Creaton South-East Europe Kft (EU trade mark - Judgment) [2021] EUECJ T-168/20 (24 March 2021)

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(EU trade mark – Opposition proceedings – Application for EU word mark CREATHERM – Earlier international word mark CERETHERM – Relative ground for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001)

Creaton South-East Europe Kft., established in Lenti (Hungary), represented by J. Muyldermans and P. Maeyaert, lawyers,

European Union Intellectual Property Office (EUIPO), represented by E. Markakis and V. Ruzek, acting as Agents,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 15 January 2020 (Case R 1090/2019‑2), relating to opposition proceedings between Henkel and Creaton South-East Europe,

composed of A. Marcoulli, President, C. Iliopoulos and R. Norkus (Rapporteur), Judges,

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 16 November 2017, the applicant, Creaton South-East Europe Kft., 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).

2 The trade mark in respect of which registration was sought is the word sign CREATHERM.

3 The goods in respect of which registration was sought are in Class 19 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Building and construction materials and elements, not of metal, in particular for roofing and cladding; roofing materials, not of metal; roofing underlayment; cladding materials, not of metal; tiles; slates; corrugated sheets; sidings; building panels; refractory construction materials’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 226/2017 of 28 November 2017.

5 On 28 February 2018, Henkel AG & Co. KGaA filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier word mark CERETHERM, which was the subject, on 8 September 2015, of an international registration under No 1279386, with effect in Bulgaria, the Czech Republic, Hungary, Poland, Romania and Slovakia, and covers goods in Classes 17 and 19 corresponding, for each of those classes, to the following description:

– Class 19: ‘Building materials (not of metal); coatings (building materials)’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.

8 On 30 April 2019, the Opposition Division rejected the opposition in its entirety. It found, first, that the goods in question were identical. Second, it found that the relevant public consisted of the general public and professionals and that its level of attention varied from average to high. Third, it found that the signs at issue had a low degree of visual and phonetic similarity and a very low degree of conceptual similarity. In view of those factors and since the earlier mark had an average degree of inherent distinctiveness, the Opposition Division concluded that there was no likelihood of confusion.

9 On 14 May 2019, Henkel filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 15 January 2020 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal and annulled the decision of the Opposition Division. In particular, the Board of Appeal found, first, that the relevant public consisted of the general public and professionals, residing in the Member States of the European Union in which the earlier mark had effect, namely Bulgaria, the Czech Republic, Hungary, Poland, Romania and Slovakia. It took the view that the relevant public’s level of attention for the goods in question is above average. Second, it found that the goods in question were identical. Third, as regards the comparison of the signs at issue, it found that they were visually similar to at least an average degree and phonetically similar to a low degree. Conceptually, it found that there was no legally relevant similarity. Fourth, it found that the earlier mark had a normal degree of inherent distinctiveness. Consequently, the Board of Appeal concluded that there was a likelihood of confusion between the signs at issue, in accordance with Article 8(1) (b) of Regulation 2017/1001.

13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It criticises the Board of Appeal for finding that there was a likelihood of confusion between the signs at issue. In particular, it disputes the finding relating to the relevant public’s level of attention, the assessment of the similarity between the signs at issue and the global assessment of the likelihood of confusion. Furthermore, according to the applicant, the Board of Appeal failed to state reasons for not taking into account EUIPO’s previous decisions.

15 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.

16 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 that 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, 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 identified (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).

17 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

18 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

19 In the present case, the Board of Appeal found, first, that the relevant public consisted of the general public, namely do-it-yourself amateurs, and professionals residing in the Member States of the European Union in which the earlier mark had effect, namely Bulgaria, the Czech Republic, Hungary, Poland, Romania and Slovakia.

20 The applicant does not dispute those assessments of the Board of Appeal. Moreover, there is nothing in the file that would call those assessments into question.

21 Second, the Board of Appeal found, first, that the relevant public had an above average level of attention.

22 The applicant disputes that assessment and claims that the Board of Appeal either made an error or contradicted itself in that, initially, it classified the relevant public’s level of attention as high and, subsequently, reached the conclusion that it was above average. The applicant submits that it is essential to determine the level of attention very precisely, distinguishing between ‘low’, ‘below average’, ‘average’, ‘above average’ (or ‘higher’), ‘high’ and ‘professional’ (or ‘expert’). It submits that an ‘above average’ level of attention does not necessarily equate to a ‘high’ level of attention. According to the applicant, the Board of Appeal should have found, in the present case, that the relevant public displayed a high, or even particularly high, level of attention.

23 EUIPO contends that the applicant’s challenge is based on a manifest misunderstanding of the contested decision. In any event, EUIPO argues that the Board of Appeal was entitled to rely on the above average level of attention since it is the lowest level of attention that must be taken into consideration in the examination of the likelihood of confusion and which, moreover, was correctly taken into account in the global assessment of the likelihood of confusion.

24 In the first place, it should be noted, as EUIPO correctly submits, that, where the relevant public consists of two categories of consumers, the public with the lower level of attention must be taken into consideration (see, to that effect, judgments of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited, and of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 29).

25 In that regard, it must be held that the Board of Appeal was right to find that it was necessary to assess the likelihood of confusion from the perspective of the general public, this being a matter of common ground between the parties.

26 In the second place, although it is true that the level of attention must be determined precisely, it must be noted that the applicant’s argument relating to an obligation to distinguish between six levels of attention as set out in paragraph 22 above has not been confirmed by the case-law. It must therefore be held that that argument is unfounded.

27 In the third place, the Board of Appeal, relying on various findings, namely the fact that the goods are not purchased on a daily basis, the considerations relating to their price, the functional aspects and considerations relating to compliance with safety standards, quality and sustainability, was right to conclude that the level of attention displayed by the general public is, in the present case, above average.

28 None of the applicant’s arguments that the general public displays a high, or even a particularly high, level of attention when purchasing the goods can call that conclusion into question.

29 First, contrary to what the applicant claims, it has not been established that the goods in question are generally expensive. Those goods cover a range of articles in the construction sector which can be bought at different prices. Furthermore, apart from the fact that it has not been shown that the goods in question are purchased exclusively in large quantities, even if that were so, that argument cannot, in the present case, have any effect on the relevant public’s level of attention, which is already considered, in the light of the factors referred to in paragraph 27 above, to be above average.

30 Second, it is true that the technical characteristics and aspects related to the sustainability and safety of the goods in question will require a precise and informed choice on the part of consumers and will lead them to display a higher than normal level of attention. This is apparent from, inter alia, the judgment of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Ceramicas del Foix (Rock & Rock) (T‑436/12, EU:T:2015:477), cited by the applicant. However, it should be noted that the Court has found, more recently, that non-professionals such as ‘do-it-yourself enthusiasts’, when faced with a mark covering goods similar to those in question in the present case, display an above average level of attention (see, to that effect, judgment of 28 January 2016, Sto v OHIM – Fixit Trockenmörtel Holding (CRETEO), T‑640/13, not published, EU:T:2016:38, paragraph 29 and the case-law cited).

31 Thus, in the present case, given the considerations relating to the nature, quality, use and sustainability of the goods, even though it follows from the foregoing findings that that public will pay more attention to the characteristics of the goods, in the present case, it must be held that that public’s level of attention in respect of the goods in question will be above average. It follows from the foregoing that the Board of Appeal’s assessment, which, contrary to what the applicant claims, is correct, must be upheld.

32 In the fourth place, as regards the alleged contradiction between the initial classification of the relevant public’s attention as high in paragraphs 22 and 23 of the contested decision, and subsequently as above average in paragraphs 24 and 38 of that decision, it must be held that that alleged contradiction is based on a misreading of the contested decision. It follows from the context of that decision as a whole and, in particular from paragraphs 24 and 38, that the Board of Appeal found that the level of attention was above average and not high. Since the judgments of 16 January 2008, Inter-Ikea v OHIM – Waibel (idea) (T‑112/06, not published, EU:T:2008:10), and of 6 September 2013, Leiner v OHIM – Recaro (REVARO) (T‑349/12, not published, EU:T:2013:412), cited by the Board of Appeal, relate to goods which differ from those in question, the considerations set out in paragraphs 22 and 23 of the contested decision cannot be regarded as a conclusion on the determination of the level of attention, but rather as a summary of the factors relevant to the determination of the level of attention. It must therefore be held that the alleged contradiction between paragraphs 22 and 23 of the contested decision, on the one hand, and paragraphs 24 and 38 of that decision, on the other, does not exist.

34 In the present case, the Board of Appeal found that ‘building and construction materials and elements, not of metal, in particular for roofing and cladding; roofing materials, not of metal; roofing underlayment; cladding materials, not of metal; tiles; slates; corrugated sheets; sidings; building panels; refractory construction materials’ in Class 19 covered by the mark applied for were identical to ‘building materials (not of metal)’ in Class 19 and covered by the earlier mark.

35 The applicant does not dispute the Board of Appeal’s assessments. Moreover, there is nothing in the file capable of calling those assessments into question.

36 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

37 In that regard, even though the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51, and of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57). Furthermore, the relevant consumer will break down the verbal sign even if only one of its elements is familiar to him (see, to that effect, judgment of 19 September 2012, TeamBank v OHIM – Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 38 and the case-law cited).

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

39 In the present case, the Board of Appeal found that the signs at issue consisted of two parts, namely the suffix ‘therm’ which, at most, has a very low degree of distinctiveness and means ‘related to warmth’, and the distinctive prefixes ‘cere’ and ‘crea’, which, for their part, have no meaning with regard to the goods in question.

40 Those findings, which, moreover, are not disputed by the applicant, must be upheld.

41 In paragraph 33 of the contested decision, the Board of Appeal found that, visually, the signs at issue were identical in length and that they shared the suffix ‘therm’. It also found that the signs at issue shared three of the four letters making up their prefixes, namely the letters ‘c’, ‘r’, ‘e’, and that the letter ‘c’ appeared, for both signs, in their initial part. It added that, irrespective of the fact that its position is not the same in the signs at issue, the letter pair ‘re’ appeared in both signs in the same order. It also found that, although the signs at issue differed in one letter, namely the letter ‘a’ in the mark applied for and the letter ‘e’ in the earlier mark, that difference was not such as to have any effect on the overall visual impression. The Board of Appeal concluded that there was at least an average degree of visual similarity.

42 The applicant disputes that assessment. It submits that the order of the letters is particularly important. As regards the prefixes of the signs at issue, in the applicant’s view, only the letter ‘c’ is placed identically at the beginning of those signs. The other letters of the distinctive prefixes are placed in a different order, which creates a different impression of the signs at issue. As for the suffix ‘therm’, since it is descriptive, the applicant argues that it should be disregarded in the assessment of visual similarity. Furthermore, the applicant claims that the consumer does not generally notice that the signs at issue have an identical number of letters or share some of them. The applicant therefore concludes that the signs have a rather low degree of visual similarity.

44 In that regard, in the first place, it is true, as the applicant submits, that, according to the case-law, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 82).

45 It is also true that, since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar (see, to that effect, judgment of 25 March 2009, ARCOL, T‑402/07, EU:T:2009:85, paragraph 81).

46 However, it is also apparent from the case-law relating to word marks that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (judgment of 25 March 2009, ARCOL, T‑402/07, EU:T:2009:85, paragraph 83). Thus, the presence in each of the signs at issue of several letters in the same order may be of some importance in the assessment of the visual similarities between those signs (see, to that effect, judgment of 12 May 2016, Red Lemon v EUIPO – Lidl Stiftung (ABTRONIC), T‑643/14, not published, EU:T:2016:294, paragraph 35 and the case-law cited).

47 In the present case, it must be held, as the Board of Appeal correctly found, that the signs at issue are composed of nine letters and share the letters ‘c’, ‘r’, ‘e’, ‘t’, ‘h’, ‘e’, ‘r’ and ‘m’. In that regard, it should also be noted that the signs at issue begin with the letter ‘c’ and that the groups of letters ‘re’ and ‘therm’ appear in the same order, creating a similar visual impression between those signs.

48 That impression cannot, contrary to what the applicant claims, be called into question by the fact that the position of the group of letters ‘re’ is slightly different in the two signs at issue (see, by analogy, judgment of 16 September 2009, Hipp & Co v OHIM – Laboratorios Ordesa (Bebimil), T‑221/06, not published, EU:T:2009:330, paragraph 46). In that regard, it is sufficient to note that, since the examination of the similarity of the signs at issue must take into account the overall impression produced by them, the difference in the group of letters ‘re’, placed in the central part of the signs at issue and, therefore, hardly noticeable (see, to that effect, judgment of 7 November 2017, Mundipharma v EUIPO – Multipharma (MULTIPHARMA), T‑144/16, not published, EU:T:2017:783, paragraph 41 and the case-law cited), does not make it possible to offset the similarities noted in paragraph 47 above.

49 Furthermore, although the signs at issue differ in one letter, namely the letter ‘a’, placed in fourth position in the mark applied for, and the letter ‘e’, placed in second position in the earlier mark, those differences, for the same reasons as those referred to in paragraph 48 above, are hardly noticeable. In the overall impression of the signs at issue, those differences cannot, therefore, call into question the similar visual impression noted in paragraph 47 above.

50 Furthermore, as regards the element ‘therm’, common to the signs at issue, it must be pointed out that, although it has, at most, a very low degree of distinctiveness, it cannot be regarded, on that ground alone, contrary to the applicant’s contention, as negligible in the assessment of the visual similarity of the signs at issue (see, to that effect, judgments of 7 November 2017, MULTIPHARMA, T‑144/16, not published, EU:T:2017:783, paragraph 42, and of 14 November 2018, Foodterapia v EUIPO – Sperlari (DIETOX), T‑486/17, not published, EU:T:2018:778, paragraph 66). It determines, to a large extent, the overall visual impression produced by the signs at issue on account of the majority of the letters which it represents in those signs (see, by analogy, judgment of 10 July 2012, Clorox v OHIM – Industrias Alen (CLORALEX), T‑135/11, not published, EU:T:2012:356, paragraph 36, and of 16 September 2013, Oro Clean Chemie v OHIM – Merz Pharma (PROSEPT), T‑284/12, not published, EU:T:2013:454, paragraph 57). The applicant’s arguments relating to the position of the suffix ‘therm’ placed at the end of the signs at issue and the fact that that suffix is not capable of dominating those signs cannot, therefore, call into question the foregoing findings.

51 Accordingly, the Board of Appeal acted correctly in law in finding that the signs at issue had at least an average degree of similarity.

52 In paragraph 34 of the contested decision, the Board of Appeal found that, in the countries concerned, with the exception of Romania, phonetically, the initial parts of the signs at issue are pronounced ‘tse-re’ in the earlier mark and ‘tsre-a’ in the mark applied for. After taking into account the difference in the syllabic structures of the signs at issue and the impact of the letter ‘a’ on the pronunciation of the mark applied for, the Board of Appeal found that there was a low degree of phonetic similarity.

53 The applicant does not dispute the Board of Appeal’s finding relating to a low degree of phonetic similarity between the signs at issue. In the light of the information in the file, there is no need to call that finding into question. Accordingly, that finding must be upheld.

54 On a conceptual level, after noting that the prefix ‘crea’ alluded to creativity whereas the prefix ‘cere’ had no meaning, the Board of Appeal found, in paragraph 35 of the contested decision, that the mark applied for alluded to creative solutions in thermal insulation, on the one hand, and the earlier mark alluded to thermal insulation, on the other. It took the view that the mere coincidence as to the suffix ‘therm’ as an indication of ‘insulating quality’ was not sufficient to establish a similarity between the signs at issue since it referred to the general objective of the goods in question. The Board of Appeal concluded that there was no legally relevant similarity.

55 The applicant submits that the earlier mark CERETHERM has no meaning, whereas the mark applied for, CREATHERM, which is made up of a prefix and a suffix both of which the relevant public could understand, has a meaning that can be grasped immediately, namely that it alludes to creative solutions in thermal insulation. According to the applicant, because one of the signs at issue has a clear and specific meaning, with the result that the public is capable of grasping it immediately, the Board of Appeal, instead of finding that there was no legally relevant similarity, should have concluded that there was a conceptual difference between the signs at issue.

56 EUIPO disputes the applicant’s arguments. It submits that, in order to find that there is a conceptual difference, at least one of the signs in question must have a clear and specific meaning, enabling the relevant public to grasp it immediately. According to EUIPO, however, neither of the signs at issue conveys such a meaning and the mark applied for makes a vague allusion to creative solutions in thermal insulation. The Board of Appeal, it submits, was therefore fully entitled to decide that the conceptual comparison was neutral.

57 As regards, first, the mark applied for, CREATHERM, it should be noted, in accordance with the case-law referred to in paragraph 37 above, that consumers will break that mark down into its elements ‘crea’ and ‘therm’, which, respectively, refer to creativity and to the idea of ‘related to warmth’, and will be able to understand it as referring to ‘creative solutions in thermal insulation’.

58 However, it must be stated, contrary to what the applicant claims, that the mark applied for cannot be regarded as a logical unit conveying a meaning capable of being grasped immediately. The term ‘creatherm’, unusual in its structure, is neither an expression known in any of the languages of the relevant public, nor is it an English word, even if, as the applicant argues, the prefix ‘crea’ and the suffix ‘therm’, when taken in isolation, are part of basic English vocabulary.

59 Second, as regards the earlier mark CERETHERM, it must be held that, in accordance with the case-law referred to in paragraph 37 above and as was found by the Board of Appeal, the relevant public will be able to identify the element ‘therm’, which is the only element with a clear and specific content forming part of the earlier mark. Consequently, although ‘cere’ has no meaning, consumers will be able to perceive the earlier mark as referring to ‘thermal insulation’.

60 Accordingly, it must be noted, in the light of the foregoing findings, that, despite the meaning to which the mark applied for refers, namely creative solutions in thermal insulation, being more specific than the meaning to which the earlier mark refers, namely thermal insulation, the signs at issue nevertheless refer to the concept of ‘thermal insulation’.

61 In that regard, the Board of Appeal’s finding, in paragraph 35 of the contested decision, that there is no legally relevant similarity when the common concept to which the signs at issue refer is conveyed by a term which, at most, has a very low degree of distinctiveness, cannot be accepted. It is apparent from the case-law that such a circumstance does not preclude a finding that there is, to varying degrees, a conceptual similarity (see, to that effect, judgments of 10 December 2014, Novartis v OHIM – Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraph 50, and of 6 April 2017, Policolor v EUIPO – CWS-Lackfabrik Conrad W. Schmidt (Policolor), T‑178/16, not published, EU:T:2017:264, paragraph 54).

62 Thus, even though, in the present case, the conceptual similarity results from the element ‘therm’ of the signs at issue, which, at most, has a very low degree of distinctiveness, it must be held that, contrary to what the Board of Appeal found, the signs at issue are conceptually similar.

63 In the light of all of the foregoing considerations, first, the applicant’s argument that the signs at issue are conceptually dissimilar must be rejected.

64 Second, it must also be held that the Board of Appeal’s conclusion that there is no legally relevant similarity is incorrect. It follows from all of the foregoing that, instead of finding that there is no legally relevant conceptual similarity, it must be held that the signs at issue are conceptually similar.

65 The Board of Appeal found, in paragraph 36 of the contested decision, that, from the point of view of the relevant public, the earlier mark, considered as a whole, had a normal degree of inherent distinctiveness for the goods which it covers.

66 The applicant does not dispute the assessments made by the Board of Appeal as regards the distinctiveness of the earlier mark. In the light of the information in the file, it is not necessary to call those assessments into question.

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 the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a higher 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).

68 In paragraph 38 of the contested decision, the Board of Appeal found that, in view of the identity of the goods in question, the fact that the signs at issue were visually similar to at least an average degree and that the earlier mark had an average degree of distinctiveness, there was, in the relevant territories, a likelihood of confusion on the part of the relevant public, even if that public has an above average level of attention.

69 The applicant disputes that finding. In particular, it submits that the signs at issue differ conceptually, which counteracts the visual and phonetic similarities and, therefore, excludes any likelihood of confusion. In the absence of a finding to that effect, the Board of Appeal should, in any event, have examined the overall degree of similarity between the signs at issue, which, it submits, is at most low. Thus, in the global assessment of the likelihood of confusion, the applicant submits that the Board of Appeal took into account only visual similarities. Furthermore, the applicant submits that the fact that the goods are identical cannot, in the present case, offset the differences between the signs, in particular those resulting from the initial parts of those signs, especially as the relevant public displays a particularly high level of attention and the earlier mark is not well known and does not have enhanced distinctiveness.

71 It should be noted that the Board of Appeal found, in paragraphs 33 to 35 of the contested decision, that the visual similarity was at least average and that there was a low degree of phonetic similarity, whereas the conceptual comparison was not legally relevant, although that latter finding is incorrect for the reasons set out in paragraphs 57 to 64 above.

72 As regards, in the first place, the applicant’s argument that the conceptual differences offset the visual and phonetic similarities, it is sufficient to note, contrary to what the applicant claims, that the signs at issue are conceptually similar. The applicant’s argument must therefore be rejected.

73 In the second place, it must be held that the Board of Appeal was entitled, without being required to establish the overall degree of similarity between the signs at issue, to carry out a global assessment of the likelihood of confusion in order to determine the extent to which the various factors contributed to the assessment of whether there was such a likelihood of confusion.

74 In that regard, it follows from the Board of Appeal’s finding set out in paragraph 38 of the contested decision that, contrary to what the applicant claims, the Board of Appeal did not fail to take into account, in the global assessment of the likelihood of confusion, the phonetic and conceptual aspects of the signs at issue, but attached greater weight to the visual aspect which contributed to establishing the likelihood of confusion at issue.

75 It follows from settled case-law that the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate to examine the objective conditions under which the marks may be present on the market (judgments of 3 July 2003, Alejandro v OHIM – Anheuser-Busch (BUDMEN), T‑129/01, EU:T:2003:184, paragraph 57, and 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).

76 Thus, it is well known that the goods covered by the signs at issue are purchased primarily in do-it-yourself shops and other specialist shops. These shops often operate on a self-service basis, even though they employ staff to assist customers with their choices. It must therefore be held that the visual perception of the marks at issue will normally occur before purchase because the goods and, therefore, the signs at issue are displayed in those shops.

77 The Board of Appeal was therefore right to attach greater weight to the visual aspect, which is particularly significant for goods in Class 19 (see judgment of 23 January 2008, Demp v OHIM – Bau How (BAU HOW), T‑106/06, not published, EU:T:2008:14, paragraph 45 and the case-law cited).

78 In the third place, although it is true that the initial part of word marks may be more likely to catch the consumer’s attention than the parts which follow, it must be noted, contrary to what the applicant claims, that the initial parts of the signs at issue also have similarities. The applicant’s argument in that regard cannot therefore succeed. Furthermore, the applicant’s argument relating to the usual structure of the signs at issue in the construction sector, for which the relevant public knows that it must attach importance to the initial part of the signs, must be regarded as unsubstantiated.

79 In the fourth place, it must be noted that the fact that the relevant public consists of end-consumers amongst others, whose level of attention can be considered to be above average – and not high, as noted in paragraph 31 above – is not sufficient, given the identical nature of the goods concerned and the similarity of the signs in dispute, to exclude the possibility that those consumers might believe that the goods come from the same undertaking or, as the case may be, from economically linked undertakings (judgment of 21 October 2008, Aventis Pharma v OHIM – Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 56). Furthermore, account should be taken of the fact that even the very observant public only rarely has the chance to make a direct comparison between the different marks but must place its trust in the imperfect image of them that it has kept in its mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraphs 26 and 28).

80 Furthermore, it should also be noted that the goods in question are identical (see paragraphs 34 and 35 above) and that, contrary to what the applicant claims, the differences between the signs at issue are not such that they cannot be offset by the identical nature of those goods. As follows from the foregoing paragraphs, the signs at issue have at least an average degree of visual similarity (see paragraph 51 above), a low degree of phonetic similarity (see paragraphs 52 and 53 above) and, contrary to what the Board of Appeal found, are conceptually similar (see paragraph 64 above), that latter fact making it more likely that the signs at issue will appear similar in the eyes of the relevant public.

81 In that latter respect, it must be held that the error regarding the conceptual comparison has no impact on the finding relating to the existence of a likelihood of confusion, nor can it lead to the annulment of the contested decision. In view of the foregoing findings, the Board of Appeal’s conclusion that there is a likelihood of confusion cannot be called into question solely by the level of attention displayed by the relevant public.

82 Likewise, the lack of reputation or of enhanced distinctiveness of the earlier mark cannot call into question the Board of Appeal’s finding relating to the existence of a likelihood of confusion. Although the high degree of distinctiveness of an earlier mark enables it to enjoy broader protection than those with less distinctiveness, the absence of a high degree of distinctiveness does not preclude a finding that there is a likelihood of confusion with regard to all the relevant factors in the present case (see, by analogy, judgment of 20 September 2011, Meica v OHIM – TofuTown.com (TOFUKING), T‑99/10, not published, EU:T:2011:497, paragraph 44).

83 In the fifth place, the applicant criticises the Board of Appeal on the ground that it did not state its reasons for not taking into account its previous decisions concerning opposition proceedings of 4 May 2016 in Case R 1379/2015‑4 (GROHTHERM/GREENTHERM) and of 29 August 2016 in Case R 783/2015‑4 (MICROTHERM/MARCOTHERM) rejecting a likelihood of confusion with regard to the signs at issue, which had been registered for goods identical to those covered in the present case and composed of a distinctive prefix with an almost identical number of letters, a descriptive suffix ‘therm’, and which were aimed at consumers with a high level of attention.

84 In that regard, it should be noted that the decisions concerning registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU Courts, and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM – Stuffer (ALOHA 100% NATURAL), T‑243/12, not published, EU:T:2013:344, paragraph 43).

85 It also follows from the case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the application of those principles must, however, be consistent with respect for the principle of legality (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76, and of 21 March 2014, FTI Touristik v OHIM (BigXtra), T‑81/13, not published, EU:T:2014:140, paragraph 52).

86 In the present case, it must be noted that the Board of Appeal did not refer to the previous decisions relied on by the applicant. However, the reasons which led the Board of Appeal to conclude that there was a likelihood of confusion between the signs at issue are sufficiently clear from the contested decision, read as a whole, and enable the applicant to assess the merits of the contested decision and the Court to exercise its power to review the legality of that decision. It is apparent from paragraphs 24 to 82 above that the Board of Appeal acted correctly in finding, on the basis of a comprehensive examination which it was required to carry out, that the mark applied for was caught by the relative ground for refusal under Article 8(1)(b) of Regulation 2017/1001.

87 That finding is not called into question by the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509, paragraph 66), on which the applicant relies.

88 The circumstances which gave rise to the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509) concerned, in the context of opposition proceedings brought against the signs, the failure to take into account EUIPO’s previous decisions which were cited by the opposing party in order to prove the reputation of the earlier mark relied on, and concerned the failure to explain the reasons for departing from those decisions relied on by the opponent.

89 However, it follows from the foregoing findings that the circumstances of the present case differ in substance from those of the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509, paragraph 66), with the result that the conclusions to be drawn from that judgment are not applicable to the present case.

90 Consequently, the single plea in law must be rejected and, therefore, the action must be dismissed in its entirety.

91 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.

92 Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO), 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) >> Creaton South-East Europe Kft (EU trade mark - Judgment) [2021] EUECJ T-168/20 (24 March 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T16820.html Cite as: EU:T:2021:160, ECLI:EU:T:2021:160, [2021] EUECJ T-168/20, [2021] ETMR 37

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