way call into question that interpretation. Those provisions refer, as does Article 8(1) and (2) of Regulation No 207/2009, solely to the application for registration of a trade mark in respect of which the notice of opposition has been filed and to the earlier mark or the earlier right on which the opposition is based.

39 Accordingly, as the first plea in law, alleging infringement of Articles 8(2) and 41(1) of Regulation No 207/2009 and Rules 15(2) and 17 of Regulation No 2868/95, is unfounded, it must be rejected.

40 The applicant claims, in essence, that the analysis of the visual, phonetic and conceptual similarities of the signs at issue is flawed, so that there is no likelihood of confusion between those signs.

41 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, an 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.

42 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 line of 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).

43 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).

44 In the present case, as regards the relevant public, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that the services covered by the mark applied for are aimed at both the general public and professionals and that the level of attention of the relevant public is average to high. Nor does the applicant dispute the Board of Appeal’s assessment that the territory in respect of which the likelihood of confusion must be assessed is the European Union, as the earlier mark is an international registration designating the European Union.

45 Similarly, as regards the comparison of the services in question, it should be noted that the applicant does not dispute the Board of Appeal’s assessment in paragraphs 15 to 18 of the contested decision that those services are in part identical and in part similar.

46 Therefore, it is necessary to examine the Board of Appeal’s assessments, disputed by the applicant, relating to the comparison of the signs at issue and to the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

47 The global assessment 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 wording of Article 8(1)(b) of Regulation No 207/2009 (‘there exists a likelihood of confusion on the part of the public’) shows that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 21 and the case-law cited, and of 18 September 2012, Scandic Distilleries v OHIM - Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 27 and the case-law cited).

48 As regards the distinctive character of the word element ‘France’, the applicant submits, first, that that element cannot be isolated from the other elements of the signs at issue. Second, that element designates a geographic entity corresponding to metropolitan France. Third, that element is neither a designation of origin nor the official name of a public entity, as the official name of France is the ‘French Republic’. Fourth, the word ‘france’ will be perceived by the average consumer as an indication of the origin of goods and services from France. Therefore, the Board should have concluded that the word element in question was in the public domain and should not have considered that element to be the main element of those signs.

49 At the outset, it should be noted that the Board of Appeal found, in paragraph 21 of the contested decision, that, in the signs at issue, the stylised images of the Eiffel tower were as important as the word element ‘france’.

50 The applicant is therefore obviously incorrect in its claim that the Board of Appeal found that the word element ‘france’ is the main element of the signs at issue.

51 Moreover, it should be borne in mind that the Court has previously held that a mark corresponding to the shortened name of a State, the mark MONACO in the case in question, may be used, in trade, to designate the geographical origin or destination of goods or the place in which services are to be provided, and that, consequently, such a mark is descriptive of the products and services concerned (judgment of 15 January 2015, MONACO, T‑197/13, EU:T:2015:16, paragraph 58).

52 In the present case, the word element ‘france’ corresponds to the shortened name of the French Republic.

53 In that regard, it must be recalled that, according to the case-law developed in connection with the application of Article 8(1)(b) of Regulation No 207/2009, where some elements of a trade mark are descriptive of the goods and services in respect of which the mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only weak, or even very weak, distinctive character, as, most often, it is possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression created by that mark (see judgment of 17 February 2017, Batmore Capital v EUIPO - Univers Poche (POCKETBOOK), T‑596/15, not published, EU:T:2017:103, paragraph 66 and the case-law cited).

54 More specifically, the weak distinctive character of an element of a composite mark does not necessarily mean that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgment of 8 November 2017, Pempe v EUIPO - Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS), T‑271/16, not published, EU:T:2017:787, paragraph 51 and the case-law cited).

55 Moreover, it is also necessary to take into account the fact that, where a trade mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, as the average consumer will more easily refer to the goods or services in question by name rather than by describing the figurative element of the mark (judgment of 24 November 2016, CG v EUIPO - Perry Ellis International Group (P PRO PLAYER), T‑349/15, not published, EU:T:2016:677, paragraph 42).

56 In addition, it must also be borne in mind that, in opposition proceedings, the fact that an earlier EU trade mark has at the very least the minimum level of distinctiveness required in order to be registered cannot be called into question. The distinctiveness of a mark may be called into question by the applicant only in proceedings for the cancellation of the earlier mark, under Article 52 of Regulation No 207/2009 (now Article 59 of Regulation 2017/1001) (see, to that effect, judgment of 14 September 2017, Aldi Einkauf v EUIPO - Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraphs 52 and 53 and the case-law cited).

57 The visual, phonetic and conceptual comparison of the signs at issue must be carried out in the light of the considerations set out above.

58 As regards the visual comparison of the signs at issue, the Board of Appeal stated, in paragraph 21 of the contested decision, that the overall impression conveyed by the signs at issue was that of the word ‘france’ accompanied by the image of a stylised Eiffel tower and the colours blue, white and red. It also stated that, on account of their size and position (above the word element in one sign, and in front of the word element in the other), the stylised images of the Eiffel tower and the word element ‘france’ in those signs were of equal importance. In paragraph 22 of the contested decision, the Board of Appeal considered that the abbreviation ‘.com’ in the sign applied for would be perceived by the reasonably observant consumer as a secondary element. Consequently, the Board of Appeal concluded, in paragraph 23 of the contested decision, that the signs at issue had an average degree of visual similarity on account of their structure and elements in common, that is, the same word, the same figurative element and the same colours, notwithstanding their different designs.

59 The applicant submits that, in the earlier mark, the dominant element is the figurative element depicting the Eiffel tower, which is six times larger than the word ‘france’. By contrast, in the mark applied for, the word element ‘france.com’ is dominant. What is more, the applicant argues, the Board of Appeal erred in finding that the figurative element of the signs at issue is the Eiffel tower. The figurative element of the mark applied for is not the Eiffel tower, but a pentagon in the shape of France, inside which an Eiffel tower can be made out. Consequently, those signs have only a low degree of similarity, or are even not similar at all, from a visual standpoint.

61 In that regard, it must be borne in mind that the fact that the signs at issue contain similar word elements does not, of itself, make it possible to conclude that they are visually similar, given that the presence of figurative elements that are set out in a specific way can have the effect that the overall impression conveyed by each of the signs is different (see judgment of 13 December 2007, Cabrera Sánchez v OHIM - Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 58 and the case-law cited).

62 Moreover, when neither the figurative element nor the word elements of a mark can be regarded as either dominant or negligible, it is the overall impression conveyed by the mark which must be taken into account (see judgment of 22 June 2010, CM Capital Markets v OHIM - Carbon Capital Markets (CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance), T‑490/08, EU:T:2010:250, paragraph 43 and the case-law cited).

63 In the present case, the Board of Appeal was correct to find that the signs at issue have three elements in common: the word element ‘france’, a stylised image of the Eiffel tower and the colours blue, white and red.

64 Nonetheless, the signs at issue also contain differing elements. What is more, the general way in which the signs at issue are set out is visually different.

65 As pointed out by the applicant, the mark applied for contains a pentagon and the abbreviation ‘.com’, elements that are not present in the earlier mark. By contrast, the earlier mark contains a figurative element depicting an Eiffel tower in black, a colour that does not appear in the mark applied for, and a scarf in blue, white and red, which is another element that does not appear in the mark applied for.

66 As far as concerns the figurative element depicting the Eiffel tower, it is represented in a different way in the signs at issue. That element, a standalone element depicted in black, is large and immediately apparent in the earlier mark. By contrast, the same element is depicted in white inside a pentagon, a colour that has not been claimed by the applicant, and is smaller in the mark applied for. Therefore, it may not be noticed immediately by consumers.

67 Moreover, the font of the word element ‘france’ is also different in the signs at issue. The word element in question is written in uppercase bold letters in the mark applied for. By contrast, in the earlier mark, that element is written in lowercase letters and in a font reminiscent of handwriting.

68 As far as concerns the word element ‘.com’, present in the mark applied for only, it is true, as the Board of Appeal was correct to observe, that a reasonably observant consumer will immediately recognise that element as referring to a website, namely, a generic top-level domain (judgment of 28 June 2016, salesforce.com v EUIPO (SOCIAL.COM), T‑134/15, not published, EU:T:2016:366, paragraph 23). However, this does not mean that the element is necessarily negligible in the overall impression conveyed by the mark applied for.

69 Lastly, it is clear that, although the signs at issue share the colours blue, white and red, the way in which they are set out differs. Thus, the colour blue is dominant in the impression conveyed by the mark applied for. By contrast, the impression conveyed by the earlier mark is dominated by the colour black, which, moreover, is not present in the mark applied for, whereas the colours blue, white - which has not been claimed by the applicant - and red play a less important role.

70 In those circumstances, it is clear that, contrary to the Board of Appeal’s finding in the contested decision, the signs at issue, considered as a whole, have only a low degree of visual similarity.

71 As regards the phonetic comparison of the signs at issue, the Board of Appeal found, in paragraph 24 of the contested decision, that the signs at issue were almost identical phonetically. As the word ‘france’ is the only word in the earlier mark and also appears in a central position in the sign applied for, and that the abbreviation ‘.com’ of the sign applied for will not be easily noticed by consumers, who know that it refers to a website, namely a generic top-level domain, the assumption could be made, according to the Board of Appeal, that many consumers will refer to the mark applied for by the word ‘france’ only, thereby rendering the signs at issue phonetically identical.

72 The applicant submits that, in view of the dominant size of the Eiffel tower in the earlier mark, that mark will be read by an English speaker as ‘eiffel tower - france’ and by a French speaker as ‘tour eiffel - france’. As for the mark applied for, it will be read as ‘france.com’ or, as the case may be, ‘pentagon or hexagon - france’. Consequently, those signs have only a low degree of similarity, or are even not similar at all, from a phonetic standpoint. What is more, it is irrelevant that the two marks share the word ‘france’, as that word is, according to the applicant, in the public domain.

74 As a preliminary point, it should be pointed out that the phonetic reproduction of a composite sign corresponds to that of all its word elements, regardless of their specific graphic features, which, instead, fall to be considered when analysing the sign visually. Therefore, the figurative elements of the earlier sign should not be taken into account for the purpose of the phonetic comparison of the signs at issue (see judgment of 15 October 2015, Wolverine International v OHIM - BH Stores (cushe), T‑642/13, not published, EU:T:2015:781, paragraph 62 and the case-law cited).

75 The applicant is therefore incorrect to claim that the earlier mark will be read by an English speaker as ‘eiffel tower - france’ and by a French speaker as ‘tour eiffel - france’. Moreover, as the Eiffel tower is, as the Board of Appeal was right to observe, a world-famous French monument, consumers will be likely to regard it as a mere illustration of the word element ‘france’, without, however, saying its name when reading the earlier mark.

76 While the contested decision is inconsistent inasmuch as, in the last sentence of paragraph 24, the signs at issue are found to be ‘identical’ whereas, in paragraph 29, they are found to be ‘almost identical’, it is therefore appropriate, in any event, to conclude that the signs at issue are almost identical. As the Board of Appeal was correct to observe, it can be assumed that many consumers will refer to the mark applied for by the word ‘france’ alone, as the abbreviation ‘.com’ will be perceived as referring to a website (see judgment of 13 December 2007, Xentral v OHIM - Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraphs 56 and 61).

77 In those circumstances, the Court finds that the signs at issue are almost identical phonetically.

78 As regards the conceptual comparison of the signs at issue, the Board of Appeal found, in paragraph 25 of the contested decision, that the signs at issue were identical conceptually, as they both refer to France and to the Eiffel tower. The indication of the domain name by the element ‘.com’ in the sign applied for does not alter its meaning, as it suggests merely that the services designated are offered online. The signs therefore suggest the same meaning.

79 The applicant submits that, on account of the size of the Eiffel tower in the earlier mark, the consumer will perceive that sign as conceptually related to the Eiffel tower. The mark applied for will be conceptually related to a pentagon, to a domain name and to the internet, and therefore to the website www.france.com.

81 As a preliminary point, it is clear that the contested decision contains a similar inconsistency to the one referred to in paragraph 76 above. Although the signs at issue are found to be conceptually ‘identical’ in paragraph 25 of the contested decision, they are found to be ‘almost identical’ in paragraph 29 of the decision.

82 Nonetheless, it is clear that the signs at issue contain almost exclusively elements that refer to the same concept. The word element ‘france’ refers to a State, namely the French Republic. The figurative elements in the signs at issue refer to a symbol widely known to be associated with that State, namely the Eiffel tower and the colours blue, white and red. The same holds true for the figurative element, present only in the mark applied for, depicting a pentagon, the shape of which brings to mind the ‘Hexagon’, an expression designating the continental part of metropolitan France.

83 It follows that, as they refer to the same concept, represented by the word element ‘france’ and the figurative element depicting the Eiffel tower, that is to say, France, the signs at issue are conceptually identical, and the element ‘.com’, present only in the mark applied for, is not sufficient to enable those signs to be differentiated conceptually.

84 It is settled case-law that the word element ‘.com’ cannot alter the meaning conveyed by the word element ‘france’ and the other elements of the mark applied for, as it does no more than convey the idea that the goods covered by the trade mark applied for may be inspected or bought online (see, to that effect, judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 63).

85 Thus, as the elements of the signs at issue convey the same concept, the presence of the word element ‘.com’ in the mark applied for cannot have any bearing on whether those signs are conceptually identical.

86 Therefore, it must be concluded that the signs at issue are conceptually identical.

87 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 - LicoreraZacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

88 The Board of Appeal concluded, in paragraph 29 of the contested decision, that, as the services covered by the mark applied for had been found to be in part identical and in part similar to those in respect of which the earlier mark is registered. As the signs at issue are almost identical phonetically and conceptually because they have the same structure, with the same word, ‘france’, the same figurative element, the Eiffel tower, and the same colours, blue, white and red, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 could not be ruled out.

89 In paragraph 30 of the contested decision, the Board of Appeal pointed out that, even if consumers were to remember the earlier mark and the mark applied for perfectly, or if they were to compare them directly, they could still establish an association between them because they have the same structure. In this case, as the mark applied for contains the additional abbreviation ‘.com’, which indicates the existence of a website, a reasonably observant consumer might believe that the mark applied for is a version of the earlier mark that offers services online but is marketed by the same undertaking or an economically-linked undertaking.

90 The Board of Appeal added, in paragraph 31 of the contested decision, that its finding was not influenced by the applicant’s argument that it had used the domain name france.com, the trade name France.com, Inc., and the sign in question as an unregistered mark in France for many years. First, the relevant territory in this case extends to the entire European Union, not just one Member State. Secondly, any earlier use of the mark applied for is irrelevant for the purpose of the assessment required under Article 8(1)(b) of Regulation No 207/2009.

91 The applicant submits that, despite the presence of elements common to the signs at issue, their visual and phonetic differences are sufficiently relevant to rule out any likelihood of confusion, even as regards identical services.

92 The applicant points out that it has operated its website www.france.com for 21 years, without that having given rise to any confusion with the services offered by the intervener, which supported and promoted the applicant’s activities for many years and presented it awards for excellence.

94 It follows from the examination of the similarities between the signs at issue that they have a low degree of visual similarity (see paragraph 70 above), are almost identical phonetically (see paragraph 77 above) and are conceptually identical (see paragraph 86 above).

95 Moreover, the applicant does not dispute the Board of Appeal’s assessment that the services in question are in part identical and in part similar.

96 In the light of that fact, and given the particularly high degree of phonetic and conceptual similarity between the signs at issue, it must be held that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

97 As regards the weak distinctive character that the earlier mark may have, it is sufficient to note that a finding that the earlier mark has weak distinctive character does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited). As stated in paragraph 45 above, the applicant does not dispute that the services in question are in part identical and in part similar.

98 As regards the applicant’s argument based on the fact that it has operated the website www.france.com for 21 years, it is sufficient to recall that, according to settled case-law, the repute of a trade mark is relevant, in assessing the likelihood of confusion, only as regards the repute of the earlier mark (see judgment of 16 September 2013, Gitana v OHIM - Teddy (GITANA), T‑569/11, not published, EU:T:2013:462, paragraph 72 and the case-law cited).

99 It follows that the Board of Appeal did not err in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the signs at issue.

100 It is therefore necessary to reject the second plea raised by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and, accordingly, dismiss the action in its entirety, without there being any need to rule on the intervener’s argument based on Article 7(1)(g) of Regulation No 207/2009 (now Article 7(1)(g) of Regulation 2017/1001).

101 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> France.com v EUIPO - France (FRANCE.com) (EU trade mark - Judgment) [2018] EUECJ T-71/17 (26 June 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T7117.html Cite as: [2018] EUECJ T-71/17, EU:T:2018:381, ECLI:EU:T:2018:381

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