Sun Media v EUIPO - Meta4 Spain (METABOX) (Intellectual, industrial and commercial property - Trade marks) [2018] EUECJ T-204/16 (16 January 2018)

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(EU trade mark - Opposition proceedings - Application for EU word mark METABOX - Earlier EU and national word marks META4 and earlier EU and national figurative marks meta4 - Relative ground for refusal - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Similarity of the signs - Likelihood of confusion)

Sun Media Ltd, established in Hong Kong (China), represented by A. Schnider, lawyer,

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

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

Meta4 Spain, SA, established in Las Rozas (Spain), represented by I. Temiño Ceniceros, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 February 2016 (Case R 307/2015-2), relating to opposition proceedings between Meta4 Spain and Sun Media,

composed of S. Frimodt Nielsen, President, I.S. Forrester (Rapporteur) and E. Perillo, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 15 July 2016,

having regard to the response of the intervener lodged at the Court Registry on 29 July 2016,

1 On 16 May 2013, the applicant, Sun Media Ltd, 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, inter alia, in Classes 35, 38, 41 and 42 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: ‘Promotional services, especially promotional services regarding the promotion of third-party online offers of any kind, on the internet and other computer and communication networks, in particular on a website; promoting third-party online offers of any kind, especially by public display of hyperlinks, especially of hyperlinks in the form of thumbnails and banners, on the internet and other computer and communication networks, in particular on a website’;

- Class 38: ‘Enabling computer users to access data of any kind and respective hyperlinks via the internet and other computer and communication networks’;

- Class 41: ‘Entertainment services, especially electronic and online entertainment services; public display of online content and data of any kind, on the internet and other computer and communication networks, in particular on a website; public display of hyperlinks, especially of hyperlinks in the form of thumbnails and banners, to third-party online offers of any kind, on the internet and other computer and communication networks, in particular on a website’;

- Class 42: ‘Hosting content and data of any kind for others, especially on the internet and other computer and communication networks, in particular on a website; aggregation of online content and data of any kind, on the internet and other computer and communication networks, in particular on a website; enabling computer users to update, manipulate, modify, organise, store, back up, synchronise, transmit and share data of any kind and respective hyperlinks via the internet and other computer and communication networks’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 134/2013 of 18 July 2013.

5 On 3 October 2013, the intervener, Meta4 Spain SA, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).

- EU word mark No 8 335 606 META4 filed on 2 June 2009 and registered on 12 January 2010, covering, inter alia, services in Classes 35 and 38 and corresponding, for each of those classes, to the following description:

- Class 35: ‘Advertising; Business management; Business administration; Office functions; information and advice on human resources and personnel; assistance to businesses relating to human resources organisation and management; payroll preparation and providing external human resource department services; salary data processing, salary calculation, human resource management data processing; retailing in shops and via global computer networks of computer goods and software’;

- Class 38: ‘Telecommunications; communications by computer terminals, computer-aided transmission of messages and images, electronic mail, information about telecommunications, rental of telecommunications apparatus, radio communications, telephone and telegraphic communications, communications by fibre optic networks, rental of access time to a computer for data processing, rental of access time to a computer database; telecommunications services providing access to information on human resources, transmission of information on internet networks, in particular in the field of human resources, personnel recruitment and job seeking’;

- EU word mark No 1 262 856 META4 filed on 2 August 1999 and registered on 10 September 2002, covering, inter alia, services in Class 42 and corresponding to the following description: ‘Computer programming; design and upgrading of computer software and computers; computer engineering and consultancy; legal services’;

- EU figurative mark No 1 669 720 filed on 22 May 2000 and registered on 15 April 2002 covering, inter alia, the services ‘Telecommunications; communication by computer terminals; computer-aided transmission of messages and images; electronic mail; information about telecommunications; rental of telecommunications apparatus; radio broadcasting; communications by telephone, by telegram; communications by optical fibre networks’ in Class 38 and the services ‘Computer rental; leasing access time to a computer for data processing; leasing access time to a computer database; reconstruction of databases; consultancy in the field of computers; computer systems analysis; computer software design and rental; updating of computer software; computer programming’ in Class 42, as reproduced below:

- Spanish word mark No 2 878 485 META4 filed on 2 June 2009 and registered on 13 October 2009, covering, inter alia, services in Class 35 and corresponding to the following description: ‘Advertising; business management; business administration; office functions; business organisation and management consulting; business management; business inquiries; arranging of exhibitions for commercial and advertising purposes; payroll preparation and providing external human resource department services; payroll data processing; salary calculation; human resource management data processing; wholesaling, retailing in shops and via global computer networks of computer-related goods and software; subscription to telecommunication services; business advice and information to consumers; human resource consulting; data searches in computerised files for others; computerised-file management; compilation of information from a central computer; systematisation of data in a central computer’;

- Spanish figurative mark No 2 715 485 filed on 6 June 2006 and registered on 14 November 2006, covering the services ‘Advertising; commercial business management; administration of businesses; office functions; professional business consultancy; business management consulting; business organisation and management consulting; business inquiries; arranging of exhibitions for commercial or advertising purposes; retailing in shops and via global computer networks of computer software, hardware and computer-related goods; compilation of information from a central computer; systematisation of data on a central computer; data searches in computerised files for others; computerised-file management’ in Class 35 and the services ‘Providing of education; providing of training; entertainment; cultural and sporting activities; arranging and conducting of colloquiums, conferences, congresses, seminars and symposiums; organisation of exhibitions for educational or cultural purposes’ in Class 41, as reproduced below:

- the unregistered Spanish word mark META4, well known in Spain for services corresponding to the following description: ‘Advertising; business management; business administration; office functions; information and advice on human resources and personnel; assistance to businesses relating to human resources organisation and management; payroll preparation and providing external human resource department services; salary data processing, salary calculation, human resource management data processing; retailing in shops and via global computer networks of computer goods and software’.

7 The grounds relied on in support of the opposition were those laid down in Article 8(1)(b) and (2) of Regulation No 207/2009 (now Article 8(1)(b) and (2) of Regulation 2017/1001).

8 On 15 December 2014, the Opposition Division upheld the opposition in part. It rejected the opposition in respect of part of the services in Class 41 corresponding to the description ‘Entertainment; cultural and sporting activities; organisation of exhibitions for cultural or educational purposes’, and consequently, the mark applied for could be registered in respect of part of the services in Class 41 corresponding to the description ‘Entertainment services, especially electronic and online entertainment services’. On the other hand, it upheld the opposition in respect of all the services in Classes 35, 38 and 42 and in respect of all the other services in Class 41, and consequently, refused to register the mark applied for in respect of those services.

9 On 2 February 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division in so far as it upheld the opposition and refused to register the mark applied for in respect of all the services applied for, with the exception of some services in Class 41 as described in paragraph 8 above.

10 By decision of 8 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular it found that the element ‘meta’ in all of the signs at issue would be perceived as meaning ‘goal’ or ‘aim’ by the Spanish-speaking part of the relevant public. It came to that conclusion while stating that it could not exclude the possibility that part of the relevant public, including a part of the relevant Spanish-speaking public, might be able to associate that element with the prefix of Greek origin denoting change, transformation, permutation or substitution, or to understand that element as meaning ‘beyond’, ‘above’ or ‘at a higher level’, which is used in some compound words and in several medical and chemical terms. The Board also stated that it could not exclude the possibility that the part of the relevant public which had sufficient knowledge of the English language might associate the combination of the element in question and the element ‘4’, by virtue of its overall phonetic configuration, with the English term ‘metaphor’, but considered that this possibility could not be extended to the whole of the relevant public, nor to the whole of the relevant Spanish-speaking public who, in essence, would be more likely to pronounce that number in Spanish (contested decision, paragraphs 64 to 66, 68, 73 and 74).

11 As regards the comparison of the signs at issue, the Board considered that, on account of the presence of the element ‘meta’ placed at the beginning of each of those signs, they had average visual similarity, some phonetic similarity and some conceptual similarity (contested decision, paragraphs 83, 86 and 87).

12 With regard to the overall assessment of the likelihood of confusion, the Board of Appeal found that, bearing in mind the identity and similarity of the services concerned, the average degree of visual similarity between the signs at issue, the fact there is some degree of phonetic and conceptual similarity between them and the normal degree of distinctiveness of the earlier marks, the differences between those signs were not sufficient to offset their similarity and that there was therefore a likelihood of confusion, at least on the part of the Spanish-speaking public (contested decision, paragraphs 94 to 106).

- annul the contested decision and, consequently, reject the opposition and authorise the registration of the mark applied for;

- order EUIPO and the intervener to pay the costs, including the costs incurred before the Board of Appeal of EUIPO.

16 By letter lodged at the Court Registry on 8 February 2017, EUIPO informed the Court that it had granted the intervener’s request to add the services ‘Rental of vending machines; auctioneering services; economic forecasting’ in Class 35 to the services covered by the EU word mark No 8 335 606 META4 in accordance with Article 28(8) of Regulation No 207/2009 (now Article 33(8) of Regulation 2017/1001). It took the view, however, that that addition had no effect on the outcome of this case.

17 In support of the action, the applicant raises three pleas in law, alleging, respectively, infringement of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001), infringement of Article 75 of that regulation (now Article 94 of Regulation 2017/1001), and infringement of the general principles of EU law.

The second plea in law, alleging infringement of Article 75 of Regulation No 207/2009

19 By its second plea in law, the applicant submits that the Board of Appeal infringed Article 75 of Regulation No 207/2009 by concluding in paragraph 70 of the contested decision, the reasons stated having been inadequate and contradictory, that the element ‘4’ of the earlier marks had normal distinctiveness and that the relevant public would probably remember the word element ‘meta’ more easily than the element ‘4’ of those marks.

21 In that regard, it must be recalled that the right to good administration laid down in Article 41 of the Charter of Fundamental Rights, by virtue of paragraph 2(c) of that provision, includes, inter alia, the obligation of the administration to give reasons for its decisions. Article 75 of Regulation No 207/2009 specifically imposes that obligation in relation to decisions adopted by EUIPO. According to settled case-law, that obligation to give reasons has the same scope as that arising from Article 296 TFEU, according to which the reasoning of the author of the measure must be clear and unequivocal, and has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgments of 6 September 2012, Storck v OHIM, C-96/11 P, not published, EU:C:2012:537, paragraph 86 and the case-law cited; of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T-118/06, EU:T:2009:100, paragraph 19 and the case-law cited; and of 17 January 2017, Netguru v EUIPO (NETGURU), T-54/16, not published, EU:T:2017:9, paragraph 14).

22 According to the case-law, the question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see judgments of 2 April 2009, ULTIMATE FIGHTING CHAMPIONSHIP, T-118/06, EU:T:2009:100, paragraph 20 and the case-law cited, and of 13 April 2011, Safariland v OHIM - DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T-262/09, EU:T:2011:171, paragraph 91).

23 In the present case, contrary to what the applicant claims, it is clear that the Board of Appeal’s reasoning in paragraph 70 of the contested decision is not vitiated by any contradiction. In particular, the Board of Appeal was entitled to take the view, without committing any error, on the one hand, that the relevant public will focus on the earlier marks as a whole, due to the fact that the elements ‘meta’ and ‘4’ of those marks have the same degree of distinctiveness, while taking the view, on the other, that the element ‘meta’ will have more influence on the overall impression created by those marks than the element ‘4’ which is placed at the end of the marks in question and to which the relevant public will not attach any particular significance (contested decision, paragraphs 68 to 70).

24 Consequently, it must be held that the contested decision contains a statement of reasons consistent with the requirements referred to in paragraphs 21 and 22 above, which made it possible to understand the Board of Appeal’s reasoning and which made it possible for the applicant to prepare its action. The second plea in law must therefore be rejected as unfounded.

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

25 The applicant states, in essence, that the Board of Appeal erred in law in confining itself to comparing the mark applied for only with the element ‘meta’ of the earlier marks instead of taking into consideration the overall impression created by those marks. It also states that there is no likelihood of confusion between the signs at issue due to conceptual differences resulting from the perception that the earlier marks refer to the English word ‘metaphor’ and the weak distinctive character of the common element ‘meta’ in those signs.

27 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘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.

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

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

30 In the present case, since the earlier marks include an EU mark and two Spanish marks, the Board of Appeal found that the relevant territory for the purposes of assessing the likelihood of confusion was all of the European Union for the earlier EU word mark No 8 335 606 META4 (‘the earlier EU word mark’) and Spain for the earlier Spanish word mark No 2 878 485 META4 and the earlier Spanish figurative mark No 2 715 485 meta4 (respectively, ‘the earlier Spanish word mark’ and ‘the earlier Spanish figurative mark’, and together the ‘earlier Spanish marks’). It also found that the services concerned were directed at the public at large and professional consumers whose level of attention varied from average to high (contested decision, paragraphs 36 and 44). Those findings have not been disputed by the parties.

31 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 (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).

32 In the present case, the Board of Appeal found that the services concerned were partly identical and partly similar. Those findings have not been disputed by the parties.

33 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the 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 that 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).

34 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 (judgments of 12 June 2007, OHIM v Shaker, C-334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C-193/06 P, not published, EU:C:2007:539, paragraph 43). 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 (judgment of 20 September 2007, Nestlé v OHIM, C-193/06 P, not published, EU:C:2007:539, paragraph 43).

35 In the present case, the Board of Appeal found, first, that neither the mark applied for nor the earlier word marks referred to in paragraph 30 above contained any clearly dominant or negligible elements and that it was therefore their overall impression which had to be taken into consideration. With regard to the earlier Spanish figurative mark, it found that the word element ‘meta4’ was the most dominant element given that the figurative elements were purely decorative. Furthermore, it found that the common element ‘meta’ of the signs at issue had a normal distinctive character, whereas the distinctive character of the element ‘box’ of the mark applied was weak for part of the relevant public.

36 Secondly, with regard to the comparison of the signs at issue, the Board of Appeal stated that those signs coincided in that they both had the element ‘meta’ placed at the beginning of the signs, while they were different in that the earlier marks had the element ‘4’ and the mark applied for had the element ‘box’. It found that the relevant public would pay more attention to the beginning of the signs and that the element ‘4’ in the earlier marks would be pronounced ‘cuatro’ by the relevant Spanish-speaking public. Consequently, it found that the signs at issue were similar to an average degree in visual terms and that they were similar to a certain degree in phonetic terms. Conceptually, it found that the signs also had a certain degree of similarity for that part of the relevant public which would perceive the common element ‘meta’ as referring to the prefix of Greek origin denoting change, transformation, permutation, or substitution or as meaning ‘beyond’, ‘above’ or ‘at a higher level’. It also found, however, that it was probable that the relevant public would not perceive any concrete meaning in the signs at issue taken overall.

37 The applicant submits, in essence, first, that the Board of Appeal erred in law in confining itself to comparing the mark applied for only with the element ‘meta’ of the earlier marks instead of taking into consideration the overall impression created by those earlier marks. Secondly, it submits that the relevant public will perceive the earlier marks as referring to the term ‘metaphor’ in English as a result of its familiarity with the language known as ‘SMS language’ and its basic knowledge of the English language, and consequently, that the signs at issue have no conceptual similarity. Furthermore, it states that the common element ‘meta’ of the signs at issue will be perceived as a mere prefix with only a weak distinctive character, so that it would not be possible to conclude that there is any similarity between the signs at issue on that basis alone.

38 Contrary to what the applicant claims, it must be observed that the Board of Appeal made a comparison of the signs at issue by considering each one as a whole. It is expressly stated in the contested decision that the Board of Appeal did not confine itself to comparing the mark applied for with the sole element ‘meta’ of the earlier marks. Thus, it expressly stated that there were differences between the signs at issue as a result of, first, the presence of the element ‘4’ in the earlier marks and the element ‘box’ in the mark applied for, and secondly, the graphical features of the earlier Spanish figurative mark, but found that they were not such as to exclude the existence of a similarity between those signs (contested decision, paragraphs 80 to 87). The merits of that finding will be examined below, but at this stage it must be observed that the Board of Appeal based its finding of a similarity between the signs at issue on the overall impression produced by those signs.

- The dominant and distinctive character of the elements comprising the signs at issue

39 In that respect, first, with regard to the common element ‘meta’ of the signs at issue, it must first of all be observed that it is common ground that that element is a Spanish word meaning ‘goal’ or ‘aim’.

40 It is true that, conceivably, part of the relevant public, including part of the relevant Spanish-speaking public, may be able to associate the common element ‘meta’ of the signs at issue with the prefix of Greek origin denoting change, transformation, permutation or substitution, or to understand that element as meaning ‘beyond’, ‘above’ or ‘at a higher level’, which is used in some compound words and in several medical and chemical terms. However, as the Board of Appeal rightly points out in paragraph 65 of the contested decision, it is less likely that the relevant Spanish-speaking public would perceive that element as referring to that prefix where it is followed, as in the earlier marks, with a figure and not a word. The examples put forward by the applicant in order to provide proof of the widespread use of the term ‘meta’ as a prefix are not sufficient to cast doubt on that finding, since they concern only examples of the use of that prefix followed by another word. Therefore the Board of Appeal did not err in law when it considered that the element ‘meta’ will tend to be perceived as meaning ‘goal’ or ‘aim’ by the relevant Spanish-speaking public in the earlier marks.

41 In any event, it must be observed that none of the possible meanings of the common element ‘meta’ of the signs at issue is directly or indirectly descriptive of the services concerned and that the Board of Appeal therefore did not err in finding that it possessed a normal distinctive character.

42 Secondly, with regard to the element ‘4’ of the earlier marks, it must be observed, as the Board of Appeal did, that it has a normal distinctive character.

43 Thirdly, with regard to the element ‘box’ of the mark applied for, the part of the relevant public which has a sufficient knowledge of the English language will understand it as having its usual meaning in English and will perceive it as referring to a receptacle for the services concerned. It must therefore be found, as the Board of Appeal did, that that element has a lower than average distinctive character for that part of the relevant public which will understand its meaning in English and a normal distinctive character for the rest of that public.

44 In the light of the foregoing, it must be concluded that the Board of Appeal did not err in its assessment of the distinctive and dominant character of the elements making up the signs at issue in paragraphs 76 to 78 of the contested decision.

45 With regard to the visual comparison of the signs at issue, it must, first of all, be observed that they coincide in that they both have the element ‘meta’ placed at the beginning of the signs, while they are different, first, in that the earlier marks have the element ‘4’ and the mark applied for has the element ‘box’, and secondly, the earlier Spanish figurative mark has graphical features.

46 In that regard, first, it must be pointed out that, according to settled case-law, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since those two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM - Star TV (STAR TV), T-359/02, EU:T:2005:156, paragraph 43 and the case-law cited). In addition, according to well-established case-law, in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as more distinctive than the figurative elements, or even as dominant, since the relevant public will keep in mind the word elements to identify the mark concerned, the figurative elements being perceived more as decorative elements (see, to that effect, judgment of 6 December 2013, Premiere Polish v OHIM - Donau Kanol (ECOFORCE), T-361/12, not published, EU:T:2013:630, paragraph 32 and the case-law cited).

47 In the present case, it must be found, as the Board of Appeal did, that the typeface used to represent the element ‘meta’ of the earlier Spanish figurative mark is not particularly original. Similarly, the blue colour of the element ‘meta’, the graphic representation of the element ‘4’ in white in a red square and the combination of those elements is not particularly original or eye-catching. It follows that the figurative elements of the earlier Spanish figurative mark are not a special configuration liable to significantly influence the overall impression produced by that mark. It has, moreover, already been held that, where a graphic element of a figurative mark could be regarded as rather banal and not very imaginative, as in the present case, it could not be concluded that that graphic element was liable to create an image of the mark which the relevant public would keep in mind and therefore significantly influence the global impression produced by that mark. In such a case, according to the case-law, the comparison of the signs may be carried out on the basis of the word element alone, whilst still adhering to the principle that an assessment of the likelihood of confusion, with regard to the similarity of the signs, must be based on the overall impression given by them (see judgment of 1 July 2014, Jyoti Ceramic Industries v OHIM - DeguDent (ZIECON), T-239/12, not published, EU:T:2014:592, paragraph 45 and the case-law cited).

48 Secondly, it must also be recalled, as EUIPO and the intervener rightly contend, that the first component of the word marks is likely to catch the consumer’s attention more than the following components (see, to that effect, 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, and of 16 March 2005, L’Oréal v OHIM - Revlon (FLEXI AIR), T-112/03, EU:T:2005:102, paragraphs 64 and 65). That is more specifically the case where, as in the present case, the elements placed at the end, in this instance the element ‘4’ in the earlier marks and the element ‘box’ in the mark applied for, are shorter and less likely to attract the consumers’ attention (see, to that effect, judgment of 6 June 2013, Celtipharm v OHIM - Alliance Healthcare France (PHARMASTREET), T-411/12, not published, EU:T:2013:304, paragraph 26).

49 Consequently, the Board of Appeal did not err in concluding that the signs at issue had an average degree of visual similarity in paragraph 83 of the contested decision.

50 With regard to the phonetic comparison of the signs, it must be stated that they coincide in their first two syllables, ‘me’ and ‘ta’, while they are different in that the earlier marks have the element ‘4’ and the mark applied for has the element ‘box’.

51 As with the reasoning relating to visual similarity, it must be observed that the presence of the common element ‘meta’ at the beginning of the signs at issue permits the inference that they have a certain degree of phonetic similarity (see, to that effect, judgment of 6 June 2013, PHARMASTREET, T-411/12, not published, EU:T:2013:304, paragraph 34).

52 Consequently, the Board of Appeal did not err in concluding that the signs at issue had a certain degree of phonetic similarity in paragraph 86 of the contested decision.

53 With regard to the conceptual comparison of the signs at issue, contrary to what the applicant claims, it must be observed, in the first place, that it is unlikely that the earlier marks will be perceived as a reference to the English word ‘metaphor’. It is clear that the applicant’s argument is based on the premiss that the element ‘4’ of the earlier marks is pronounced by the relevant public in the same way as the word ‘four’ is in English.

54 First, irrespective of its level of knowledge of the English language and of its familiarity with the language known as ‘SMS language’, the relevant Spanish-speaking public will first of all naturally tend to pronounce the element ‘4’ in the same way as the Spanish word ‘cuatro’. That is a fortiori the case when, as in the present case, that element is preceded by a term which has a clear meaning in Spanish. In that regard, as was stated in paragraph 39 above, it is common ground that the element ‘meta’ corresponds to a Spanish word meaning ‘goal’ or ‘aim’. Thus, since that public will perceive the latter element as referring to a Spanish word, it is unlikely that it would pronounce the element ‘4’ of the earlier marks in the same way as the English word ‘four’.

55 Similarly, even if the relevant Spanish-speaking public perceives the element ‘meta’ as a prefix of Greek origin denoting change, transformation, permutation or substitution, or as meaning ‘beyond’, ‘above’ or ‘at a higher level’, which is used in some compound words and in several medical and chemical terms, it is unlikely that a prefix of Greek origin will cause it to pronounce the element ‘4’ in the same way as the English word ‘four’. Contrary to what the applicant claims, the existence of a certain number of English words beginning with the prefix ‘meta’ is not sufficient to cast doubt on that finding, given that the issue here is only the use of that prefix of Greek origin which is not specific to the English language, something which indeed the applicant accepts when it points out that there are also numerous words beginning with that prefix in Spanish, Greek and German, and which will therefore not automatically cause that public to associate the earlier marks with English words.

56 In that regard, the judgment of 16 January 2014, Aloe Vera of America v OHIM - Detimos (FOREVER) (T-528/11, EU:T:2014:10), which the applicant relies on, does not support its argument. The considerations in paragraph 68 of that judgment are expressly based on the presence of an English word, in the present instance ‘ever’, causing the relevant public to understand the element ‘4’ of the sign 4ever in the language known as ‘SMS language’ and to perceive that sign as meaning ‘forever’. That is not the case here. On the contrary, by analogy with the Court’s reasoning in paragraph 69 of that judgment, it must be concluded that the element ‘4’ of the earlier marks will, in the present case, be associated with the Spanish word ‘cuatro’ given that it is preceded by a word from the Spanish language (see, to that effect, judgment of 25 September 2015, August Storck v OHIM (2good), T-366/14, not published, EU:T:2015:697, paragraph 28).

57 Secondly, it must be observed that the word ‘metaphor’ is not a basic or common word in English. This is another difference compared with the cases which gave rise to the judgments of 16 January 2014, FOREVER (T-528/11, EU:T:2014:10), and of 25 September 2015, 2good (T-366/14, not published, EU:T:2015:697). Consequently, even if the relevant Spanish-speaking public had a basic knowledge of English or was familiar with the language known as ‘SMS language’, it is unlikely that a significant part of that public would perceive the earlier marks as a reference to that word, when such a perception requires a certain cognitive effort and will not be brought naturally to mind by that public in view of the services referred to. Contrary to what the applicant claims, the existence of the Spanish word ‘metafora’ does not cast doubt on that finding. The fact that that public must go through the association with an English word, even though there is no clear invitation to do so in the earlier marks, in order to perceive the reference to a Spanish word shows the cognitive effort required and how unlikely this would be for at least a significant part of the public in question.

58 Thirdly, the applicant’s arguments seeking to establish that the relevant public for the services in Classes 35 and 38, that is to say, professionals and consumers interested in IT, has a basic knowledge of English must be rejected as ineffective. Even if that were the case, which the applicant has not established to the requisite legal standard in its application, that public will not automatically, nor even necessarily, perceive the earlier marks as a reference to the term ‘metaphor’ for the reasons set out in paragraphs 53 to 57 above.

59 Consequently, in the light of the foregoing, the Board of Appeal did not err in concluding that, although it was conceivably possible that the part of the relevant public which had sufficient knowledge of the English language might associate the combination of the word element ‘meta’ and the element ‘4’ of the earlier marks, by virtue of its overall phonetic configuration, with the English term ‘metaphor’, that possibility cannot be extended to the whole of the Spanish-speaking public who would be more likely to associate the element ‘4’ with the Spanish word ‘cuatro’ (contested decision, paragraph 66).

60 In the second place, it must be recalled that the conceptual similarity of the signs at issue must be assessed on the basis of the evocative force that may be recognised in each of them taken as a whole (see, to that effect, judgment of 17 March 2004, MUNDICOR, T-183/02 and T-184/02, EU:T:2004:79, paragraph 90).

61 In the present case, although the relevant public will attribute a meaning to the common element ‘meta’ of the earlier marks, the element ‘4’ of those marks, by contrast, will have no meaning. Therefore, those marks, each taken as a whole, will not have any meaning either.

62 Similarly, although part of the relevant public will understand the element ‘box’ of the mark applied for as referring to the notion of a receptacle for the services concerned, it is likely that that element will have no meaning for at least a significant part of the relevant Spanish-speaking public due to its poor knowledge of the English language. Therefore, the mark applied for, taken as a whole, will not have any meaning for that part of the relevant public either.

63 Consequently, since the signs at issue, taken overall, are devoid of any conceptual meaning for a significant part of the relevant Spanish-speaking public, it must be concluded that the conceptual comparison of those signs is neutral for that part of the relevant public. Furthermore, since the element ‘box’ of the mark applied for has only a weak distinctive character for that part of the relevant public which understands its meaning (see paragraph 43 above), it must be concluded that the presence of that element in the mark applied for is not such as to preclude, for that part of the relevant public, the existence of at least a low degree of conceptual similarity between those signs due to the common element ‘meta’.

64 In the light of all the foregoing, the conclusion of the Board of Appeal in paragraph 87 of the contested decision that the signs at issue have a certain degree of conceptual similarity for all of the relevant public due to the presence of the element ‘meta’ at their beginning cannot be endorsed. Although those signs have at least a low degree of conceptual similarity, at least for that part of the relevant public which will understand the meaning of the element ‘box’ of the mark applied for, the conceptual comparison between those signs, nevertheless, remains neutral for the rest of the relevant public.

65 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C-39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and others), T-81/03, T-82/03 and T-103/03, EU:T:2006:397, paragraph 74).

66 In the present case, the Board of Appeal concluded that there was a likelihood of confusion between the signs at issue. In particular, in view of the identity or the similarity of the services concerned, it considered that the differences between the signs at issue arising from the elements ‘4’ of the earlier marks and ‘box’ of the mark applied for and the graphical features of the earlier Spanish figurative mark were not sufficient to offset an average degree of visual similarity and a certain degree of phonetic and conceptual similarity between those signs taken as a whole. It also considered that, whatever meaning is given to the common element ‘meta’ of those signs, the relevant public would believe that the services concerned come from the same undertaking or from economically linked undertakings and will think that the mark applied for METABOX is a variation of the earlier marks.

67 The applicant claims, in essence, that the conceptual differences between the signs at issue, arising from the perception that the earlier marks refer to the word ‘metaphor’ in English, offset any visual or phonetic similarity between those signs and exclude any likelihood of confusion.

69 In that regard, first, contrary to what the applicant claims, it must be observed that the Board of Appeal did in fact take into account each of the signs at issue as a whole to serve as a basis for its assessment of the existence of a likelihood of confusion in the present case (contested decision, paragraphs 103 and 104).

70 Secondly, it must be observed that the visual and phonetic differences between the signs at issue are not such as to rule out any similarity between those signs as a result of the presence of the element ‘meta’, placed at the beginning of the signs, and the overall impression created by those signs (see paragraphs 39 to 51 above).

71 With regard to the conceptual comparison between the signs at issue, it is apparent from the case-law that the global assessment of the likelihood of confusion implies that conceptual differences between two signs can counteract phonetic and visual similarities between them, provided that at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C-16/06 P, EU:C:2008:739, paragraph 98; see also, to that effect, judgment of 14 October 2003, Phillips-Van Heusen v OHIM - Pash Textilvertrieb und Einzelhandel (BASS), T-292/01, EU:T:2003:264, paragraph 54). However, that is not the situation in the present case.

72 For the reasons set out in paragraphs 53 to 63 above, it is likely that neither the earlier marks nor the mark applied for will have a clear and specific meaning for a significant part of the relevant Spanish-speaking public. In particular, contrary to what the applicant claims, it is unlikely that a significant part of the relevant public would perceive the earlier marks as referring to the English word ‘metaphor’ or would attribute meaning to the element ‘box’ of the mark applied for. It follows that, irrespective of the way in which the relevant public will perceive the common element ‘meta’ of the signs at issue, the conceptual comparison of those signs will remain neutral for a significant part of the relevant public. Moreover, those signs have at least a low degree of conceptual similarity for that part of the relevant public which will understand the meaning of the element ‘box’ of the mark applied for. Consequently, contrary to what the applicant claims, it must be stated that, for a significant part of the relevant public, those signs do not have any conceptual differences that might offset their visual and phonetic similarities.

73 That is all the more so, since the services concerned are in part identical and in part similar (see paragraph 32 above). According to the settled case-law recalled in paragraph 65 above, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Thus, even if the marks at issue have only a low degree of similarity, that would be offset by the high degree of similarity between the services covered by those marks.

74 Finally, it should be borne in mind that, according to established case-law, where, as in the present case, one of the earlier marks on which the opposition is founded is an EU trade mark, it is not a requirement of Article 8(1)(b) of Regulation No 207/2009 that, for the mark applied for to be refused registration, the likelihood of confusion must exist in all the Member States and in all the linguistic regions of the European Union. The unitary character of the EU trade mark means that an earlier EU trade mark can be relied on in opposition proceedings against any application for registration of an EU trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the EU (see judgment of 18 September 2012, Scandic Distilleries v OHIM - Bürgerbräu, Röhm & Söhne (BÜRGER), T-460/11, not published, EU:T:2012:432, paragraph 52 and the case-law cited).

75 Accordingly, since the relevant territory is, as is apparent from paragraph 30 above, that of the European Union, the existence of a likelihood of confusion for the Spanish-speaking part of the relevant public, because of the visual and phonetic similarity between the signs at issue and the identity or the similarity of the services in question, is sufficient to prevent the registration of the mark applied for.

76 In the light of all of the foregoing, it must therefore be held that the applicant has not shown that the Board of Appeal had erred in any way whatsoever by finding that there was a likelihood of confusion between the signs at issue. The first plea in law must therefore be rejected as unfounded.

The third plea in law, alleging infringement of the general principles of EU law

77 By its third plea in law, the applicant merely states that the Board of Appeal infringed the general principles of EU law.

79 In that regard, it must be recalled that, under Article 21 of the Statute of the Court of Justice of the European Union and Article 76(d) of the Rules of Procedure of the General Court, the application initiating proceedings must contain a brief statement of the pleas in law on which the application is based. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. The application must accordingly specify the nature of the grounds on which the action is based, which means that a mere abstract statement of the grounds does not satisfy the requirements of the Rules of Procedure (see judgment of 11 September 2014, Gold East Paper and Gold Huasheng Paper v Council, T-444/11, EU:T:2014:773, paragraph 93 and the case-law cited). In addition, it has already been held that the abstract reliance on general principles of law, without identifying those principles, does not constitute a summary of the pleas in law for the purposes of Article 21 of the Statute of the Court of Justice of the European Union and Article 76(d) of the Rules of Procedure (order of 8 March 2006, Service station Veger v Commission, T-238/99, not published, EU:T:2006:69, paragraph 30).

80 In the present case, as EUIPO rightly points out, it must be observed that the applicant merely states that the Board of Appeal infringed the general principles of EU law without elaborating any further on its plea. Consequently, the third plea in law must be dismissed as inadmissible and, therefore, the action must be dismissed in its entirety.

81 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

82 Furthermore, under Article 190(1) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. On the other hand, it is clear from that same provision that the General Court does not have jurisdiction to adjudicate on the costs relating to the proceedings before the Opposition Division of EUIPO. An application for taxation of such costs must therefore be declared inadmissible.

83 In the present case, since the applicant has been unsuccessful, it must be ordered to pay the costs, including the costs incurred before the Board of Appeal of EUIPO, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Sun Media v EUIPO - Meta4 Spain (METABOX) (Intellectual, industrial and commercial property - Trade marks) [2018] EUECJ T-204/16 (16 January 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T20416.html Cite as: ECLI:EU:T:2018:5, [2018] EUECJ T-204/16, EU:T:2018:5

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