Nissan Motor v EUIPO - VDL Groep (VDL E-POWERED) (EU trade mark - Judgment) [2021] EUECJ T-756/20 (10 November 2021)

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(EU trade mark – Opposition proceedings – Application for the EU word mark VDL E-POWERED – Earlier national figurative marks e-POWER – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001)

Nissan Motor Co. Ltd, established in Yokohama-shi (Japan), represented by P. Martini-Berthon, lawyer,

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,

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

VDL Groep BV, established in Eindhoven (Netherlands), represented by M. Rijks, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 20 October 2020 (Case R 2915/2019‑1), relating to opposition proceedings between Nissan Motor and VDL Groep,

composed of D. Spielmann, President, U. Öberg (Rapporteur) and R. Mastroianni, Judges,

having regard to the application lodged at the Court Registry on 21 December 2020,

having regard to the response of EUIPO lodged at the Court Registry on 22 April 2021,

having regard to the response of the intervener lodged at the Court Registry on 9 April 2021,

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 4 May 2018, the intervener, VDL Groep BV, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

3 The goods in respect of which registration was sought are in Classes 7, 9 and 12 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 7: ‘Power installations; machine tools; motors (except for land vehicles); electrical engines, other than for land vehicles; alternating current motors and direct current motors other than for land vehicles; vehicle engine parts; control cables and system control instruments for machines, engines or motors; power transmission couplings and belts (other than for vehicles); transmissions not otherwise classified; tools, instruments and devices provided in this class for production, maintenance and repair of vehicles, their parts and fittings not included in other classes’;

– Class 9: ‘Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of electric power; power distribution machines or power controller machines and power distribution devices for vehicles; transducers for land vehicles; chargeable batteries for vehicles; batteries for vehicles; parts of batteries; batteries for land vehicles; charging stations for electric vehicles; computer software to operate vehicles; computer programs for use in autonomous driving of vehicles’;

– Class 12: ‘Vehicles, apparatus for locomotion by land, air or water; electric vehicles; electrically powered motor vehicles; electrically powered buses for the transportation of people; plug-in electric vehicles; self-propelled electric vehicle; motors, electric, for land vehicles; electrical drive units for land vehicles; electric vehicles and their parts and fittings; alternating current motors and direct current motors for vehicles (not including their parts); trucks; cars; buses; cargo trailers for land vehicles; semi-trailers; structural parts for the mentioned land vehicles; bodies for vehicles; underbodies of vehicles; transmissions for land vehicles; driving motors for land vehicles; couplings for land vehicles; transmission belts and driving belts for land vehicles and land vehicle parts’.

4 The application for registration of the mark applied for was published in European Union Trade Marks Bulletin No 2018/110 of 13 June 2018.

5 On 13 September 2018, the applicant, Nissan Motor Co. Ltd, filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the trade mark applied for in respect of part of the goods referred to in paragraph 3 above.

– the UK figurative mark lodged on 1 March 2018 and registered on 6 July 2018 under number 3293755, designating goods in Classes 9 and 12, reproduced below:

– the French figurative mark lodged on 23 February 2018 and registered on 10 August 2018 under number 4431504, designating goods in Classes 9 and 12, reproduced below:

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001, relating to a likelihood of confusion on the part of the relevant public.

8 On 24 October 2019, the Opposition Division upheld the opposition based on the earlier UK figurative mark and refused registration of the mark applied for in respect of all the goods referred to in the opposition.

9 On 19 December 2019, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.

10 By decision of 20 October 2020 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division. First, it found that the latter’s finding relating to the comparison of the goods, according to which those goods were identical or similar to at least a low degree, had not been challenged. Next, regarding the relevant public, the Board of Appeal held, similarly to the Opposition Division, that it was composed of professionals with expertise in the automobile industry and of the English-speaking and French-speaking general public, whose level of attention was likely to be higher than average. Last, after having stated that the conflicting signs were visually and conceptually similar and had an average degree of phonetic similarity, it inferred that, in so far as the element ‘vdl’ of the mark applied for differentiated the conflicting signs and had to be regarded as distinctive, and given the high level of attention of the relevant public, there was no likelihood of confusion on the part of that public.

– authorise the publication of the application for registration of the mark applied for;

14 EUIPO submits that, having regard to the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union, in accordance with Article 50 TEU and the expiry, on 31 December 2020, of the transition period laid down in Articles 126 and 127 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the withdrawal agreement’), the opposition to the registration of the mark applied for based on the earlier UK figurative mark must be rejected, on the ground that the latter no longer enjoys the same protection.

15 In that regard, it should be noted that the withdrawal agreement, which sets out the arrangements for the withdrawal of the United Kingdom from the European Union, entered into force on 1 February 2020. The agreement provides for a transition period from 1 February to 31 December 2020, which may be extended once, for a maximum duration of up to one or two years.

16 Article 127 of the withdrawal agreement stipulates that, unless otherwise provided, EU law continues to be applicable in the United Kingdom during the transition period.

17 Since the legality of the contested decision must be assessed as at the date when the latter was adopted, the withdrawal of the United Kingdom from the European Union has no bearing on the protection enjoyed by the earlier UK mark as an EU mark (see, to that effect, judgment of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS), T‑421/18, EU:T:2020:433, paragraph 36) or on the review of the legality of the contested decision.

18 EUIPO’s argument that the earlier UK figurative mark no longer enjoys the same protection and, as a result, can no longer serve as a basis for the opposition to the registration of the mark applied for must therefore be rejected.

B. The intervener’s form of order relating to the publication of the application for registration of the mark applied for

19 By the third part of the form of order it seeks, the intervener asks the Court to authorise the publication of the application for registration of the mark applied for.

20 In an action before the EU Courts against the decision of a Board of Appeal of EUIPO, the latter is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU Courts. Accordingly, it is not for the Court to issue directions to EUIPO, to whom it falls to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (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 20 and the case-law cited).

21 The Court does not therefore have jurisdiction to rule on a request that the Court make an order for publication of the application for registration of the mark applied for.

22 In any event, that part of the form of order is devoid of purpose, since the application for registration of the mark applied for has already been published, as stated in paragraph 4 above.

23 In support of its action, the applicant raises two pleas alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal incorrectly found that there was no likelihood of confusion and, second, infringements of the obligation to state reasons provided for in Article 94(1) of that regulation.

24 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

25 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the 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).

26 Those factors also include the strength of the earlier mark’s reputation and its degree of distinctive character, whether inherent or acquired through use (see judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 57 and the case-law cited).

27 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).

28 In the present case, the applicant does not dispute the definition of the relevant public set out in the contested decision, that is, the English-speaking and French-speaking public composed of both professionals with expertise in the automobile industry and the general public, with a higher than average level of attention.

29 It also does not dispute the Board of Appeal’s assessment that the goods in question are identical, or have at the very least a low degree of similarity.

30 By contrast, it does dispute some of the Board of Appeal’s findings in the context of the comparison of the conflicting signs and in the context of the assessment of the likelihood of confusion on the part of the relevant public.

31 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the conflicting signs, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

32 However, even though the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he or she will, nevertheless, perceiving a word sign, break it down into word elements which, for him or her, have a concrete meaning or which resemble words known to him or her (see judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited).

33 Furthermore, the relevant consumer will break down the word sign even if only one of its elements is familiar to him or her (see judgment of 24 March 2021, Creaton South-East Europe v EUIPO – Henkel (CREATHERM), T‑168/20, not published, EU:T:2021:160, paragraph 37 and the case-law cited).

34 It is in the light of those principles that it is necessary to examine, having regard to the arguments of the parties, whether the similarity of the signs at issue was correctly assessed in the contested decision.

35 In the present case, the mark applied for is a word mark made up of the elements ‘vdl’, ‘e’ and ‘powered’, with the latter two elements being linked by a hyphen, and the earlier marks are figurative marks made up of the word elements ‘e’ in lowercase and ‘power’ in uppercase, linked by a hyphen and in a slightly stylised font. Moreover, the parties do not dispute that the elements ‘e-power’ and ‘e-powered’ of the conflicting signs are understood as a reference to electric vehicles, electric motors and systems enabling vehicles (or their units) to run on electricity.

36 It is not apparent from the contested decision that the Board of Appeal expressly ruled on whether the conflicting signs have a dominant element. It did, however, find that the element ‘e-power’ of the earlier marks and the element ‘e-powered’ of the mark applied for referred to an expression which will be understood by the relevant public as meaning ‘electric energy’ and ‘electric’, respectively, so that those elements have only a low degree of distinctiveness. As for the element ‘vdl’ of the mark applied for, the Board of Appeal stated that it had no clear meaning for the relevant public and had to be regarded as distinctive.

37 The applicant submits that the Board of Appeal’s reasoning relating to the comparison of the conflicting signs, more specifically, the assertion that the element ‘e-power’ of the earlier marks and the element ‘e-powered’ of the mark applied for are singled out, must be understood as meaning that those elements are dominant, whereas the element ‘vdl’ of the mark applied for is secondary. It argues that the Board of Appeal therefore went on to state incorrectly that the latter element was distinctive, as its sole purpose was to identify the name of the company from which the mark applied for originates.

39 For the purpose of assessing the distinctive character of a mark or of an element making up a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services in respect of which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited).

40 It must also be observed that the greater or lesser degree of distinctiveness of the elements making up the conflicting marks is one of the relevant factors in assessing the similarity of the signs. The descriptive, non-distinctive or weakly distinctive elements of a composite trade mark generally carry less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression given by that mark (see, by analogy, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited; judgment of 9 December 2020, Man and Machine v EUIPO – Bim Freelance (bim ready), T‑819/19, not published, EU:T:2020:596, paragraph 44 and the case-law cited).

41 In the present case, having regard to the case-law cited in paragraphs 32 and 33 above, it must be considered that, in perceiving the word sign making up the mark applied for or the word elements of the earlier marks, consumers will break them down into word elements which, for them, have a concrete meaning or which resemble words known to them.

42 In that regard, first, it must be noted that, as stated in essence by the Board of Appeal in paragraphs 21 and 22 of the contested decision, the word element ‘power’ of the earlier marks consists of a term which is part of the basic vocabulary of the English language and means ‘energy’, ‘power’ or ‘force’ (see, to that effect, judgment of 27 June 2013, International Engine Intellectual Property Company v OHIM (PURE POWER), T‑248/11, not published, EU:T:2013:333, paragraphs 22 to 24). Likewise, the term making up the word element ‘powered’ of the mark applied for, which is the adjectival form or past participle of the word ‘power’, refers to the fact of being powered by a certain energy, power or force. Both of those terms are likely to be understood easily by the relevant public, even if that public is not English-speaking and knows basic English only.

43 As the element ‘e-’ of the conflicting signs is a common abbreviation of the word ‘electric’ or ‘electronic’ (see, to that effect, judgment of 29 April 2009, Enercon v OHIM (E-Ship), T‑81/08, not published, EU:T:2009:128, paragraph 34), it follows that, taken as a whole, the word elements ‘e-power’ and ‘e-powered’ of the conflicting signs will be perceived immediately by the relevant public as meaning ‘electric energy’ or ‘powered by electric energy’.

44 Having regard to the goods in question, inter alia, vehicles, accessories or parts making up those vehicles, the elements ‘e-power’ and ‘e-powered’ refer to electric vehicles, electric motors and systems enabling vehicles or their components to run on electricity, which the parties do not dispute. Due to their connection to the goods in question, those elements therefore have, at most, a low degree of distinctiveness.

45 Second, the word element ‘vdl’ of the mark applied for will be perceived by the relevant English-speaking and French-speaking public as an acronym that is unrelated to the goods in question and that is devoid of meaning for those goods, with the result that it has an average degree of distinctiveness.

46 Even if, as the applicant submits, the word element ‘vdl’ of the mark applied for were to be understood as referring to the intervener’s company name, it must be borne in mind that the essential function of a trade mark is to ensure that the consumer or end user can identify the origin of the marked goods or services by enabling him or her, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see judgment of 8 October 2020, Aktiebolaget Östgötatrafiken, C‑456/19, EU:C:2020:813, paragraph 32 and the case-law cited). Therefore, even if it were understood in this way, the element ‘vdl’ of the mark applied for should be considered to have a normal degree of distinctiveness.

47 Moreover, in addition to the fact that the case-law cited by the applicant in support of its arguments relates to proof of genuine use of an earlier mark which is also a company name, the Court has held that, when a word mark is also a company name, this does not preclude the company name from being used as a mark in order to designate goods or services (see, to that effect, judgments of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 74, and of 2 February 2012, Goutier v OHIM – Euro Data (ARANTAX), T‑387/10, not published, EU:T:2012:51, paragraph 37).

48 The Court has also held that, regarding the analysis of the distinctive and dominant elements of a mark, the elements relating to the company name of the proprietor are contained within that mark as elements thereof, not as a reminder of the company name (see, to that effect, judgment of 16 December 2020, Production Christian Gallimard v EUIPO – Éditions Gallimard (PCG CALLIGRAM CHRISTIAN GALLIMARD), T‑863/19, not published, EU:T:2020:632, paragraph 83).

49 It is therefore clear that the word element ‘vdl’ of the mark applied for is an integral part of that mark and must be regarded as such. The applicant’s argument that that element is not distinctive in the mark applied for, because it refers to the identity of the company that is the proprietor of that mark, VDL Groep, is therefore manifestly irrelevant.

50 Therefore, for all of the relevant public, the word element ‘vdl’ of the mark applied for is the most distinctive element of that mark.

51 Accordingly, the Board of Appeal did not err in observing, in paragraphs 25, 26 and 31 of the contested decision, that the word element ‘vdl’ of the mark applied for was more distinctive than the elements ‘e-power’ and ‘e-powered’ of the conflicting signs, the distinctive character of which is low.

52 The foregoing finding cannot be called into question by the applicant’s argument based on the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), according to which the element ‘e-power’ of the earlier marks retains an independent distinctive role within the meaning of that judgment.

53 It is apparent from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another and a registered mark which has a normal degree of distinctiveness and which, although it does not determine by itself the overall impression conveyed by the composite sign in question, retains an independent distinctive role therein. However, in the present case, the distinctive character of the element ‘e-power’ cannot be regarded as normal but is, at most, low, in so far as it is clear that that term alludes to the type of energy ensuring the functioning of the goods in question or related to those goods.

54 Accordingly, the applicant’s argument based on the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), must be rejected.

55 The Board of Appeal found that, due to the element ‘e-power’ common to the conflicting signs and their dissimilarities as a result of the element ‘vdl’ and the word ending ‘ed’ of the element ‘e-powered’ in the mark applied for, those signs had to be regarded as visually similar, phonetically similar to an average degree and conceptually similar.

56 The applicant submits that the Board of Appeal’s findings regarding the visual, phonetic and conceptual similarity of the conflicting signs are incorrect. In essence, it submits that, since the word element ‘e-power’ of the earlier marks is entirely contained within the mark applied for and that the relevant public will attach greater weight to the elements ‘e-power’ and ‘e-powered’ of the conflicting signs, which have a concrete meaning for that public, the Board of Appeal should have found that those signs had a high degree of visual, phonetic and conceptual similarity. The applicant claims that the Board of Appeal also carried out the conceptual comparison of those signs while incorrectly taking into account the low degree of distinctiveness of the common element ‘e-power’ and failed to find that the element ‘vdl’ of the mark applied for referred to the intervener’s company name.

57 EUIPO and the intervener dispute the applicant’s arguments. The intervener adds that the conflicting signs have, at most, a low degree of visual, phonetical and conceptual similarity.

58 As regards the visual comparison, the earlier marks are made up of the term ‘e-power’, which is entirely contained within the mark applied for. The conflicting signs differ in the presence of the word element ‘vdl’ placed at the beginning of the mark applied for and of the sequence of letters ‘e’ and ‘d’ at the end thereof, and in the figurative elements of the earlier marks, that is, a slightly stylised black font, the letter ‘e’ written in lowercase and the word ‘power’ in uppercase.

59 It is apparent from paragraph 44 above that the elements ‘e-power’ and ‘e-powered’ of the conflicting signs have a low degree of distinctiveness, so that they carry less weight in the analysis of the similarity of those signs than the element ‘vdl’ of the mark applied for, which has a higher degree of distinctiveness in accordance with the case-law recalled in paragraph 40 above.

60 Therefore, on account of, first, the fact that the element ‘e-power’ is present in both the conflicting signs and, second, the differences between those signs due to the presence of the element ‘vdl’ placed at the beginning of the mark applied for and the letters ‘e’ and ‘d’ placed at the end of that mark, the Board of Appeal did not err in finding that the conflicting signs are visually similar, without, however, defining that degree of similarity as high.

61 As regards the phonetic comparison, it must be observed that the conflicting signs share the syllables of the common word element ‘e-power’, but differ in their pronunciation of the word element ‘vdl’ and of the ending ‘ed’ of the mark applied for, which are absent from the earlier marks. The element ‘vdl’ placed at the beginning of the mark applied for, made up of three letters pronounced separately, constitutes a significant phonetic difference in relation to the earlier marks.

62 Admittedly, as the applicant in essence submits, when the sole component of the earlier mark is included in its entirety within the mark applied for, the signs at issue are partially identical in such a manner as to create a certain impression of visual similarity on the part of the relevant public (see judgment of 11 July 2018, Link Entertainment v EUIPO – García-Sanjuan Machado (SAVORY DELICIOUS ARTISTS & EVENTS), T‑694/17, not published, EU:T:2018:432, paragraph 43 and the case-law cited). However, having regard, more specifically, to the difference between the conflicting signs caused by the element ‘vdl’, whose degree of distinctiveness is higher than that of the common element ‘e-power’, the Board of Appeal was fully entitled to consider that the degree of phonetic similarity of the conflicting signs was average, not high.

63 As regards the conceptual comparison, the conflicting signs both have a connection to electricity or electronics, flowing from the elements ‘e-power’ of the earlier marks and ‘e-powered’ of the mark applied for, whose degree of distinctiveness is low, as is apparent from paragraphs 42 to 44 above. On account of the low degree of distinctiveness of that concept in respect of the goods in question, the relevant public will attach little weight to them. In those circumstances, the mere presence of the common element ‘e-power’ does not, on account of its low degree of distinctiveness, make it possible to arrive at the finding that those signs have a high degree of conceptual similarity.

64 In that regard, contrary to the applicant’s submissions, it is apparent from the case-law cited in paragraph 40 above that the Board of Appeal could validly take into account the low degree of distinctiveness of the common element ‘e-power’ in the analysis of the similarity of the conflicting signs.

65 As for the element ‘vdl’ of the mark applied for, whether perceived by the relevant public as a reference to the intervener’s company name or devoid of all meaning, that element is not present in the earlier marks. On account of the higher degree of distinctiveness of that element than of the elements ‘e-power’ and ‘e-powered’, it must be found that the conflicting signs, taken as a whole, have, at most, a low degree of conceptual similarity.

66 Accordingly, the Board of Appeal erred in not defining the degree of conceptual similarity of the conflicting signs as low.

67 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 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 43).

68 In addition, as is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18 and the case-law cited, and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 72 and the case-law cited).

69 According to the case-law recalled in paragraph 31 above, 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. Such a global assessment of the likelihood of confusion means that all the similarities and differences must be taken into account in the same way as all of the other relevant elements, such as the level of attention of the relevant public or the degree of distinctiveness of the earlier mark (see, to that effect, judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 76 and the case-law cited).

70 It is also apparent from the case-law that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight and the extent of the similarity or difference between those signs may depend on their inherent qualities (see, to that effect, judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).

71 In the present case, after having observed, in essence, that the earlier marks had a low inherent degree of distinctiveness and recalled that the goods in question were identical or similar to various degrees, the Board of Appeal found that there was no likelihood of confusion on the part of the relevant public. It based that finding on the fact that the signs shared only the element ‘e-power’, which has a low degree of distinctiveness, and differ in relation to the presence of the element ‘vdl’ of the mark applied for, which is distinctive, and in relation to the use of the adjectival form ‘e-powered’ in the mark applied for, so that the conflicting signs will be distinguished by the relevant public, which has a higher than average level of attention.

72 The applicant submits that the Board of Appeal incorrectly based its finding relating to the absence of a likelihood of confusion on the differences between the signs, not their similarities. The Board of Appeal also failed to examine whether the similarities between those signs could be offset by those differences, or what was the effect of the degree of similarity of the goods in question. It adds that the Board of Appeal failed to take into account the independent distinctive role of the element ‘e-power’, common to the conflicting signs, in the mark applied for and that, by finding that the earlier marks had a low inherent degree of distinctiveness, denied them any protection.

74 As a preliminary point, it should be noted, as is apparent from paragraphs 51 to 54 and 58 to 65 above, that the existence of an average degree of visual and phonetic similarity of the conflicting signs is established and that those signs have a low degree of conceptual similarity. The Court also recalls that it is common ground that the goods in question are identical or similar to various degrees and that the relevant public has a higher than average level of attention.

75 First of all, regarding the distinctiveness of the earlier marks, it is apparent from paragraphs 42 to 44 above that that distinctiveness is low, as those marks are made up solely of the word element ‘e-power’, which is understood easily by the relevant public as a reference to the type of energy used by the goods in question.

76 Having regard to the Board of Appeal’s undisputed assessment that the stylisation of the earlier marks is minimal, and given the low distinctiveness of the element ‘e-power’, it was fully entitled to find that the inherent distinctiveness of those marks was merely low.

77 As regards the applicant’s argument that the Board of Appeal thus denied any protection to the earlier marks, the Court recalls that although the objective of Article 8(1)(b) of Regulation 2017/1001 is to provide adequate protection to holders of earlier rights against subsequent applications for identical or similar EU trade marks (see judgment of 20 January 2021, Palírna U Zeleného stromu v EUIPO – Bacardi (BLEND 42 VODKA), T‑830/19, not published, EU:T:2021:19, paragraph 66 and the case-law cited), its purpose is to prevent the registration of an EU mark having regard to the existence of an earlier mark only if there is a likelihood of confusion on the part of the relevant public.

78 Although, as the applicant raises, even in a case involving an earlier mark with a low degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited), it is apparent from the contested decision that the Board of Appeal, after having found that the degree of inherent distinctiveness of the earlier marks was low, carried out an assessment of the likelihood of confusion on the part of the relevant public. Therefore, it did not deny all protection to the earlier marks when it found that their inherent distinctiveness was low.

79 It follows that the visual and phonetic similarity of the conflicting signs and their low degree of conceptual similarity, on account of an element whose distinctiveness is merely low, are likely to be offset by the visual, phonetic and conceptual differences set out in paragraphs 59, 61 and 65 above, such as the word element ‘vdl’ of the mark applied for, which is placed at the beginning of the sign and is distinctive, and the ending ‘ed’ of that mark. Those differences therefore carry more weight in the global assessment of the likelihood of confusion, all the more so given that the relevant public will have a higher than average level of attention.

80 It is apparent from paragraphs 31 and 32 of the contested decision that the Board of Appeal observed that the conflicting signs were similar on account of the presence of the common element ‘e-power’. It also took into consideration the low degree of distinctiveness of that element, the differences between the conflicting signs, the identity of or degree of similarity between the goods in question and the level of attention of the relevant public in order to find that there was no likelihood of confusion on the part of that public.

81 It follows that, contrary to the applicant’s claim, the Board of Appeal examined all of the differences between and similarities of the conflicting signs and did not disregard the principle of the global assessment of the likelihood of confusion when it found that there was no such risk.

82 It follows from the foregoing that, despite an error in the assessment of the conceptual similarity of the conflicting signs, the Board of Appeal did not err in finding that there was no likelihood of confusion on the part of the relevant public, with the result that the first plea must be rejected as being unfounded.

83 In the second plea, the applicant claims first of all that the contested decision is vitiated by a contradiction. According to the applicant, the Board of Appeal could not, on the one hand, assert that the elements ‘e-power’ and ‘e-powered’ of the conflicting signs were clearly singled out and understood by the relevant public and that the acronym ‘vdl’ had no clear meaning for that public and, on the other hand, consider that those first elements had a low degree of distinctiveness, with the result that the element ‘vdl’ would enable the relevant public to distinguish those signs. It goes on to claim that the contested decision does not provide any plausible explanation making it possible to understand why the conflicting signs do not have the same degree of visual and phonetic similarity. Moreover, the applicant alleges that the contested decision is vitiated by a failure to state reasons in so far as it does not set out the reasons why there is no likelihood of confusion having regard to the level of attention of the relevant public and the similarity of the goods in question. Last, it submits that the Court cannot exercise its power to review the legality of the contested decision and is not in a position to ascertain the reasons for that decision in order to defend its rights.

85 According to the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based.

86 At the outset, it must be observed that the applicant submits incorrectly that there is a contradiction in the reasons given in the contested decision between the analysis of the similarity of the conflicting signs and the finding relating to the distinctiveness of the elements making up those signs.

87 It is apparent from paragraphs 23 and 25 of the contested decision that the Board of Appeal’s assertion that the elements ‘e-power’ and ‘e-powered’ of the conflicting signs will be clearly singled out and understood by the relevant public must be understood as meaning that the relevant public will break down those signs into word elements which, for that public, have a concrete meaning, in accordance with the case-law recalled in paragraph 32 above.

88 Those elements ‘e-power’ and ‘e-powered’ refer to the concept of electric energy and will be perceived immediately as such by the relevant public, as is apparent from paragraphs 42 and 43 above. Having regard to the nature of the goods in question, that assertion does not in any way contradict the finding that those elements have a low degree of distinctiveness, unlike the word element ‘vdl’ which has no connection with those goods, with the result that it is more distinctive, as is apparent from paragraphs 44 and 45 above.

89 The Board of Appeal’s finding relating to the element ‘e-power’ recalled in paragraph 87 above also does not contradict the finding that the word element ‘vdl’ of the mark applied for will carry the most weight in the overall impression the conflicting signs will make on the relevant public, as it is distinctive.

90 Where the elements of similarity between two signs arise from the fact that they share a component which has a low degree of distinctiveness, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgments of 20 September 2018, UROAKUT, T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited, and of 5 March 2020, Exploitatiemaatschappij De Berghaaf v EUIPO – Brigade Electronics Group (CORNEREYE), T‑688/18, not published, EU:T:2020:80, paragraph 38 and the case-law cited).

91 As the word elements ‘e-power’ and ‘e-powered’ of the conflicting signs have a low degree of distinctiveness, their impact on the global assessment of the likelihood of confusion is low, unlike that of the word element ‘vdl’.

92 Next, contrary to the applicant’s submissions, the Board of Appeal did not find that there were different degrees of similarity of the conflicting signs from a visual and phonetic standpoint. By having found that those signs are visually similar, despite the difference flowing from the word element ‘vdl’ of the mark applied for, without indicating whether the degree of similarity was low or high, the Board of Appeal found de facto that the degree of visual similarity was average, similarly to the degree of phonetic similarity. Therefore, the complaint alleging failure to state reasons for a difference in that regard is based on an incorrect premiss.

93 Moreover, it is apparent from paragraphs 20 to 32 of the contested decision that the Board of Appeal clearly set out the reasons why it considered that, even though the conflicting signs are visually, phonetically and conceptually similar due to the presence of the common element ‘e-power’, in the light of the low degree of distinctiveness of that element, the low degree of inherent distinctiveness of the earlier marks, the differences between those signs including that resulting from the word element ‘vdl’ of the mark applied for, regarded as distinctive, and the higher than average level of attention of the relevant public, there was no likelihood of confusion on the part of the relevant public.

95 Last, it must be observed that, although the failure to state reasons or to state sufficient reasons is a plea alleging infringement of essential procedural requirements, it must, as such, be distinguished from the ground alleging inaccurate reasons for the decision, the review of which comes within the examination of whether the reasoning given for that decision is correct (see, to that effect, judgments of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 67 and the case-law cited, and of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited).

96 In essence, the applicant’s arguments alleging failure to state reasons relating to the Board of Appeal’s final assessment that there is no likelihood of confusion, having regard to the high level of attention of the relevant public, despite the similarity or even identity of the goods in question, relate to the alleged inaccuracy of the reasons given in the contested decision, the review of which comes within the examination of whether the reasoning given for that decision is correct, which the Court carried out in the context of the first plea.

97 Having regard to all the foregoing considerations, the second plea must be rejected as being unfounded and, therefore, the action in its entirety must be dismissed.

98 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.

99 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and the intervener, in accordance with the forms of order sought by EUIPO and the intervener.

2. Orders Nissan Motor Co. Ltd to bear its own costs and to pay those of the European Union Intellectual Property Office (EUIPO) and of VDL Groep BV.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Nissan Motor v EUIPO - VDL Groep (VDL E-POWERED) (EU trade mark - Judgment) [2021] EUECJ T-756/20 (10 November 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T75620.html Cite as: [2021] EUECJ T-756/20, [2022] ETMR 7, ECLI:EU:T:2021:770, EU:T:2021:770

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