Claro Sol Cleaning v EUIPO - Solemo (Claro Sol Facility Services desde 1972) (EU trade mark - Judgment) [2018] EUECJ T-159/17 (08 March 2018)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark Claro Sol Facility Services desde 1972 — Earlier national figurative mark SOL — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Claro Sol Cleaning, SLU, established in Madrid (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

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

Solemo Oy, established in Helsinki (Finland), represented by M. Müller and A. Fottner, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 9 January 2017 (Case R 478/2016-1), relating to opposition proceedings between Solemo and Claro Sol Cleaning,

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

having regard to the response of EUIPO lodged at the Court Registry on 6 June 2017,

having regard to the response of the intervener lodged at the Court Registry on 30 May 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 1 October 2014, the applicant, Claro Sol Cleaning, SLU, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The services in respect of which registration was sought are in Classes 35, 37 and 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 35: ‘Services provided by persons or organisations, the principal purpose of which is commercial management assistance; business management, business administration, office functions; wholesaling and retailing in shops and via computer networks of household and industrial cleaning products, solvents, turpentine and solvents and chemicals of all kinds in general; franchising relating to business management assistance; advertising; sales promotion for others and sole agency, including via advertising matter and online advertisements; organisation of events, trade fairs, exhibitions and business deals for commercial or advertising purposes; business management assistance and consulting; import and export services; advertising also via global networks; business administration, including via global communications networks; business guidance services; auctioneering via global computer networks of household and industrial cleaning products; and the sale of solvents, turpentine and solvents and chemicals of all kinds in general; professional business consultancy, organisation of exhibitions for commercial purposes; commercial information, distribution of samples, advertisements and advertising matter; cost price analysis, marketing studies and research, efficiency experts, transcription and compilation of written communications and recordings and data of any kind; operation or management of an industrial or commercial enterprise; assistance relating to franchises; advertising; commercial administration of the licensing of the goods and services of others; computerised file management; professional business management; business appraisals; efficiency experts; business information; administrative processing of purchase orders; services involving the recording, transcription, composition, compilation or systemisation of written communications and recordings; compilation of mathematical or statistical data; support, assistance, advice, guidance and consultancy relating to the organisation, administration, operation, conducting and conveyancing of businesses and/or companies; sales promotion by means of loyalty cards and memberships that award bonuses, discounts and prizes; marketing and advertising consultancy and services; market research and surveys; commercial and business information; auditing and accounting; organisation of trade fairs and exhibitions for commercial or advertising purposes; telephone order-taking services for others; clerical services for the taking of sales orders; organisation for a third party of telephone welcoming services and of telephone receptionist services; mail sorting, handling and receiving; commercial intermediation services; consultancy, management, selection, recruitment, allocation, placement, recruitment and staffing; providing of staff to others; advice relating to the management and recruitment of staff; secretarial services and providing of secretaries and administrative staff; reprographic services; management and digitisation for others’;

– Class 37: ‘Cleaning, disinfecting, fumigation, rat exterminating, restoration, repair and interior and exterior maintenance of public and private buildings; cleaning and maintenance of large sales outlets, offices, health centres, industrial units, pharmaceutical industrial units, food industrial units, education centres, hotels, vehicles, trains, boats and aircraft; street and urban cleaning, cleaning of works, windows and curtain walling; polishing (cleaning); beach cleaning, domestic cleaning, leather cleaning, furniture cleaning, carpet cleaning, window cleaning, hygienic cleaning (swimming pools), sink cleaning, sewer cleaning, drain cleaning, upholstery cleaning, spillage cleaning, dry cleaning, street cleaning, road cleaning, hygienic cleaning (baths), cleaning of boilers, cleaning of commercial premises, machine cleaning, cleaning of nuclear plants, cleaning of public conveniences, cleaning of industrial installations, cleaning of electric motors, mechanical cleaning of waterways, cleaning of domestic premises; cleaning and polishing of motor vehicles; septic tank pumping and cleaning; valeting services relating to industrial cleaning; emptying [cleaning] services; cleansing of mobile structures; waste removal [cleaning]; cleaning of domestic utensils; cleaning by means of sanding (services for -); cleaning by water jetting (services for -); underwater abrasive cleaning of non-metallic surfaces; air duct cleaning services; cleaning of fabric, textiles, leather and hides; rental and hire of cleaning apparatus and equipment; integral, regulatory, conductive, preventative and corrective maintenance of electricity, air-conditioning, fire control, elevator, plumbing, brickwork, painting, gardening and energy-saving installations; janitorial services’;

– Class 39: ‘Transport, distribution, storage, conditioning, packaging and replacement of merchandise and goods; passenger transport, transport and unloading of refuse and waste, transport and emptying of containers; cargo loading and unloading services; replacement and delivery of goods; packaging and preparation of deliveries; sending and collection of deliveries and packages; mail, internal mail and messaging; organisation of deliveries of goods and delivery of orders via mail; removal services; packaging and wrapping of goods; consultancy and information relating to the logistics of distributing and locating goods; transport agencies for arranging the transportation of goods’.

4 The EU trade mark application was published in Community Trade Marks Bulletin on 14 November 2014.

5 On 10 February 2015, the intervener, Solemo Oy, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

6 The opposition was based on the following earlier Finnish figurative mark, which was filed on 19 May 2009 and registered on 30 November 2010 under the number 250356:

7 The services in respect of which that mark has been registered are in Classes 35, 37 and 39 and correspond, for each of those classes, to the following description:

– Class 35: ‘Recruitment services, secondment of personnel, reception services in lobbies of business premises (administrative services), office functions’;

– Class 37: ‘Cleaning services, laundry services and laundry activities; real estate management services, renovation, maintenance, repair and installation services on commission carried out for others as home help services’;

– Class 39: ‘Transportation, packaging and courier services relating to mailing services, cleaning services, real estate management and to security services as well as to laundry activities, mailing services’.

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

9 By decision of 14 January 2016, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the signs at issue. As regards, in the first place, the comparison of the services at issue, the Opposition Division made the following findings:

– ‘the contested services in Class 35 “office functions; computerised file management; administrative processing of purchase orders; services involving the recording, transcription, composition, compilation or systemisation of written communications and recordings; telephone order-taking services for others; clerical services for the taking of sales orders; mail sorting, handling and receiving; reprographic services; management and digitisation for others; secretarial services; organisation for a third party of telephone welcoming services and of telephone receptionist services; consultancy, management, selection, recruitment, allocation, placement, recruitment and staffing; providing of staff to others; advice relating to the management and recruitment of staff; providing of secretaries and administrative staff” are identical to the [intervener’s] services[;]

– the contested services in Class 35 “business administration; business administration, including via global communications networks; import and export services” are similar to the [intervener’s] services[;]

– the contested services in Class 35 “services provided by persons or organisations, the principal purpose of which is commercial management assistance; business management, business management assistance and consulting; business guidance services; cost price analysis, marketing studies and research, efficiency experts, transcription and compilation of written communications and recordings and data of any kind; operation or management of an industrial or commercial enterprise; commercial administration of the licensing of the goods and services of others; professional business consultancy; professional business management; business appraisals; efficiency experts; business information; compilation of mathematical or statistical data; support, assistance, advice, guidance and consultancy relating to the organisation, administration, operation, conducting and conveyancing of businesses and/or companies; market research and surveys; commercial and business information; auditing and accounting; commercial intermediation services; assistance relating to franchises” are similar to a low degree to the [intervener’s] “office functions” in Class 35. These services can target the same consumers and are likely to come from the same kinds of undertakings[;]

– the contested services in Class 35 “wholesaling and retailing in shops and via computer networks of household and industrial cleaning products, solvents, turpentine and solvents and chemicals of all kinds in general; franchising relating to business management assistance; advertising; sales promotion for others and sole agency, including via advertising matter and online advertisements; organisation of events, trade fairs, exhibitions and business deals for commercial or advertising purposes; advertising also via global networks; auctioneering via global computer networks of household and industrial cleaning products; and the sale of solvents, turpentine and solvents and chemicals of all kinds in general; organisation of exhibitions for commercial purposes; commercial information, distribution of samples, advertisements and advertising matter; advertising; sales promotion by means of loyalty cards and memberships that award bonuses, discounts and prizes; marketing and advertising consultancy and services; organisation of trade fairs and exhibitions for commercial or advertising purposes” are dissimilar to the services on which the opposition is based. They differ in nature, purpose, method of use, distribution channels and points of sales. They do not target the same consumers and are not likely to come from the same kinds of undertakings. In addition, they are neither complementary nor in competition[;]

– the contested services in Class 37 “cleaning, disinfecting, fumigation, rat exterminating; janitorial services; cleaning of large sales outlets, offices, health centres, industrial units, pharmaceutical industrial units, food industrial units, education centres, hotels, vehicles, trains, boats and aircraft; street and urban cleaning, cleaning of works, windows and curtain walling; polishing (cleaning); beach cleaning, domestic cleaning, leather cleaning, furniture cleaning, carpet cleaning, window cleaning, hygienic cleaning (swimming pools), sink cleaning, sewer cleaning, drain cleaning, upholstery cleaning, spillage cleaning, dry cleaning, street cleaning, road cleaning, hygienic cleaning (baths), cleaning of boilers, cleaning of commercial premises, machine cleaning, cleaning of nuclear plants, cleaning of public conveniences, cleaning of industrial installations, cleaning of electric motors, mechanical cleaning of waterways, cleaning of domestic premises; cleaning and polishing of motor vehicles; septic tank pumping and cleaning; valeting services relating to industrial cleaning; emptying [cleaning] services; cleansing of mobile structures; waste removal [cleaning]; cleaning of domestic utensils; cleaning by means of sanding (services for -); cleaning by water jetting (services for -); underwater abrasive cleaning of non-metallic surfaces; air duct cleaning services; restoration, repair and interior and exterior maintenance of public and private buildings; integral, regulatory, conductive, preventative and corrective maintenance of electricity, air-conditioning, fire control, elevator, plumbing, brickwork, painting, gardening and energy-saving installations; cleaning of fabric textiles, leather and hides” are identical to the [intervener’s] services[;]

– the contested services in Class 37 “maintenance of large sales outlets, offices, health centres, industrial units, pharmaceutical industrial units, food industrial units, education centres, hotels, vehicles, trains, boats and aircraft” are highly similar to the [intervener’s] “maintenance, repair and installation services on commission carried out for others as home help services”[;]

– the contested services in Class 37 “rental and hire of cleaning apparatus and equipment” are similar to the [intervener’s] “cleaning services”[;]

– the contested services in Class 39 “transport, distribution, storage, conditioning, packaging and replacement of merchandise and goods; transport and unloading of refuse and waste, transport and emptying of containers; cargo loading and unloading services; replacement and delivery of goods; packaging and preparation of deliveries; sending and collection of deliveries and packages; mail, internal mail and messaging; organisation of deliveries of goods and delivery of orders via mail; packaging and wrapping of goods; transport agencies for arranging the transportation of goods” are identical to the [intervener’s] services[;]

– the contested services in Class 39 “passenger transport; removal services; consultancy and information relating to the logistics of distributing and locating goods” are similar to the [intervener’s] services’.

10 As regards, in the second place, the similarity of the signs at issue, the Opposition Division found that there was, first, a low degree of visual similarity between those signs and, second, phonetic similarity for the part of the public which recognised the letter ‘o’ in the figurative representation of the earlier mark, but no phonetic similarity for the other part of the public which did not recognise that letter. The Opposition Division found that there was no conceptual similarity because the word ‘sol’ did not convey any concept in Finnish. In the third place, the Opposition Division pointed out that the level of attention of the public varied from average to higher than average. In the light of the fact that the intervener had not provided any evidence regarding the alleged reputation of the earlier mark, the Opposition Division rejected the opposition.

11 On 11 March 2016, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the decision of the Opposition Division.

12 By decision of 9 January 2017 (‘the contested decision’), the First Board of Appeal of EUIPO partially annulled the Opposition Division’s decision. As regards the comparison of the services at issue, it reproduced the findings which had been made by the Opposition Division set out in paragraph 9 above. The Board of Appeal examined the likelihood of confusion with regard to the Finnish public, since the earlier mark is a Finnish trade mark. It found, in paragraph 16 of the contested decision, that the level of attention varied from average to high. As regards the comparison of the signs at issue, the Board of Appeal pointed out, in paragraphs 25 to 27 of the contested decision, that a significant part of the consumers would not pronounce the word elements ‘desde 1972’ and ‘Facility Services’ because they either understood their meaning and therefore considered them to be descriptive or because they regarded those elements as secondary due to their smaller size and ancillary position in the mark applied for. It therefore found that the words ‘claro’ and ‘sol’ were the dominant elements in that mark. As regards the earlier mark, the Board of Appeal took the view that the relevant public would recognise the letter ‘o’, even though it is stylised, and that the reverse would be unlikely.

13 The Board of Appeal found, in paragraphs 28 and 29 of the contested decision, that the signs at issue were visually similar and that there was an average degree of phonetic similarity between them and, in paragraph 32 of the contested decision, that there was no conceptual similarity for the non-Spanish-speaking part of the Finnish public and conceptual similarity for the part of that public that understands basic Spanish words, on the ground that both signs refer to the concept of the ‘sun’, although with different connotations.

14 The Board of Appeal took the view, in paragraphs 35 and 36 of the contested decision, that there was no need to rule on the belated nature and the sufficiency of the evidence filed in support of the enhanced distinctiveness of the earlier mark, because, even if that mark had an average degree of inherent distinctiveness, there was a likelihood of confusion between the signs at issue solely with regard to the services which had been found to be identical or similar.

– annul the contested decision in so far as it rejected the application for registration of the mark applied for in respect of all the services in Classes 37 and 39 and some of those in Class 35;

– refuse registration of the mark applied for in respect of the services in Classes 35, 37 and 39 which the Board of Appeal regarded as identical or similar to the services covered by the earlier mark;

– order the applicant to pay the costs both of the proceedings before the Court and the opposition proceedings before EUIPO.

The admissibility of the intervener’s second head of claim, requesting that registration of the mark applied for be refused

18 In its second head of claim, the intervener requests that the Court refuse registration of the mark applied for in respect of the services in Classes 35, 37 and 39 which the Board of Appeal regarded as identical or similar to the services covered by the earlier mark.

19 It must be borne in mind that, according to settled case-law, in an action before the EU judicature against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the measures necessary to comply with judgments of that judicature. Accordingly, it is not for the Court to issue a direction to EUIPO (see judgment of 14 February 2008, Orsay v OHIM — Jiménez Arellano (O orsay), T‑39/04, not published, EU:T:2008:36, paragraph 15 and the case-law cited).

20 It follows that the intervener’s second head of claim, requesting that registration of the mark applied for be refused in respect of the services in Classes 35, 37 and 39 which the Board of Appeal regarded as identical or similar to the services covered by the earlier mark, is inadmissible.

21 In its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

22 The applicant complains, in particular, that the Board of Appeal carried out a visual, phonetic and conceptual analysis of the signs at issue which is, in a number of respects, incorrect and which departs from the general criteria set out in the case-law and EUIPO’s practice.

23 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

24 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 (judgments of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 70, and of 21 January 2015, Schwerdt v OHIM — Iberamigo (cat&clean), T‑587/13, not published, EU:T:2015:37, paragraph 15; see also, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 19).

25 Furthermore, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment of 21 January 2015, cat&clean, T‑587/13, not published, EU:T:2015:37, paragraph 16; see also, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 22, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 20).

26 That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 48, and of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 25; see also, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 26 and the case-law cited).

27 Furthermore, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements. It is apparent from the wording of Article 8(1)(b) of Regulation No 207/2009 — ‘there exists a likelihood of confusion on the part of the public’ — that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 18 September 2012, BÜRGER, T‑460/11, not published, EU:T:2012:432, paragraph 27; see also, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 21).

28 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them. 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 18 September 2012, BÜRGER, T‑460/11, not published, EU:T:2012:432, paragraph 28 and the case-law cited; see also, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

29 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.

30 In the present case, the earlier mark is a Finnish trade mark, with the result that, as is apparent from paragraph 16 of the contested decision, the relevant territory is that of Finland. Furthermore, as the Board of Appeal found in paragraph 16 of the contested decision, a finding which is not disputed by the applicant, the consumer’s level of attention varies from average to high. The applicant disputes only the fact that the Board of Appeal did not really, in examining the similarity of the signs at issue, take into account the assessment of the relevant public which was important in the present case and which it had previously defined, namely the Finnish public.

31 As regards the comparison of the services at issue, the Board of Appeal’s examination, which confirms that of the Opposition Division, has not been disputed by either the applicant or the intervener and it is therefore in the light of the conclusion which the Board of Appeal reached that the likelihood of confusion will be examined.

32 As regards the similarity of the signs at issue, it must be borne in mind that, as has already been stated in paragraph 27 above, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements.

33 In particular, 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. 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 (see, to that effect, judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43, and of 13 May 2015, easyGroup IP Licensing v OHIM — TUI (easyAir-tours), T‑608/13, not published, EU:T:2015:282, paragraph 33).

34 In the present case, it is therefore necessary, before examining whether there is any visual, phonetic and conceptual similarity between the signs at issue, to determine the distinctive and dominant elements of those signs.

35 As regards, in the first place, the trade mark applied for, it must be pointed out that that composite mark consists of three word elements, namely ‘desde 1972’, ‘claro sol’ and ‘facility services’, in letters which are mainly lower case, except for the first letters, ‘c’, ‘s’, ‘f’ and ‘s’, of the two words in the second and third elements. Whereas the second word element is written in red letters, the other two are written in blue letters. The figurative element is subdivided into two parts, namely, first, a representation of nine horizontal lines, consisting of various gradations of the colour blue, which are deemed to represent a wind-filled sail and, secondly, to the right-hand side of those lines, a red element deemed to represent, schematically, a musical note, which also serves as a mast for the sail represented by the horizontal lines.

36 According to the case-law, in assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (see judgment of 13 May 2015, easyAir-tours, T‑608/13, not published, EU:T:2015:282, paragraph 36 and the case-law cited).

37 In the present case, it is therefore necessary to examine the intrinsic qualities of the word elements and of the composite figurative element in the mark applied for, as well as their respective positions, in order to ascertain whether, as the Board of Appeal found in paragraph 26 of the contested decision, the words ‘claro’ and ‘sol’ are the dominant elements in that mark.

38 First, it is true that the words ‘claro’ and ‘sol’ stand out in the mark as a whole, since they are in the centre of the mark applied for and are in red letters.

39 Secondly, as regards the position of the element ‘claro sol’, it must be held that the word ‘claro’ at the beginning of the mark applied for is such as to make it slightly dominant, in accordance with the case-law that the relevant public normally attaches more importance to the first part of a trade mark (judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81; of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 50; and of 13 May 2015, easyAir-tours, T‑608/13, not published, EU:T:2015:282, paragraph 39).

40 Thirdly, the element ‘desde 1972’, which, in contrast to the element ‘facility services’, will not be understood by the Finnish public, is nonetheless, in spite of its decentred position, not negligible in the overall impression.

41 Fourthly, the composite figurative element, which consists of a representation of nine horizontal lines in a number of shades of blue, which are deemed to represent a wind-filled sail and seem to be connected to a kind of mast represented by a musical note, is striking owing to its size, its originality and its colours, with the result that it will be clearly perceived and memorised by the relevant public. The word elements will not therefore be dominant in the mark applied for. According to the case-law, in a composite sign, the figurative element may rank equally with the word element (see, to that effect, judgments of 24 November 2005, Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 47; of 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, not published, EU:T:2008:10, paragraphs 45 and 48; and of 13 May 2015, easyAir-tours, T‑608/13, not published, EU:T:2015:282, paragraph 39).

42 Consequently, the Board of Appeal’s assessment, in paragraph 26 of the contested decision, that the words ‘claro’ and ‘sol’ are the dominant elements in the mark applied for cannot be upheld.

43 Since no word or figurative element in the mark applied for can be regarded as dominant or negligible, it is thus the overall impression created by that mark which must be taken into account in the comparison with the earlier mark (see, to that effect, judgment of 13 May 2015, easyAir-tours, T‑608/13, not published, EU:T:2015:282, paragraph 44 and the case-law cited).

44 As regards, in the second place, the earlier mark, it must be pointed out that that mark comprises, first, the word element ‘sol’ written in upper case letters, the first and last of which are in red, and, secondly, a stylised letter ‘o’, which consists of a first completely yellow semicircle and of a second semicircle made up of two elongated red triangles on a white background and a kind of red quadrilateral on a white background.

45 It must be stated that, on account of fact that the relevant public will immediately perceive the letter ‘o’, the figurative element is integrated into the letter ‘o’, with the result that it has less resonance than a figurative element that is separate from the mark.

46 From a visual standpoint, the Board of Appeal found, in paragraph 28 of the contested decision, that the signs at issue were similar, on the ground that they coincided in the word element in common, ‘sol’, the red colour and the graphical elements of the lines.

47 In that regard, it is clear from settled case-law that the fact that one of the components of a composite trade mark is identical to another trade mark does not mean that those two marks are similar unless that component constitutes the dominant element within the overall impression created by the composite mark. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43; of 10 December 2008, METRONIA, T‑290/07, not published, EU:T:2008:562, paragraph 42; and of 13 May 2015, easyAir-tours, T‑608/13, not published, EU:T:2015:282, paragraph 50).

48 Furthermore, it must be borne in mind that the fact that the signs at issue include similar word elements does not, by itself, make it possible to conclude that the signs at issue are visually similar. The presence in the signs of figurative elements that are set out in a specific way can have the effect that the overall impression conveyed by each sign is different (judgments of 24 November 2005, KINJI by SPA, T‑3/04, EU:T:2005:418, paragraph 48; of 23 November 2010, Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 43; and of 7 November 2017, Frame v EUIPO — Bianca-Moden (BiancalunA), T‑628/15, not published, EU:T:2017:781, paragraph 55).

49 In the present case, it must be held that, in the context of the overall visual comparison of the figurative signs at issue, the presence of the element ‘sol’ in both of those signs is offset by the fact that, in the mark applied for, the element ‘claro’ is in first position, that the typographic characters in the signs at issue, and in particular those of the element ‘sol’, are different, that there are other non-negligible word elements in the mark applied for and that the other figurative elements of which it consists are also striking.

50 It follows that, in the context of an overall comparison of the overall impressions which the relevant public has of them, the signs at issue are, notwithstanding the fact that they have a monosyllabic word element in common, visually different, with the result that the Board of Appeal erred in considering them to be similar.

51 From a phonetic standpoint, the Board of Appeal found, in paragraph 29 of the contested decision, that there was an average degree of similarity between the signs at issue.

52 According to the case-law, when two signs which include word elements are compared phonetically, only those word elements are to be taken into account, whereas any figurative elements they may have fall more within the scope of the visual analysis of the signs (see, to that effect, judgment of 23 April 2015, Iglotex v OHIM — Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 72 and the case-law cited).

53 Furthermore, it must be held that the word element ‘claro sol’ in the mark applied for constitutes the central element in that mark on account of its position, even though the element ‘desde 1972’, in spite of its size and where it is placed, might also be pronounced by the Finnish public because of the fact that the word ‘desde’ has no meaning. By contrast, the element ‘facility services’ will certainly not be pronounced, on account of the fact that it will be understood by the Finnish public, whose knowledge of English is well known to be widespread (see, to that effect, judgments of 10 September 2008, CAPIO, T‑325/06, not published, EU:T:2008:338, paragraph 55, and of 26 November 2008, New Look v OHIM (NEW LOOK), T‑435/07, not published, EU:T:2008:534, paragraph 23).

54 Although the signs at issue also include figurative elements, which fall more within the scope of the analysis of visual similarity, as is apparent from the case-law referred to in paragraph 52 above, it must be held, on account of the fact that the sole word element in the earlier mark and one of the word elements in the mark applied for are identical, that there is some degree of similarity between those signs.

55 However, the presence, in the mark applied for, of the word element ‘claro’, the pronunciation of which is very audible, which consists of two syllables and which is in first position, strongly offsets the visual similarity with the earlier mark, which consists solely of the monosyllabic element ‘sol’. Furthermore, the presence of the word element ‘desde 1972’ cannot be considered to be negligible in the overall impression, with the result that, considered in that light, the phonetic similarity between the signs at issue could be regarded as limited.

56 From a conceptual standpoint, the Board of Appeal found, in paragraph 32 of the contested decision, that, for the non-Spanish-speaking part of the Finnish public, the signs at issue were not conceptually similar and that, for the part that understands basic Spanish words, they were conceptually similar in so far as both signs refer to the sun.

57 In that regard, it must be pointed out that it is not in dispute and is common knowledge, as the intervener has, moreover, stated, first, that Swedish is one of the two official languages of the Republic of Finland and, secondly, that, in Swedish, the word ‘sol’ means sun.

58 It follows that, for the Finnish public, which is easily able to understand Swedish, the signs at issue coincide as regards the meaning of the element ‘sol’, which will be understood as a reference to the sun.

59 However, notwithstanding the presence of the word element ‘sol’ in the signs at issue, the fact remains that the presence, in the mark applied for, of the element ‘claro’ in first position, the element ‘desde 1972’ and the representation of a musical note offsets the presence in both signs of the element ‘sol’, since the presence of the red musical note detracts from the coincidence in meaning associated with the presence in both of the signs of the element ‘sol’.

60 There is, nevertheless, some degree of conceptual similarity in so far as both signs refer to the sun, although, in the mark applied for, the presence of the elements ‘claro’ and ‘desde 1972’, which have no meaning in either of the official languages of Finland, offsets that similarity. Furthermore, as the applicant has correctly stated, consumers normally attach more importance to the first part of a trade mark.

61 It must be held on the basis of the foregoing findings that there is some degree of similarity between the signs at issue, a degree of similarity which must be regarded as not being high.

62 As regards the existence of a likelihood of confusion, it should be recalled that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgments of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 45, and of 27 February 2015, LS Fashion v OHIM — Gestión de Activos Isorana (L’Wren Scott), T‑41/12, not published, EU:T:2015:125, paragraph 77).

63 In the present case, it has been pointed out, in paragraph 31 above, that the services at issue are identical or similar and, in paragraph 61 above, that the signs at issue are similar to a degree which must be regarded as not being very high.

64 Furthermore, it has been pointed out in paragraph 30 above that, in the present case, the public’s level of attention varies from average to high.

65 Even if the earlier mark had a normal degree of distinctiveness, a point which the applicant disputes and which there is no need to examine at this stage, it must be held that the significant differences arising out of the presence of numerous striking elements in the mark applied for, such as the word element ‘claro’, the lines representing a sail, the musical note and the word element ‘desde 1972’, support the conclusion that the relevant public will, in the light of the level of attention which has been found to exist, be led to distinguish between the signs at issue.

66 However, it must be borne in mind that the likelihood of confusion cannot be determined in the abstract, but must be assessed in the context of a global analysis that takes into consideration, in particular, all of the relevant factors of the particular case (judgments of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 22, and of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 50). Although the examination of the factors relevant to this case does not reveal, prima facie, the existence of a likelihood of confusion between the signs at issue, it must be pointed out, as has been stated in paragraph 10 above, that the intervener relied on the reputation of the earlier mark and that the Opposition Division found that the intervener had not provided any evidence in support of its claim of enhanced distinctiveness. The Board of Appeal, in paragraph 35 of the contested decision, took the view that there was no need to rule on the belated nature and the sufficiency of the evidence provided, since there was a likelihood of confusion even on the basis of the earlier mark’s inherent distinctiveness.

67 In the light of all of the foregoing considerations, the single plea in law relied on in support of the action must be upheld and the contested decision must therefore be annulled.

68 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. Since EUIPO and the intervener have been unsuccessful, it is necessary, in accordance with the form of order sought by the applicant, first, to order EUIPO to bear its own costs and, secondly, to order the intervener to bear its own costs and to pay those incurred by the applicant.

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 January 2017 (Case R 478/2016-1);

2. Orders Solemo Oy to bear its own costs and to pay those incurred by Claro Sol Cleaning, SLU;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Claro Sol Cleaning v EUIPO - Solemo (Claro Sol Facility Services desde 1972) (EU trade mark - Judgment) [2018] EUECJ T-159/17 (08 March 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T15917.html Cite as: EU:T:2018:123, ECLI:EU:T:2018:123, [2018] EUECJ T-159/17

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