Zitro International v EUIPO - e-gaming (Smiley portant un chapeau haut de forme) (EU trade mark - Judgment) [2023] EUECJ T-491/22 (19 April 2023)

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(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing a smiley wearing a top hat – Earlier EU figurative mark representing a fantasy figure – Relative ground for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001)

Zitro International Sàrl, established in Luxembourg (Luxembourg), represented by A. Canela Giménez, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and D. Gája, acting as Agents,

composed of M.J. Costeira (Rapporteur), President, U. Öberg and P. Zilgalvis, Judges,

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

1 By its action brought under Article 263 TFEU, the applicant, Zitro International Sàrl, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 May 2022 (Case R 2005/2021-4) (‘the contested decision’).

2 On 9 April 2018, e-gaming s. r. o. filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:

3 The mark applied for designated goods and services in Classes 9, 38 and 41 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 corresponding, for each of those classes, to the following description:

– Class 9: ‘Computer software; Computer software for betting, gaming and gambling services and database management; Electronic publications; Games software; Electronic interactive computer games (programs); Computer software and computer programs for distribution to, and for use by, users of a betting and gaming services; Computer games programmes downloaded via the internet [software]; Games software; Games software; Computer software downloaded from the internet; Compact discs and DVDs; Gaming apparatus adapted for use with television receivers; Computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data’;

– Class 38: ‘Providing access to multiple user network systems allowing access to gaming and betting information and services over the Internet, other global networks or via telephony (including mobile telephones); Telecommunication services; Transmission of radio and television programs; Data streaming services; Streaming of live television and radio; Online video service, offering live streaming of cultural, entertainment and sports events; Providing Internet chatrooms; Provision of on-line forums; Broadcasting and Communications services; Transmission of sound or images; Computer-aided transmission of messages and images; Electronic mail services; Telecommunication services relating to the internet or by telephone, including mobile telephones; Telecommunication of information including webpages; Provision of telecommunications links to computer databases and websites on the Internet or via telephony including mobile telephones; Information about telecommunication; Information services relating to telecommunications’;

– Class 41: ‘Provision of betting, gambling and gaming services through physical and electronic sites and telephonic centres; Betting, lottery or book making services; Credit card betting, gaming, gambling, lottery or book making services; Organising and conducting lotteries; Electronic betting, gaming, gambling and lottery services provided by means of the Internet, or via a global computer network, or on-line from a computer network database, or via telephony including mobile telephones, or via a television channel; Providing interactive games, such as poker, bingo and skill games, including single- and multi-player game formats; Presentation and production of poker and bingo competitions, tournaments, games and gaming; Entertainment, sporting and cultural activities; arranging and organising competitions; Remote gaming services provided through telecommunication links; Gambling information provided on-line from a computer database or via the Internet; Gaming services for entertainment purposes; electronic games services provided by means of the Internet; Arranging competitions; Game services provided online; Services for the operation of computerised bingo and skills games; Information relating to gaming provided on-line from a computer database or the Internet; Information and advisory services relating to all the aforesaid services; Factual information services relating to sport’.

4 On 1 August 2018, the applicant’s predecessor in law filed a notice of opposition to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

– the EU figurative mark reproduced below, registered under number 9 614 868 in respect of goods and services in Classes 9, 28 and 35:

– the EU figurative mark reproduced below, registered under number 13 358 775 in respect of goods and services in Classes 9 and 28:

– the EU figurative mark reproduced below, registered under number 17 931 235 in respect of goods and services in Classes 9, 28 and 41:

– the EU figurative mark reproduced below, registered under number 14 591 424 in respect of goods and services in Classes 9, 28 and 41:

– the EU figurative mark reproduced below, registered under number 6 276 448 in respect of goods and services in Classes 9, 28 and 41:

– the EU figurative mark reproduced below, registered under number 12 395 431 in respect of goods and services in Classes 9, 28 and 41:

6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).

7 On 8 October 2021, the Opposition Division rejected the opposition in its entirety.

8 On 1 December 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9 By the contested decision, the Board of Appeal dismissed the appeal. In the first place, it examined the opposition in relation to the earlier mark registered under number 9 614 868. It found that the relevant public was composed of the general public and the professional public and that the relevant territory was the European Union. It considered that the signs at issue were dissimilar visually, that they were dissimilar or that the comparison was neutral phonetically, and that they did not ‘[convey] a clear meaning’ conceptually, with the result that the signs were to be regarded as dissimilar overall. It found, on the basis of the lack of any similarity between the signs at issue, that one of the conditions in Article 8(1)(b) of Regulation 2017/1001 was not satisfied, so that any likelihood of confusion within the meaning of that provision had to be ruled out in relation to the earlier mark registered under number 9 614 868. In the second place, the Board of Appeal stated that the other earlier marks contained elements which further differentiated them from the mark applied for, with the result that the opposition also had to be rejected in relation to those marks. It added that, even if the signs at issue were in any way similar, that similarity would be minimal and would not result in a likelihood of confusion, even in respect of identical goods and services, given that, inter alia, an enhanced level of distinctiveness of the earlier marks had not been claimed.

– order the applicant to pay the costs incurred by EUIPO ‘in case an oral hearing is convened’.

12 By its first head of claim, the applicant asks the Court to annul ‘the decisions of the EUIPO’ without providing further details on the scope of that request.

13 In that connection, it should be borne in mind that, in accordance with Article 72(1) of Regulation 2017/1001, only actions against decisions of the Boards of Appeal on appeals may be brought before the General Court.

14 Therefore, the applicant’s first head of claim must be interpreted as meaning that, by the present action, the applicant seeks only the annulment of the decision of the Board of Appeal, that is, the contested decision.

B. Admissibility of the applicant’s arguments referring to the decision of the Opposition Division

15 EUIPO disputes the admissibility of the applicant’s arguments in paragraphs 14 to 19 of the application on the ground that they are directed against the decision of the Opposition Division.

16 In that regard, it must be borne in mind that as is apparent, in essence, from paragraph 13 above, under Article 72(1) of Regulation 2017/1001, the Court has jurisdiction to rule on actions concerning decisions of the Boards of Appeal, not decisions of the Opposition Division.

17 The purpose of those actions is to review the legality of the decisions of the Boards of Appeal, which must, pursuant to Article 95 of Regulation 2017/1001, be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see, to that effect, judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited).

18 In the present case, the arguments in paragraphs 14 to 19 of the application were also relied on in the written submissions setting out the reasons for the appeal before the Board of Appeal, with the result that they are part of the factual and legal context of the dispute as it was brought before the Board of Appeal.

19 As a result, contrary to EUIPO’s submissions, those arguments must be held to be admissible.

20 In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

21 In the first place, regarding the comparison of the goods and services at issue, the applicant claims, in essence, that the parties do not dispute that they are identical or similar.

22 In the second place, regarding the comparison of the signs at issue, their visual comparison in particular, the applicant complains that the Board of Appeal failed to take into account the arguments directed against the decision of the Opposition Division according to which that division had given greater importance to the elements differentiating the signs at issue, which relate to details, than to the similar elements, which correspond to the main characteristics of those signs.

23 The applicant further observes that the characteristics of the sign applied for which were taken into account by the Board of Appeal and set out in paragraph 15 of the contested decision – that is, an anthropomorphised spherical element with two wide-open eyes, a merry open mouth, a happy face in the shape of a ball, a hat, two arms, gloves and two straight legs ‘tucked into’ shoes – are shared with the central element of the earlier mark and constitute the most relevant elements, creating a first impression of the signs at issue without analysing their details, and observes that those signs share the same colours. It adds that, in paragraph 16 of that decision, the Board of Appeal took into account the details of the earlier sign, which differentiated it from the sign applied for, such as the dollar sign, the banknotes, the position of the arms, trousers and a barely visible shadow. However, the Board of Appeal stated, in paragraph 17 of the decision, that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Furthermore, the Board of Appeal considered that the overall impression given by each of the signs at issue was very different, although it specified that those signs shared their most relevant aspects, which drew the attention of the relevant public. According to the applicant, the visual similarity between the signs at issue is clear in so far as the average consumer perceives a mark as a whole and does not engage in an analysis of its various details and, moreover, the assessment of similarity must be carried out by examining the marks as a whole.

24 Regarding the phonetic comparison of the signs at issue, the applicant claims that the letter ‘b’ on the hat of the mark applied for is barely visible and its purpose is for the customer to identify the presence of an element in order to strengthen confusion or association with the earlier mark on the part of the relevant public. It is of the view that the letter ‘s’ or the dollar sign in the earlier mark and the letter ‘b’ in the mark applied for must not be taken into account.

25 As for the conceptual comparison of the signs, the applicant submits that, in so far as they designate, inter alia, gambling, the relevant public will perceive them as representing ‘a bingo ball or a lottery ball’.

26 In the third place, the applicant is of the view that, regarding the global assessment of the likelihood of confusion, in the light of the principles of the consumers’ imperfect recollection and of interdependence, the differences between the signs at issue are offset by the similarities, with the result that a likelihood of confusion on the part of the relevant public cannot be ruled out.

28 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

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

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

31 It is in the light of those considerations that it must be examined whether, as the applicant argues, the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 in finding that there could be no likelihood of confusion in the present case.

32 As the Board of Appeal began by examining the likelihood of confusion in respect of the earlier mark registered under number 9 614 868, it is appropriate, in the first place, to analyse the assessments related thereto before going on to examine, in the second place, the assessments relating to the other earlier marks.

33 Under Article 8(1)(b) of Regulation No 207/2009, the existence of a likelihood of confusion resulting from the similarity, on one hand, between the trade mark in the application for registration and an earlier trade mark and, on the other hand, between the goods or services covered by the trade marks, must be assessed on the part of the public in the territory in which the earlier trade mark is protected (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 51, and of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 59).

34 In addition, 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).

35 In the present case, the Board of Appeal found, in paragraph 12 of the contested decision, that, first, having regard to the fact that the earlier marks were EU trade marks, the relevant territory for the purposes of assessing the likelihood of confusion was the European Union and, second, the relevant public was composed of the general public and the professional public.

36 In addition, the Board of Appeal endorsed implicitly, albeit necessarily, the Opposition Division’s finding that the level of attention of the relevant public could vary from average to above average depending on the price, sophistication and specialised nature of the goods and services in question.

37 Those assessments, which are not, moreover, disputed by the applicant, must be upheld.

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

40 The Board of Appeal observed, in paragraph 17 of the contested decision, that the signs at issue shared a central part resembling an imaginary face with two legs, two arms and a hat, but that the overall impression given by each of those signs was very different. Accordingly, it found that the signs at issue were dissimilar visually.

41 The applicant argues that the characteristics of the sign applied for which were taken into account by the Board of Appeal in paragraph 15 of the contested decision, that is, an anthropomorphised spherical element with two wide-open eyes, a merry open mouth, a happy face in the shape of a ball, a hat, two arms, gloves and two straight legs ‘tucked into’ shoes, are shared with the central element of the earlier mark and constitute the most relevant elements, creating a first impression of the signs at issue without analysing their details, and observes that those signs share the same colours. It adds that, in paragraph 16 of that decision, the Board of Appeal took into account the various details of the earlier sign which differentiated it from the sign applied for, such as the dollar sign, the banknotes, the position of the arms, trousers and a shadow. However, the Board of Appeal stated, in paragraph 17 of the decision, that the average consumer perceives a mark as a whole and does not engage in an analysis of its various details.

42 In addition, the applicant complains that the Board of Appeal considered that the overall impression given by each of the signs at issue was very different, although it specified that those signs shared their most relevant aspects, which drew the attention of the relevant public.

43 According to the applicant, the visual similarity between the signs at issue is clear, in so far as, first, the average consumer perceives a mark as a whole and does not engage in an analysis of its various details and, second, the assessment of similarity must be carried out by examining the marks as a whole.

45 In the present case, it must be stated that the signs at issue share certain features, that is, a central element which includes, inter alia, an open smiling mouth showing teeth, large eyes, a top hat, two arms wearing gloves and two legs wearing shoes. In addition, they are represented in the same colours – white, grey and black.

46 Nevertheless, it must be stated, similarly to EUIPO, that the features mentioned in paragraph 45 above are represented differently in each of the signs. The central element of the sign applied for is an anthropomorphic sphere, while that of the earlier mark is an ovoid. Moreover, aside from the open mouth, the features of the central element of each of the signs are not the same. While the sign applied for contains two wide-open eyes and eyebrows, the earlier sign has a single eye and does not have visible eyebrows. The hats situated over the central elements of the signs at issue are also distinct. Whereas the hat in the sign applied for is of average size, tipped to the left and contains an uppercase ‘b’, the hat in the earlier sign is large, tipped to the right, contains an ‘s’ or dollar sign and some banknotes. Differences can also be established in the position of the arms and proportion of the legs in relation to the central element of each of the signs at issue. Although the sign applied for is represented with straight arms and shorter legs in relation to the central element, the earlier sign is made up of one bent arm and another arm resting on a cane, and legs of the same length as the central element.

47 In the light of those assessments, the Court finds that the overall impression produced by the signs at issue is so different that the relevant public will not establish a link between those signs on the ground that they share certain features and the same colours. They are two fantasy figures stylised differently, that is, on the one hand, a happy figure in the shape of a ball with wide-open eyes, straight arms and short legs and, on the other hand, a figure in the shape of a one-eyed, slightly deformed face with one bent arm and another arm resting on a cane, and legs of the same length as the central element.

48 Contrary to the applicant’s claim, in paragraphs 15 and 16 of the contested decision, the Board of Appeal only described the signs at issue before carrying out a visual, phonetic and conceptual comparison of the signs. The visual comparison of those signs was carried out in paragraph 17 of that decision, in which the Board of Appeal specified that that the signs at issue shared a central part resembling an imaginary face with two legs, two arms and a hat, but that the overall impression given by those signs was very different. Consequently, the applicant’s arguments relating to the fact that paragraphs 15 and 16 of the contested decision take account of certain features or details of the signs at issue must be rejected.

49 The same applies to the applicant’s argument that the Board of Appeal found that the overall impression given by the signs at issue was very different, although it had specified that those signs shared their most relevant aspects, which drew the attention of the relevant public. In that connection, it is sufficient to note that, as is apparent from paragraph 17 of the contested decision, the Board of Appeal merely observed that, despite the fact that the signs at issue shared certain features, their overall impression was very different. Accordingly, the Board of Appeal did not in any way find that the signs at issue shared the most relevant aspects which drew the attention of the relevant public.

50 Regarding the applicant’s argument that, in essence, the features shared by the signs at issue concern the central element and are the most relevant elements, creating a first impression of the signs at issue without engaging in an analysis of their details, and that those signs are represented in the same colours, it must be observed that, as is apparent from paragraphs 46 and 47 above, those features are represented differently, thereby creating a different overall impression given by the signs at issue. Accordingly, even if the consumer does not memorise details, he or she will be able to identify the differences between the signs and, to that extent, will not establish a link between the marks at issue.

51 Regarding the applicant’s argument that the Board of Appeal failed to take account of the arguments in paragraphs 14 to 19 of the application, directed against the decision of the Opposition Division, it should be borne in mind that the Board of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before it; the reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see, to that effect, judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55 and the case-law cited). It is apparent from paragraphs 21 to 26 of the application that the applicant was able to understand the reasons for the Board of Appeal’s finding that the signs at issue were not similar visually.

52 Therefore, the Court finds that the Board of Appeal did not err in its assessment when it observed that the signs at issue were different visually.

53 In paragraph 18 of the contested decision, the Board of Appeal considered that the signs at issue, as fantasy figures, would not be pronounced. It observed that the only elements that may be pronounced were the letter ‘s’ or the dollar sign in the earlier sign and the letter ‘b’ making up the sign applied for. It found that, in the event that those letters were pronounced, the signs at issue would be different phonetically and, in the event that none of those elements was pronounced, the phonetic comparison would be neutral.

54 The applicant is of the view that, as far as the earlier sign is concerned, the element on the hat is likely to be perceived by the relevant public as representing the letter ‘s’ or the dollar sign. Regarding the sign applied for, the element on the hat is barely visible and its sole purpose is for the relevant public to identify that there is an element on the hat as in the earlier mark. According to the applicant, in so far as the signs are figurative, neither the letter ‘s’ or the dollar sign in the earlier sign nor the letter ‘b’ in the sign applied for must be taken into account in the phonetic comparison of the signs.

56 In that regard, it is clear from the case-law that a phonetic comparison of the signs at issue is irrelevant in the examination of the similarity of a purely figurative mark with another mark. A figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question. Consequently, it is not necessary to examine separately the phonetic perception of a figurative mark lacking word elements and to compare it with the phonetic perception of other marks (judgment of 7 February 2012, Dosenbach-Ochsner v OHIM – Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 46).

57 Where a purely figurative mark represents a shape which the relevant public is easily able to recognise and associate with a specific, concrete word, they will use that word to refer to the mark, whereas if a figurative mark also includes a word element, in general it will be through the use of that word element that the relevant public will refer to the mark (judgment of 7 May 2015, Cosmowell v OHIM – Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 53).

58 However, that implies that the semantic content of the purely figurative mark can immediately be associated with a specific, concrete word (judgment of 7 May 2015, GELENKGOLD, T‑599/13, EU:T:2015:262, paragraph 62; of 3 May 2017, Environmental Manufacturing v EUIPO – Société Elmar Wolf (Representation of the head of a wolf), T‑681/15, not published, EU:T:2017:296, paragraph 53; and of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree), T‑559/19, not published, EU:T:2020:19, paragraph 33).

59 In the present case, no specific word can be attributed exactly to the signs at issue, which represent abstract fantasy figures. The only elements that may be pronounced are the letter ‘b’ written on the hat in the sign applied for and the letter ‘s’ or the dollar sign on the hat present in the earlier sign.

60 In that context, it must be noted that, first, the signs at issue are different phonetically for the part of the relevant public which will pronounce the elements referred to in paragraph 50 above and, second, no phonetic comparison can be carried out for the part of that public which will not pronounce any of those elements.

61 Therefore, the Court finds that the Board of Appeal did not err in its assessment that the comparison of the signs at issue was neutral or that those signs were different phonetically.

62 The Board of Appeal observed, in paragraph 19 of the contested decision, that the signs at issue did not convey any clear meaning. According to the Board of Appeal, the fact that those signs are perceived to be different fantasy figures is not sufficient for them to be regarded as similar conceptually.

63 The applicant maintains that the marks at issue, designating, inter alia, gambling, will be perceived by the relevant public as representing ‘a bingo ball or a lottery ball’.

65 According to the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 11 April 2019, Užstato sistemos administratorius v EUIPO – DPG Deutsche Pfandsystem (Representation of a bottle and an arrow), T‑477/18, not published, EU:T:2019:240, paragraph 45 and the case-law cited; see also, to that effect, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO), T‑386/15, EU:T:2017:632, paragraph 76 (not published)).

66 In the present case, it must be stated, as did the Board of Appeal, that the signs at issue, as different abstract fantasy figures, do not convey any clear meaning. The mere fact that there is a generic phrase ‘fantasy figure’ which serves to describe the semantic content of the signs at issue is not such as to establish conceptual similarity (see, to that effect, judgment of 30 January 2020, Representation of a tree, T‑559/19, not published, EU:T:2020:19, paragraph 39). Failing any evidence in the case file that the relevant public could be able to attribute specific semantic content to the signs, it is impossible to carry out a conceptual comparison.

67 The applicant submits that the signs at issue, designating, inter alia, gambling, will be perceived by the relevant public as representing ‘a bingo ball or a lottery ball’. However, it is for the applicant to show that the analysis carried out by the Board of Appeal is incorrect in respect of a significant part of the relevant public (see, to that effect, judgment of 5 May 2021, Capella v EUIPO – Cobi.bike (GOBI), T‑286/20, not published, EU:T:2021:239, paragraph 38 and the case-law cited). In the present case, it is sufficient to note that the applicant has not submitted any evidence of the existence of the relevant public’s perception on which it relies.

68 As a result, the Board of Appeal has not erred in its assessment in noting, in essence, that a conceptual comparison was not possible.

69 Having regard to all the foregoing considerations relating to the comparison of the signs at issue, it is appropriate to uphold the Board of Appeal’s assessment that the signs at issue are different overall.

70 In paragraphs 20 to 22 of the contested decision, the Board of Appeal considered that, in so far as the signs at issue were different overall, a likelihood of confusion could not exist on the part of the relevant public, irrespective of the similarity of the goods and services in question, of the reputation or of the highly distinctive character of the earlier mark.

71 The applicant argues that, in the light of the principles of the consumers’ imperfect recollection and of interdependence, the differences between the signs at issue are offset by the similarities, with the result that a likelihood of confusion on the part of the relevant public cannot be ruled out.

73 In the present case, since, as is apparent from paragraph 30 above, the similarity of the marks is one of the cumulative conditions for the application of Article 8(1)(b) of Regulation 2017/1001, and since the Court found, in paragraph 69 above, that no similarity between the marks at issue could be established, the Board of Appeal was correct to find that there was no likelihood of confusion on the part of the relevant public.

74 Given that the marks at issue are not similar, the other relevant factors for the global assessment of the likelihood of confusion cannot in any case offset or make up for that lack of similarity, so that there is no need to examine them (see, to that effect, judgments of 12 October 2004, Vedial v OHIM, C‑106/03 P, EU:C:2004:611, paragraph 54, and of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 65, 66 and 68).

75 The Board of Appeal was therefore fully entitled to consider that the opposition based on the earlier mark No 9 614 868 had to be rejected pursuant to Article 8(1)(b) of Regulation 2017/1001.

76 In paragraph 23 of the contested decision, the Board of Appeal found that the other earlier marks were made up of elements which further differentiated them from the mark applied for. Accordingly, it noted that the opposition also had to be rejected on the basis of those other earlier marks.

77 The applicant has not provided any evidence to challenge that finding specifically or the Board of Appeal’s assessments supporting that finding.

78 That finding must, in any event, be endorsed. Since, as is apparent from paragraph 5 above, the other earlier marks differ further from the mark applied for, due, inter alia, to additional word or figurative elements or different colours, the Board of Appeal was fully entitled to rule out a likelihood of confusion on the part of the relevant public as far as the other marks relied on in support of the opposition are concerned.

79 It follows from all of the foregoing that the single plea in law must be rejected and, as a result, the action in its entirety must be dismissed.

80 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.

81 However, as EUIPO applied for an order for costs against the applicant only in the event that a hearing was organised, no order for costs will be made against the applicant in respect of the costs incurred by EUIPO.

3. The European Union Intellectual Property Office (EUIPO) shall bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Zitro International v EUIPO - e-gaming (Smiley portant un chapeau haut de forme) (EU trade mark - Judgment) [2023] EUECJ T-491/22 (19 April 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T49122.html Cite as: [2023] EUECJ T-491/22, ECLI:EU:T:2023:203, EU:T:2023:203

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