Judgments nº T-583/17 of Tribunal General de la Unión Europea, June 12, 2019

• Resolution Date: June 12, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-583/17

(EU trade mark - Opposition proceedings - Application for the EU figurative mark IOS FINANCE - Earlier national figurative mark EOS - 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))

In Case T-583/17,

EOS Deutscher Inkasso-Dienst GmbH, established in Hamburg (Germany), represented by B. Sorg, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Söder, acting as Agent,

defendant,

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

IOS Finance EFC, SA, established in Barcelona (Spain), represented by J.L. Rivas Zurdo, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 June 2017 (Case R 2262/2016-2), relating to opposition proceedings between EOS Deutscher Inkasso-Dienst and IOS Finance EFC,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 25 August 2017,

having regard to the response of EUIPO lodged at the Court Registry on 21 December 2017,

having regard to the response of the intervener lodged at the Court Registry on 22 January 2018,

having regard to the written questions put by the Court to EUIPO and the intervener and their answers to those questions lodged at the Court Registry on 30 July and 21 August 2018,

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,

gives the following

Judgment

Background to the dispute

1 On 29 January 2014, the intervener, IOS Finance EFC SA, 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)).

2 Registration as a mark was sought for the following figurative sign:

3 The services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in, inter alia, Class 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Financial affairs; monetary affairs; real estate affairs; all the aforesaid relating to the management and transfer of credit claims (bills)’.

4 The trade mark application was published in Community Trade Marks Bulletin No 55/2014 of 24 March 2014.

5 On 24 June 2014, Deutscher Inkasso-Dienst GmbH & Co. KG, now the applicant, EOS Deutscher Inkasso-Dienst GmbH, 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 German figurative mark:

7 The earlier mark was registered on 23 October 2003 under the number 30340659 in respect of services in Class 36 corresponding to the following description: ‘Debt-collection business, debt-collection 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 On 5 October 2016, the Opposition Division rejected the opposition in respect of all the contested services.

10 On 5 December 2016, Deutscher Inkasso-Dienst GmbH & Co. KG 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 the opposition had been rejected in respect of the services ‘financial affairs’ and ‘monetary affairs’.

11 By decision of 6 June 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In essence, it upheld the findings of the Opposition Division and found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the part of the relevant public. In particular, it found that the relevant public, the level of attention of which was high, consisted of both the general public and of the specialist public in Germany. As regards the comparison of the services, it pointed out that the parties did not dispute the Opposition Division’s assessment that the services at issue were identical and it, in essence, confirmed that analysis. As regards the comparison of the signs at issue, it found that they were visually similar to a low degree and phonetically similar to at least an average degree. Furthermore, it found that the conceptual comparison was not possible and that, in any event, the element ‘finance’ in the mark applied for introduced some degree of conceptual dissimilarity. In the context of the global assessment of the likelihood of confusion, the Board of Appeal found that there was no such likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the part of the relevant public. It stated, inter alia, that the visual aspect of the signs at issue was predominated in respect of the services at issue and that those signs created very different impressions overall.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

13 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

14 In support of the action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It submits that the Board of Appeal erred in assessing the visual and phonetic similarity of the signs at issue and that it should have found that there was a higher degree of similarity between them. Furthermore, it maintains that the global assessment of the likelihood of confusion is marred by errors of law, with the result that the Board of Appeal’s finding that there is no likelihood of confusion is incorrect.

Preliminary observations

15 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. 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.

16 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to 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).

17 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM - easyGroup IP Licensing (easyHotel), T-316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

18 It is in the light of the foregoing considerations that it must be assessed whether there is a likelihood of confusion in the present case.

The relevant public

19 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).

20 As regards the relevant public, the Board of Appeal found that the services at issue could be of concern both to the general public and to other investors or specialists acting in the financial and money markets. It stated that, in both cases, those services had a direct impact on their economic and financial assets and that therefore the relevant public’s level of attention was high. It also found that, in view of the fact that the earlier mark was a German trade mark, the perception...