Claranet Europe v EUIPO - Claro (claranet) (Intellectual, industrial and commercial property : Trade marks : Judgment) [2017] EUECJ T-129/16 (14 November 2017)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark claranet — Earlier Benelux word mark CLARO — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Claranet Europe Ltd, established in St Helier (Jersey), represented by G. Crown, D. Farnsworth and O. Fairhurst, Solicitors, and A. Bryson, Barrister,

European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 January 2016 (Case R 803/2015-4), relating to opposition proceedings between Claro and Claranet Europe,

having regard to the order of 7 December 2016 rejecting the application for leave to intervene lodged by the other party to the proceedings before the Board of Appeal,

1 On 15 October 2012, the applicant, Claranet Europe Ltd, filed an application for the registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO) in accordance with Council Regulation (EU) No 207/2009 of 26 February 2009 on the EU trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) No 2017/1001 of the European Parliament and Council of 14 June 2017 on the EU trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services for which registration was sought are in, inter alia, Classes 9, 35, 38 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 9: ‘Electrical and electronic communications and telecommunications apparatus and instruments; communications and telecommunications apparatus and instruments; electrical and electronic apparatus and instruments all for processing, logging, storing, transmission, retrieval or reception of data; apparatus and instruments for recording, transmission or reproduction of sound, images or encoded data; computer programs (downloadable software); electronic books; television apparatus and instruments; computers; peripheral equipment for computers; computer programs, computer software; computer software supplied from the internet; electronic publications (downloadable) provided on-line from computer databases or the internet; computer software and telecommunications apparatus (including modems) to enable connection to databases and the internet; computer software to enable searching of data; digital music (downloadable) provided from a computer database or the internet; digital music (downloadable) provided from MP3 internet websites; devices for playing music received from the internet; MP3 players; satellite transmitters and receivers; radio-telephone apparatus and instruments; telephones, mobile telephones and telephone handsets; accessories for telephones and telephone handsets; adapters for use with telephones; battery chargers for use with telephones; computerised personal organisers; key boards; modems; electrical and electronic accessories and peripheral equipment designed and adapted for use with computers, audio-visual apparatus and electronic games equipment and apparatus for use with a monitor or television receiver; podcasts’;

– Class 35: ‘Data transmission subscriptions, subscriptions to a database, subscriptions to a computer database server, subscriptions to online newspapers; subscriptions to a telecommunications service; transmission of commercial and advertising information via the internet’;

– Class 38: ‘Monitoring, processing, broadcasting and reception of signals and information data processed by computers or by telecommunications apparatus and instruments; telecommunications, communications by telephone; data transmission services accessible by access code or by terminals, telephone, television and radio information relating to telecommunications, transmission of information by teleprinters, sending of messages and coded images; telecommunications management; assistance in the operation and supervision of telecommunications networks; telecommunication and data transmission services; sending and transmission of telegrams, exchange of computer documents, electronic exchanges of information by telex and facsimile machines; telephone information services, transfer of telephone or telecommunications calls, electronic mail services; transmission of information contained in data banks and picture banks; rental of telecommunications apparatus and installations; telecommunications services; communications by telephone, radio broadcasting, communications by radio telephone and by telegrams, and by all kinds of remote processing, by videotext, and in particular by computer terminals, computer peripheral devices or electronic and/or digital equipment, by videophone and video conferencing; transmission of information by means of data transmission or by satellite; sending and transmission of telegrams and messages; telex services, telegrams; data transmission, in particular high-speed (packet) transmission for public network operators and companies; forwarding and transmission of computerised documents; transmission of information relating to a directory of internet users; electronic mail, electronic messaging, dissemination of information by electronic means, in particular via global (internet) or private access (intranet) communications networks, satellite transmission; transmission and dissemination of data, sound and images, whether or not computer-aided; cellular telephone communication; secure transmission of data, among other with access codes; communication via computer terminals; press and information agencies; providing access to national and international computer servers; worldwide computerised telecommunications networks; services providing access to worldwide computer networks; providing access for users to computer networks for transfer and dissemination of data; providing assistance relating to telecommunications and data transmission operations; leasing access time to a computer database server, among other for world-wide (internet) or private access (intranet) telecommunications networks; internet service providers; transmission and reception of data and of information; electronic message delivery services; on-line information services relating to telecommunications; data interchange services; transfer of data by telecommunication; satellite communication services; broadcasting or transmission of radio or television programmes; videotext, teletext and viewdata services; video messaging services; video conferencing services; video telephone services; telecommunication of information (including web pages), computer programs and any other data; providing user access to the internet; providing telecommunications connections to the internet or databases; provision and operation of electronic conferencing, discussion groups and chat rooms; providing access to digital music websites on the internet; providing access to MP3 websites on the internet; delivery of digital music by telecommunications; telecommunication access services; computer aided transmission of messages and images; communication by computer; hire, leasing or rental of apparatus, instruments, installations or components for use in the provision of the aforementioned services; provision of access to an electronic on-line network for information retrieval; leasing of access time to a computer database; advisory, information and consultancy services relating to all the aforementioned’;

– Class 42: ‘Design, installation, maintenance, updating and rental of computer software; technical assistance services in the fields of telecommunications and IT; computer services, and in particular research, reservation, registration and administration of internet domain names; design, creation, hosting, maintenance and promotion of internet sites for others; design of computer and telecommunications systems; engineering services for applications on large and medium-sized computer systems; computer management services, namely computer facilities management, computer networks, surveying, technical consultancy and advice in the field of telecommunications, information technology and the internet; engineering and administration (programming) of telecommunications networks; electronic security consultancy services; surveying for the installation of telecommunications terminals, national or international database servers, centres providing access to a computer network; computer rental; computer programming; scientific research; upgrading of computer software; software maintenance services; creation of virtual and interactive images; computer services; encryption and coding of computer language; indexing of internet sites; research and monitoring of internet sites; computer load relief; conversion of data documents from physical to electronic media; appraisals for internet domain names and projects, creation and development of internet projects; providing information in the field of computers via computer networks; computer services, namely, providing search engines for obtaining data on a global computer network; filtering of unwanted e-mails; computer virus protection services; computer security services, namely, restricting access to and by computer networks to and of undesired websites, media, individuals, and facilities; maintenance of a commercial platform for domain names and internet projects’.

4 The trade mark application was published in Community Trade Marks Bulletin No 15/2013 of 22 January 2013.

5 On 19 April 2016, the other party to the proceedings before EUIPO, Claro SA, filed a notice of opposition to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 41 of Regulation 207/2009 (now Article 46 of Regulation 2017/1001).

– the Spanish figurative mark CLARO reproduced below, registered on 2 August 2007 under number 2756709 for the goods and services in Classes 9 and 38 corresponding, respectively, to the following description: ‘telephones, peripheral and accessories included in this class’ and ‘telecommunications services’:

– the Benelux word mark CLARO, registered on 10 July 2013 under number 201296 for services in Class 38 corresponding to the following description: ‘telecommunications’.

7 The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation No 2017/1001).

8 By decision of 23 February 2015, the Opposition Division upheld the opposition in relation to the Benelux word mark CLARO for the goods and services indicated in paragraph 3 above, but rejected the opposition in relation to the earlier Spanish figurative mark on the ground that Claro had not submitted sufficient evidence as regards genuine use of the mark.

9 On 22 April 2015, the applicant filed a notice of appeal with EUIPO under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation No 2017/1001) against the Opposition Division’s decision.

10 By decision of 26 January 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In the first place, regarding the comparison of the contested goods and services, the Board of Appeal held that the goods and services in Classes 9, 35, 38 and 42 for which the opposition was upheld were partly identical and partly similar to the telecommunications services in Class 38 covered by the earlier mark. In the second place, regarding the visual comparison of the signs, the Board of Appeal held that, despite the presence of the element ‘net’ at the end of the mark applied for, the marks at issue were similar to an average degree, notably in view of the weak distinctive character of the stylisation of the mark applied for. From an aural point of view, the Board of Appeal found there to be an above average degree of similarity, despite there being an extra syllable and a difference in vowels, in particular, first, because the first two syllables of the marks at issue coincided and, secondly, because the distinctive character of the element ‘net’ was weak. Comparing the signs from a conceptual point of view, the Board of Appeal held that, to the extent that the signs at issue did not convey any meaning for the relevant public, the conceptual comparison was neutral. In the third place, as regards the global assessment of the likelihood of confusion, the Board of Appeal held that, bearing in mind, first, the identity and similarity of the goods and services at issue and, secondly, the average degree of visual similarity and above average degree of aural similarity, there was a likelihood of confusion on the part of the relevant public.

13 In support of the application, the applicant relies on three pleas in law, respectively alleging, first, infringement of Article 8(1)(b) of Regulation (EC) No 207/2009, secondly, infringement of the principle of equal treatment and, thirdly, infringement of the obligation to state reasons.

The first plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009

14 In the context of the first plea, the applicant claims, in essence, that, contrary to the finding of the Board of Appeal, the signs at issue are not similar.

15 The applicant criticises the Board of Appeal for finding that the signs CLARO and claranet were similar due to their initial letters, namely ‘clar’, being the same. In that regard, it considers that the Board of Appeal was wrong merely to take into account only the initial elements of the marks at issue and should instead have assessed the overall impression produced by the signs. It submits that the Board of Appeal erred, on the one hand, by dissecting the mark applied for and, on the other, by ignoring the ‘net’ element in its assessment of visual and aural similarity on the ground that its descriptive character was weak on account of it being descriptive of the goods and services concerned.

17 Under Article 8(1)(b) of Regulation No 207/2009, 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, 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.

18 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

19 It is in light of those principles that it is appropriate to examine the assessment carried out by the Board of Appeal of the likelihood of confusion between the marks at issue.

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

21 As regards the relevant territory, in the present case, the protection of the earlier trade mark extends to the Benelux countries. It is therefore the perception of the marks at issue by the consumer of the goods and services concerned in that territory which must be taken into account, which is common ground between the parties.

22 As regards the relevant public, the Board of Appeal held in paragraph 27 of the contested decision that the relevant public was, on the one hand, the public at large and, on the other, the professional public in the telecommunications sector. That finding is correct and has furthermore not been contested by the applicant.

23 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

24 In the present case, the Board of Appeal held, as did the Opposition Division, without it being disputed by the applicant, that the relevant goods and services in Classes 9, 35, 38 and 42 covered by the trade mark applied for were partly identical and partly similar to the telecommunications services in Class 38 of the earlier mark.

25 It also held, in paragraph 27 of the contested decision, that since the relevant goods and services targeted both the public at large and the professional public in the telecommunication sector, the level of attention of the relevant consumer varied from average to higher than average.

26 It should be borne in mind that the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarities of the signs at issue, be based on the overall impression given by those signs, account being taken, in particular, of 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 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).

27 According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is to say visually, aurally and conceptually (see judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T-6/01, EU:T:2002:261, paragraph 30 and the case-law cited).

28 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C-334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C-334/05 P, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007, Nestlé v OHIM, C-193/06 P, not published, EU:C:2007:539, paragraph 42).

29 In addition, according to the case-law, for the purposes of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for 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 (judgments of 27 February 2008, Citigroup v OHIM – Link Interchange Network (WORLDLINK), T-325/04, not published, EU:T:2008:51, paragraph 66, and of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Ceramicas del Foix (Rock & Rock), T-436/12, EU:T:2015:477, paragraph 28).

30 In the present case, the figurative mark applied for consists of the word element ‘claranet’ in red lower-case letters in a standard letter type. The earlier word mark consists of the sole word element ‘claro’.

31 It should be noted that, in paragraphs 18 to 22 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to an average degree and that there was an above average degree of aural similarity. Since the marks in question convey no meaning, their conceptual comparison remained neutral, according to the Board of Appeal.

32 The Board of Appeal found, in essence, that the signs at issue were similar on the ground that, first, they coincide in the group of letters ‘clar’ which has no meaning for the relevant consumer and, second, the element ‘net’ placed at the end of the sign applied for would be associated by the consumer with the internet, particularly in relation to the goods and services in the telecommunications sector.

33 In so far as that finding had implications for Board of Appeal’s assessment of the visual and aural similarity, the meaning of the element ‘net’ must be examined as a preliminary point.

34 In the first place, the applicant claims, in essence, that the Board of Appeal was wrong to divide the sign into parts for the purposes of their comparison rather than comparing them as a whole. It maintains that the Board of Appeal erred in finding that the distinctiveness of the element ‘net’ in the trade mark applied for was weak on account of it being descriptive of the goods and services in question. It also adds that the trade mark applied for consists of a single word elementin so far as there is no differential in terms of size or letter type between either of the two parts of the sign, so that that sign cannot be divided into two parts.

35 In that regard, it should be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse 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), 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 (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).

36 In addition, it should be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and be remembered by them (judgment of 6 April 2017, Policolor v EUIPO – CWS-Lackfabrik Conrad W. Schmidt (Policolor), T-178/16, not published, EU:T:2017:264, paragraph 37).

37 Thus, in accordance with the case-law cited in paragraph 35 above, the relevant public is likely to divide the trade mark applied for into two parts, the word element ‘clara’ on the one hand and the element ‘net’ on the other.

38 As the Board of Appeal stated in paragraph 18 of the contested decision and at the hearing, the suffix ‘net’ is very frequently used in the field of telecommunications, and is globally one of the most popular names.

39 It follows that, in the telecommunications sector, into which inter alia the services covered by the trade marks at issue included in Class 38 fall, the word ‘net’ will be perceived as a descriptive indication, or at the very least as highly evocative of the internet and other forms of communication networks (see, to that effect and by analogy, judgments of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE et NLCollection), T-117/03 to T-119/03 and T-171/03, EU:T:2004:293, paragraph 33, and of 17 January 2017, Netguru v EUIPO (NETGURU), T-54/16, not published, EU:T:2017:9, paragraph 54).

40 In that context, the Court also rejects the applicant’s argument that the list of goods covered by the trade mark applied for involves many goods and services which do not require the use of the internet, such as the telephone, satellite communications, video conferencing, telex and facsimile, and in respect of which the ‘net’ element could not therefore be considered descriptive.

41 The fact remains that, in so far as the element ‘net’ refers to network services, it will be perceived by the relevant public as a generic name, very frequently used in the telecommunications sector, covering various network telecommunications services without necessarily implying the use of the internet.

42 In the light of the foregoing, the word element ‘net’ must be considered descriptive of the goods and services covered in so far as it has a sufficiently direct and specific link to them to enable the relevant public immediately to perceive, without further thought, a description of one of the essential characteristics of the goods in question (see, to that effect and by analogy, judgments of 6 October 2004, NLSPORT, NLJEANS, NLACTIVEand NLCollection, T-117/03 to T-119/03 and T-171/03, EU:T:2004:293, paragraph 33, and of 31 January 2013, K2 Sports Europe v OHIM – Karhu Sport Iberica (SPORT), T-54/12, not published, EU:T:2013:50, paragraph 30).

43 In addition, it is settled case-law that a consumer pays less attention to elements which are descriptive or have a weak distinctive character (see judgment of 25 November 2015, Soprema v OHIM – Sopro Bauchemie (SOPRAPUR), T-763/14, not published, EU:T:2015:883, paragraph 54 and the case-law cited). The fact remains that, in so far as, in the mind of the relevant consumer, the element ‘net’ will be perceived as descriptive of the goods and services covered by the marks at issue, that element has a weak distinctive character.

44 Thus the Board of Appeal cannot be criticised for having dissected the trade mark applied for, given that the importance of the word element ‘clara’ in the sign forming the trade mark applied for is reinforced vis-à-vis the element ‘net’ due to the descriptive character of the latter.

46 In the second place, the applicant criticises the Board of Appeal for having ignored the element ‘net’ when comparing the visual and aural similarity of the signs at issue on the ground that the descriptive character of the latter was weak.

47 In that regard, even if one element of one of the signs at issue is descriptive in respect of the goods and services covered, and therefore inherently distinctive to a low degree, it must be borne in mind that, according to the case-law, the weak distinctive character of an element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public. Thus, it cannot be excluded that because, in particular, of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark involved in the relevant public’s perception. Similarly, despite its weak distinctive character, an element of a mark which is descriptive is likely to attract the attention of the relevant public owing, in particular, to its position (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 36 and the case-law cited, and of 10 November 2016, Polo Club v EUIPO – Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN), T-67/15, not published, EU:T:2016:657, paragraph 62).

48 That is precisely so in the present case in so far as the descriptive element ‘net’ is likely to have an influence, albeit weak, on the perception of the trade mark applied for and the overall impression produced by the two marks at issue for the relevant public.

49 Accordingly, in the light of that finding in particular, it is necessary to ascertain whether, in the present case, the Board of Appeal erred in law by ignoring, in particular, the ‘net’ word element for the purposes of assessing the visual, aural and conceptual similarity of the signs at issue.

50 First of all, comparing the signs from a visual point of view, the Board of Appeal held that the earlier word mark CLARO and the trade mark applied for claranet were visually similar to an average degree.

51 The Board of Appeal reached that conclusion on the basis that the first four letters of the marks at issue are the same. In particular, in paragraph 20 of the contested decision, the Board of Appeal observed that the signs at issue had in common their initial four letters, placed in the same order, and that they each began with the letter ‘c’. Since the consumer generally pays greater attention to the beginning of a word mark, the Board of Appeal held that there was an average degree of similarity between the signs at issue.

52 The applicant maintains that the signs in question are not visually similar, inter alia, in so far as they clearly differ in their second part. It considers that the Board of Appeal’s assessment is vitiated by errors.

54 As a preliminary point, it should be borne in mind that what matters, rather, 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 (judgments of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T-402/07, EU:T:2009:85, paragraphs 82 and 83, and of 25 September 2015, Copernicus-Trademarks v OHIM – Bolloré (BLUECO), T-684/13, EU:T:2015:699, paragraph 46).

55 As the Board of Appeal correctly points out, the part common to both marks is capable of giving rise to a visual similarity, particularly because the public generally pays more attention to the initial part of word marks (judgment of 25 September 2015, BLUECO, T-684/13, EU:T:2015:699, paragraph 47), in particular where the element which follows is less distinctive.

56 Consequently, the fact remains that, in accordance with the case-law cited in paragraph 29 above, the marks at issue are at least partially identical as regards the visual aspect, inter alia, in so far as the earlier mark is to a great extent reproduced in the contested mark.

57 In the first place, on the grounds set out in paragraphs 36 to 43 above, the Court rejects the applicant’s argument, first, that the Board of Appeal erred in dividing the trade mark applied for into two parts for the purpose of comparing visual similarity and, second, the argument based on the weak distinctive character of the element ‘net’.

58 As regards, in the second place, the applicant’s argument that, for the purpose of assessing the visual similarity of the two signs, the Board of Appeal disregarded the element ‘net’, it seems that the applicant has incorrectly confused the finding that that element has a weak distinctive character with a failure by the Board of Appeal to take it into account.

59 In that regard, it should be noted that, in so far as the Board of Appeal found, in paragraph 20 of the contested decision, that the element ‘net’ was descriptive of the goods and services in question, and held, as a result, that it has a weak distinctive character, the Board of Appeal cannot be criticised for having erred in law by ignoring the element ‘net’ for the purpose of comparing the visual similarity of the signs in question.

60 Furthermore, contrary to what the applicant claims, the relevant Benelux public is not likely to divide the sign claranet into the three parts ‘cla’, ‘ra’ and ‘net’. As is clear from the findings in paragraphs 35 to 44 above, the consumer will break a word mark down into elements which, for him, suggest a concrete meaning or which resemble words known to him, namely, the elements ‘clara’ and ‘net’.

61 In the third place, the applicant’s argument that the Board of Appeal underestimated the effect of the difference in graphic stylisation of the signs at issue, in particular the colour red, cannot succeed either.

62 As the Board of Appeal correctly deduced in paragraph 20 of the contested decision, since the earlier trade mark is a word mark, its holder is entitled to use it in different scripts, such as, for example, a form comparable to that used by the trade mark applied for (judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T-346/04, EU:T:2005:420, paragraph 47, and of 29 October 2009, Peek & Cloppenburg v OHIM – Redfil (Agile), T-386/07, not published, EU:T:2009:420, paragraph 27).

63 It follows that the fact that the figurative mark applied for is comprised of lower-case letters in a standard letter type does not affect the visual comparison of the signs at issue.

64 On the facts of the case, the Board of Appeal was therefore entitled not to take into account the particular letter type used by the mark applied for in its comparison of the signs.

65 In addition, it should also be noted that the similarity of the marks at issue cannot be counterbalanced either by the difference in vowels in the central parts, namely, ‘o’ and ‘a’, or by the difference in length between the two marks, five letters in the earlier trade mark and eight in the trade mark applied for, in so far as, according to settled case-law, the difference in length of the signs at issue is insufficient to dispel the existence of a visual similarity (judgment of 13 June 2012, XXXLutz Marken v OHIM – Meyer Manufacturing (CIRCON), T-542/10, not published, EU:T:2012:294, paragraph 44). Nor, on the basis of the reasoning developed in paragraphs 36 to 44, can that finding be called into question by the presence of the additional word element ‘net’, given its weak distinctive character.

66 Therefore, in the light of all the foregoing, the Board of Appeal was entitled to find that there was an average degree of visual similarity between the signs in question.

67 As regards the aural comparison of the signs at issue, the Board of Appeal held, in paragraph 21 of the contested decision, that there was an above average degree of similarity between the marks in question.

68 The Board of Appeal reached that conclusion on the basis of the similarity between the first two syllables of the marks in question to which the average consumer generally pays greater attention. According to the Board of Appeal, that finding cannot be invalidated by the fact that the signs in question differ, first, in the sound of the vowels ‘a’ and ‘o’ at the end of the earlier trade mark and in the central part of the trade mark applied for, respectively, and, second, in the further syllable ‘net’ at the end of the contested trade mark in so far as that element has a weak distinctive character.

69 The applicant maintains that the two signs have important aural differences. First, it claims that the Board of Appeal erred in taking account of the descriptive character of the element ‘net’ for the purpose of the aural comparison of the signs in question by finding that that element would be perceived as weakly distinctive. Second, it submits that the Board of Appeal was wrong to find that the word element ‘net’ would be perceived as weak, given the difference in respective pronunciation of the two marks following from the number and order of the syllables. In any event, it maintains that, even if it cannot be excluded that the average consumer hears the trade mark applied for in two syllables, he would be more likely to hear and recall the word in full.

71 In the present case, the Court notes that the trade mark applied for consists of three syllables, namely ‘cla’, ‘ra’ and ‘net’, whereas the earlier trade mark consists of two syllables, namely ‘cla’ and ‘ro’.

72 Thus, as has already been stated in the context of the visual comparison, the fact that the number of syllables of the signs at issue is different is not sufficient for similarity between the marks to be excluded, since that has to be assessed on the basis of the overall impression produced by their full pronunciation (see judgment of 7 September 2016, Victor International v EUIPO – Ovejero Jiménez and Becerra Guibert (VICTOR), T-204/14, not published, EU:T:2016:448, paragraph 125 and the case-law cited).

73 In that regard, it should also be noted that the attention of the consumer is usually focused on the beginning of the word, a principle which also applies to the aural comparison (judgment of 25 November 2015, SOPRAPUR, T-763/14, not published, EU:T:2015:883, paragraph 60).

74 Furthermore, it is also settled case-law of the Court that an element of a composite mark which has a weak distinctive character has only a limited impact on the aural similarity (judgment of 25 November 2015, SOPRAPUR, T-763/14, not published, EU:T:2015:883, paragraph 62).

75 However, it should be noted that, despite the initial syllables being the same, there is a not insignificant aural difference resulting, first, from the pronunciation of the central part of the trade mark applied for and of the final part of the earlier trade mark created by the sound of the vowels ‘a’ and ‘o’ respectively, and, second, from the last syllable of the trade mark applied for, which is not part of the earlier trade mark. The fact remains that it cannot be held on the basis of that difference that there is aural similarity to an above average degree.

76 In addition, in so far as, in paragraph 21 of the contested decision, the Board of Appeal found that the further syllable has a weak distinctive character, it cannot be criticised for having ignored the word element ‘net’ in comparing the aural similarity.

77 Therefore, given that the pronunciation of the signs at issue differs inter alia by the length and sound of the second and third syllables and that the descriptive character of the element ‘net’ is likely to have an influence, albeit limited, on the aural similarity, the Court finds, contrary to what the Board of Appeal found, that the signs at issue are aurally similar only to an average degree.

78 Lastly, as far as concerns the conceptual similarity, the applicant submits, in essence, that the contested mark should be assessed as a whole. It states that, although that mark is not likely to have any particular meaning for some consumers, the fact remains that it will be perceived by other consumers as a misspelling of the word denoting a musical instrument so that they will associate the trade mark applied for with the word ‘clarinette’ given that it is spelt very similarly in Dutch, French and German.

79 The applicant also claims that the Board of Appeal was inconsistent in so far as, for the purpose of assessing conceptual similarity, it did not divide the mark claranet into two parts, contrary to the approach it adopted for the purpose of assessing visual and aural similarity.

80 In that regard, it submits that the Board of Appeal’s assessment is vitiated by an error of law in so far as the Board of Appeal did not take into account the meaning conveyed by the various elements of the marks at issue.

82 First of all, it is undeniably the case that the applicant’s line of argument cannot succeed in so far as the earlier mark CLARO conveys no meaning for the relevant public in the Benelux.

83 When a term has no meaning for the relevant public, a conceptual comparison of the signs cannot be made (judgment of 26 May 2016, Sfera Joven v EUIPO – Las banderas del Mediterráneo (NOOSFERA), T-99/15, not published, EU:T:2016:321, paragraph 49; see also, to that effect, judgment of 16 September 2013, Gitana v OHIM – Teddy (GITANA), T-569/11, not published, EU:T:2013:462, paragraph 67).

84 That finding cannot be invalidated by the applicant’s argument that CLARO is one of the most frequently used words in Spanish in so far as, according to settled case-law, knowledge of a foreign language cannot in general be assumed (judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T-292/08, EU:T:2010:399, paragraph 83; see also, to that effect, judgment of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T-330/12, not published, EU:T:2014:569, paragraph 40).

85 In that context, the applicant cannot reasonably rely on the argument that the relevant public will associate the trade mark applied for with the musical instrument ‘clarinette’ [‘clarinet’].

86 Therefore, in accordance with the case-law cited in the preceeding paragraphs, given that the word element ‘claro’ does not have any ordinary or known meaning for the relevant public in the Benelux, the Court upholds the Board of Appeal’s finding that the conceptual comparison of the marks at issue remains neutral, and it is not necessary to rule on the other arguments advanced by the applicant.

87 However, in so far as the Board of Appeal overestimated the degree of aural similarity, it is necessary to ascertain whether that error had an impact on its overall assessment of there being a likelihood of confusion.

88 In that regard, it must be borne in mind that global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, 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 (judgment of 29 September 1998, Canon, C-39/97, EU:C:1998:442, paragraph 17, and judgment 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).

89 For the purpose of ascertaining whether that is so, the Court finds, first, that the marks at issue are visually and aurally similar to an average degree and conceptually neutral. Second, it should be reiterated that the Board of Appeal did not err in its assessment by finding that the goods and services covered by the signs at issue were the same or similar.

90 Therefore, in view of the findings set out in the preceding paragraph and of relevant public’s average to above average level of attention, the Court concludes that the Board of Appeal was entitled to take the view, in paragraph 28 of the contested decision, that there was a likelihood of confusion from the point of view of the average consumer between the trade mark applied for and the earlier mark, and it is not necessary to examine the compass of the earlier mark’s distinctive character.

91 In the light of all of the foregoing considerations, the first plea must be rejected.

92 As regards the second plea, the applicant criticises the Board of Appeal for disregarding the principle of equal treatment by refusing to register the trade mark applied for, although EUIPO has allowed the registration of numerous similar marks with the suffix ‘net’.

94 In that regard, it must be recalled that EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions previously taken in respect of similar applications and consider with especial care whether it should decide them in the same way or not (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraph 74).

95 However, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, applicable in the factual circumstances of the particular case and whose purpose is to ascertain whether the sign at issue is not caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraph 77).

96 In addition, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous practice of the Boards of Appeal (see judgment of 24 November 2015, Intervog v OHIM (meet me), T-190/15, not published, EU:T:2015:874, paragraph 42 and the case-law cited).

97 In the present case, in so far as the Board of Appeal conducted a full and specific assessment of the trade mark applied for before refusing to register it, the applicant cannot successfully cite previous decisions of EUIPO for the purpose of casting doubt on the finding that registration of the mark applied for was incompatible with Regulation No 207/2009.

98 In the light of all of the foregoing, the second plea must be rejected as unfounded.

99 In the context of the third plea, the applicant submits that EUIPO did not sufficiently fulfil its obligation to state reasons. In essence, it criticises the Board of Appeal for not having referred to the RESPICUR case(judgment of 13 February 2007, RESPICUR, T-256/04, EU:T:2007:46) underlying the Opposition Division’s decision. The applicant considers that, owing to the differences between the elements forming the marks at issue, the case-law cited is not applicable to the facts of the present case.

101 It should be noted that, according to the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94 of Regulation 2017/1001), decisions of EUIPO must state the reasons on which they are based. The duty to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose clearly and unequivocally the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent Community Court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T-363/10, not published, EU:T:2011:662, paragraph 73 and the case-law cited).

102 Thus, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to express a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (judgment of 3 March 2016, Ugly v OHIM–Group Lottuss (COYOTE UGLY), T-778/14, not published, EU:T:2016:122, paragraph 67).

103 In the present case, contrary to the applicant’s line of argument, it suffices to find that the contested decision, albeit succinct, contains an adequate statement of the reasons in line with the requirements set out in paragraph 102 above which made it possible to understand the Board of Appeal’s reasoning and for the applicant to prepare its action. As has been found in connection with the first plea, the Board of Appeal explained, to the requisite legal standard, why the relevant public will perceive the element ‘net’ of the trade mark applied for as descriptive of the relevant goods and services. Having supported its finding on sufficient grounds, the Board of Appeal cannot be criticised for not sufficiently fulfilling its obligation to state reasons, in particular, by not explicitly referring to a judgment of the Court.

104 It therefore follows from the foregoing considerations that the third plea must be rejected, as must the action in its entirety.

105 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.

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

2. Orders Claranet Europe Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Claranet Europe v EUIPO - Claro (claranet) (Intellectual, industrial and commercial property : Trade marks : Judgment) [2017] EUECJ T-129/16 (14 November 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T12916.html Cite as: [2017] EUECJ T-129/16, EU:T:2017:800, ECLI:EU:T:2017:800

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