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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

30 November 2016

(1 Language of the case: English.EU trade mark — Opposition proceedings — Application for EU figurative mark e-miglia — Earlier EU word marks MILLE MIGLIA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑458/15,

Automobile Club di Brescia, established in Brescia (Italy), represented by F. Celluprica and F. Fischetti, lawyers,

applicant,

v

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

defendant,

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

Rebel Media Ltd, established in Wilmslow (United Kingdom), represented by P. Schotthöfer and F. Steiner, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 9 June 2015 (Case R 1990/2014-5), relating to opposition proceedings between Automobile Club di Brescia and Rebel Media,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of the deliberation, of G. Berardis, President, D. Spielmann and P.G. Xuereb (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 August 2015,

having regard to the response of EUIPO lodged at the Court Registry on 17 December 2015,

having regard to the response of the intervener lodged at the Court Registry on 15 December 2015,

having regard to the cross-claim lodged by the intervener at the Court Registry on 15 December 2015,

having regard to the response of the applicant to the cross-claim lodged at the Court Registry on 9 March 2016,

having regard to the response of EUIPO to the cross-claim lodged at the Court Registry on 21 March 2016,

having regard to the fact that no request for a hearing was submitted by the main 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 17 February 2011, the intervener, Rebel 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).

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

3        The goods and services in respect of which registration was sought are in Classes 12, 14, 18, 25, 35 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 correspond, for each of those classes, to the following description:

–        Class 12: ‘Vehicles; apparatus for locomotion by land, air or water’;

–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; travel trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery’;

–        Class 25: ‘Clothing, footwear, headgear’;

–        Class 35: ‘Advertising, in particular for competitions with electrical vehicles; organisation and arranging of advertising events; commercial sponsoring, also on the internet; business management; business administration; office functions’;

–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 112/2011 of 16 June 2011.

5        On 16 September 2011, the applicant, Automobile Club di Brescia, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all of the goods and services referred to in paragraph 3 above.

6        The opposition was based on the following earlier trade marks:

–        the EU word mark MILLE MIGLIA registered on 2 April 2001 under No 1519511, designating services in Class 41 and corresponding to the following description: ‘Entertainment; services inherent in entertainment; entertainment services in the form of games, interactive games, video games, provided online by databases or sites on the World Wide Web; publication of books and other publications’;

–        the EU word mark MILLE MIGLIA registered on 1 December 2009 under No 8299448, designating certain goods in Classes 12, 18 and 25;

–        the EU word mark MILLE MIGLIA registered on 30 June 2011 under No 9543265, designating, in addition to certain goods in Class 14, services in Class 35 and corresponding to the following description: ‘Organisation and conducting of trade fairs, exhibitions, for commercial or advertising purposes, retail services, also provided online, relating to the following goods: soaps, perfumes and cosmetics, helmets, glasses, lenses, cases and chains, ground vehicles, their accessories and parts, bicycles, jewellery, precious stones, horological and chronometric instruments and their accessories, brooches, key rings, books, magazines, newspapers, brochures and flyers in general, diaries, leather goods, bags, sports bags, backpacks, wallets, purses, furniture, fabrics and textile products, bed covers and blankets, clothing, headgear, footwear, games, toys, playing cards, wines and alcoholic beverages, tobacco, smokers’ articles, matches’.

7        The ground relied on in support of the opposition was the one referred to in Article 8(1)(b) of Regulation No 207/2009.

8        By decision of 30 June 2014, the Opposition Division partly upheld the opposition. The Opposition Division stated that the intervener’s intention, in applying for registration of its mark for the goods and services in Classes 12, 14, 18, 25, 35 and 41, was that that registration would cover all the goods and services included in the alphabetical list of the classes concerned within the meaning of the edition of the Nice Classification in force at the time when the filing was made. The Opposition Division therefore included all those goods and services in its examination.

9        As regards the comparison of the goods and services, the Opposition Division stated that all the goods in Classes 12, 14, 18 and 25 covered by the mark applied for were identical to the goods covered by the earlier marks. Concerning the services in Class 35 designated by the mark applied for, the Opposition Division found that the services ‘organisation and arranging of advertising events’ were identical to the services covered by the earlier marks. On the other hand, the Opposition Division found that the services ‘advertising, in particular for competitions with electrical vehicles’, ‘commercial sponsoring, also on the internet’ and ‘business administration’ covered by the mark applied for and the services covered by the earlier marks were similar. Furthermore, the Opposition Division stated that the services ‘business management’ and ‘auctioneering’ covered by the mark applied for and the services covered by the earlier marks were similar to a low degree. Finally, the Opposition Division held that the services ‘office functions’ and ‘rental of vending machines intended for sale’ designated by the mark applied for bore no similarity to the services covered by the earlier marks. As regards the services in Class 41, the Opposition Division stated that the services ‘entertainment’, ‘electronic desktop publishing’, ‘layout services, other than for advertising purposes’, ‘providing online electronic publications, not downloadable’, ‘publication of books’, ‘publication of electronic books and journals online’ and ‘publication of texts, other than publicity texts’ covered by the mark applied for were identical to the services covered by the earlier marks. On the other hand, the Opposition Division found that the services ‘sporting and cultural activities’ designated by the mark applied for and the services covered by the earlier marks were similar. Furthermore, the Opposition Division stated that the services ‘education’ and ‘providing of training’ covered by the mark applied for and the services covered by the earlier marks were similar to a low degree. Finally, the Opposition Division held that all the other services in Class 41 covered by the mark applied for bore no similarity to the services covered by the earlier marks.

10      As regards the comparison of the signs, the Opposition Division confined itself to the point of view of the Italian-speaking public and found that the signs were similar. Concluding that there was a likelihood of confusion concerning the goods and services covered by the mark applied for that were identical to those covered by the earlier marks or were similar, including to a low degree, to them, the Opposition Division upheld the opposition in respect of those goods and services.

11      On 30 July 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

12      In its decision of 9 June 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO found that, having regard to the fact that the earlier rights were EU trade marks, the relevant territory was that of the European Union. It added that the goods and services at issue were directed both at the public at large (for example, ‘clothing’ in Class 25) and at the professional public (for example, ‘business management’ in Class 35) and that, therefore, the level of attention of the relevant public could vary from average to high.

13      Regarding the comparison of the goods and services, the Board of Appeal endorsed the Opposition Division’s findings.

14      Concerning the comparison of the marks at issue, first, the Board of Appeal stated that there was visual similarity between those marks, given that they had a common element ‘miglia’ and, to a certain extent, also due to the fact that they had in common the letter ‘e’ preceding the element ‘miglia’. Secondly, the Board of Appeal recognised the existence of obvious dissimilarities, finding that the relevant public will notice that the earlier marks begin with the word ‘mille’ whereas the mark applied for begins with the prefix ‘e-’. In addition, the Board of Appeal found that there were differences linked to the stylised letters represented in white, a colour that contrasts with the black background in the shape of a parallelogram, in the mark applied for. The Board of Appeal held that, although those figurative elements were essentially decorative, they could not be regarded as completely negligible in the overall impression given by that sign. According to the Board of Appeal, the marks were therefore visually similar to a low degree.

15      Concerning the phonetic aspect, the Board of Appeal held that, in spite of the differences linked to the rules of pronunciation applicable to the relevant languages, the pronunciation of the marks at issue would be seen as similar to the extent that the final sound ‘miglia’ was identical. According to the Board of Appeal, the marks at issue were therefore phonetically similar, although that similarity was below average.

16      Concerning the conceptual aspect, the Board of Appeal stated that the combination of words ‘mille miglia’ means ‘thousand miles’ in Italian. According to the Board of Appeal, at least the Italian-speaking part of the public will spontaneously establish a link between the earlier marks and the (endurance) motorcar race which was held in Italy from 1927 to 1957 and which was subsequently transformed, as from 1977, into an event reserved for vintage cars. The earlier marks will thus convey a concept that is clearly distinguishable from that of the word ‘miglia’ alone or, even more so, from the combination ‘e-miglia’. For this reason, there is even a conceptual difference between the signs at issue on the part of the Italian public. However, the Board of Appeal stressed that, for a considerable part of the consumers in the relevant territory outside of Italy (for example in Germany, Holland, Poland, Sweden and the United Kingdom), the expression ‘mille miglia’ is meaningless. For that part of the public, there is a certain conceptual difference to the extent that the initial part ‘e-’ of the intervener’s sign evokes a concept relating to electronics. The Board of Appeal held, however, that it was not likely that those consumers would attach a lot of importance to that feature, given the widespread use of that prefix and the fact that that part of the public will more easily recall the more distinctive element ‘mille’ in the earlier marks.

17      According to the Board of Appeal, the intrinsic distinctive character of the earlier marks was normal, because the combination of words ‘mille miglia’ would be perceived as a fanciful element by a substantial part of the relevant public outside of Italy.

18      In the light of the foregoing, the Board of Appeal found that the likelihood of confusion in the present case existed for the public that would understand neither the combination of words ‘mille miglia’ nor the element ‘miglia’, but only with regard to the goods and services deemed identical.

19      The Board of Appeal therefore dismissed the appeal and upheld the opposition for the goods in Classes 12, 14, 18 and 25 in respect of which the intervener requested the registration of its mark and the services ‘organisation and arranging of advertising events’ in Class 35 and ‘entertainment’ in Class 41 covered by the mark applied for. On the other hand, it annulled the Opposition Division’s decision and rejected the opposition concerning the remaining services included in Classes 35 and 41 covered by the mark applied for.

 Forms of order sought

20      The applicant claims that the Court should:

–        annul paragraphs 3 and 4 of the operative part of the contested decision;

–        uphold in its entirety, except for the order as to costs, the decision of the Opposition Division;

–        dismiss the cross-claim;

–        order EUIPO and the intervener to pay the costs, including the costs of the earlier stages of the proceedings.

21      The intervener contends that the Court should:

–        dismiss the application;

–        annul paragraphs 1 and 2 of the operative part of the contested decision;

–        annul paragraphs 1 and 2 of the decision of the Opposition Division, except to the extent that it upheld the registration of the mark applied for for certain services;

–        order the applicant to pay the costs, including the costs incurred in the earlier stages of the proceedings.

22      EUIPO contends that the Court should:

–        dismiss the application and the cross-claim;

–        order the applicant and the intervener to pay the costs.

 Law

1.     Preliminary observations

23      As noted in paragraph 8 above, the Opposition Division stated that the intervener’s intention, in applying for registration of its mark for the goods and services in Classes 12, 14, 18, 25, 35 and 41, was that that registration would cover all the goods and services included in the alphabetical list of the Classes concerned, within the meaning of the edition of the Nice Classification in force at the time when the filing was made. On that basis, the Opposition Division held that the registration of the contested mark was possible for a certain number of services that had not been listed by the intervener. The present proceedings do not concern those services.

24      The Opposition Division came to the conclusion that the mark applied for could be registered for ‘office functions’ in Class 35. The intervener’s appeal against the Opposition Division’s decision and, consequently, the contested decision did not concern this aspect. The present proceedings therefore do not cover that service either, in spite of the fact that the applicant mentions it in its application.

2.     The plea raised by the applicant and the plea raised by the intervener alleging infringement of Article 8(1)(b) of Regulation No 207/2009

25      Both the applicant and the intervener have raised a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 by the Board of Appeal. The applicant alleges an erroneous assessment by the Board of Appeal of the similar or identical character of the services at issue, of the degree of similarity between the signs concerned and of the likelihood of confusion. The intervener contends that the Board of Appeal committed errors concerning the degree of similarity between the signs at issue, the distinctive character of the earlier marks and the likelihood of confusion. While the applicant alleges that, contrary to the Board of Appeal’s position, there is a very strong similarity between the mark applied for and the earlier marks and, therefore, a likelihood of confusion concerning all the goods and services designated by the mark applied for, the intervener submits, in its cross-claim, that there is no similarity between those marks and no likelihood of confusion.

26      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, 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.

27      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. That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services designated may be offset by a greater degree of similarity between the marks, and vice versa (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).

28      As follows from the case-law of the Court of Justice, the visual, phonetic and conceptual aspects are relevant to the global assessment (see judgment of 18 October 2007, Ekabe International v OHIM — Ebro Puleva (OMEGA3), T‑28/05, EU:T:2007:312, paragraph 54 and the case-law cited).

29      The arguments put forward in the present case must be examined in the light of the case-law cited above.

 The relevant public and territory

30      The Board of Appeal held that the relevant territory was that of the European Union. Additionally, it found that the relevant public consisted both of the general public and the professional public. It is appropriate to endorse those definitions which, indeed, have not been called into question by the parties.

 The comparison of the goods and services

31      The intervener does not call into question the Board of Appeal’s findings that the goods and services at issue are identical or similar.

32      The applicant claims that the Board of Appeal erred in holding that the services covered by the earlier marks were similar only to the services ‘advertising, in particular for competitions with electrical vehicles’, ‘commercial sponsoring, also on the internet’, ‘business management’ and ‘business administration’ in Class 35 and the services ‘education’, ‘providing of training’ and ‘sporting and cultural activities’ in Class 41 covered by the mark applied for. According to the applicant, those services are identical.

33      EUIPO contests the applicant’s argument.

34      It must be noted that the arguments put forward by the applicant in that regard concern only four of the services listed in paragraph 32 above, namely the services ‘advertising, in particular for competitions with electrical vehicles’, ‘commercial sponsoring, also on the internet’ and ‘business management’ in Class 35 and the services ‘sporting and cultural activities’ in Class 41. The applicant has not submitted any specific argument to prove that the Board of Appeal’s assessment was wrong as regards the other services to which it referred. In those circumstances, the Court is fully entitled to concentrate its analysis on those four services.

35      Concerning the first three services mentioned above, the Opposition Division had found that they were not identical, but presented similarities with ‘[the] organisation and conducting of trade fairs, exhibitions, for commercial or advertising purposes’ designated by one of the applicant’s earlier marks. The Board of Appeal upheld that finding.

36      It should be recalled that, in assessing the similarity of the goods and services, account must be taken of all the relevant factors that characterise the relationship between those goods and those services, those factors including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

37      According to the applicant, it is clear that the aim and the nature of the activities compared are the same, namely the promotion and advertising of an event. The applicant stresses that both it and the intervener have as their principal activity the organisation of motorcar races and that a motorcar race is an exhibition for commercial purposes of which advertising is a necessary aspect. Motorcar races are accompanied by ancillary events such as trade fairs, exhibitions and other analogous commercial or cultural events. The marks at issue would thus be used in product markets that are absolutely identical, even if different administrative definitions may be given as to their registration. The applicant submits that there is also a clear competitive relationship between the activities under examination. Finally, the applicant argues that the services designated by the earlier marks include those covered by the mark applied for.

38      Those arguments are not convincing.

39      As EUIPO has rightly stated, advertising services do not normally include the organisation and managing of trade fairs and exhibitions, those services usually being offered by specialised undertakings that are different from advertising agencies or similar entities. It is true that advertising plays an important role with regard to motorcar races. The Court is not, however, convinced that a motorcar race can be qualified as an exhibition, as the applicant suggests. Moreover, and as EUIPO has rightly observed, the applicant’s own reasoning confirms that the services in question are similar but not identical. In fact, the arguments put forward by the applicant refer to factors typically invoked to support a finding that the goods and services are similar, such as their nature, their intended purpose and their complementarity. In any event, the circumstances to which the applicant refers, even if they were established, are not sufficient to prove that the services at issue are identical.

40      It is true that, as the applicant has indicated, it follows from the case-law that there is identity when the services designated by the earlier mark include those covered by the later mark (judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34). However, in the light of the above considerations, it is clear that the applicant has not established that this was the case in the present proceedings.

41      As regards the seventh set of services mentioned in paragraph 32 above, namely ‘sporting and cultural activities’, the Opposition Division held that they were not identical but were similar to the services covered by the term ‘entertainment’ designated by one of the earlier marks, to the extent that their intended purpose, their distribution channels and the public they targeted were the same. The Board of Appeal upheld that finding.

42      The applicant maintains that the two types of services must be considered identical. In order to substantiate its claim, it first of all refers to the arguments that it put forward in respect of the first three services mentioned in paragraph 32 above and that, in its view, also apply in the present case. Next, the applicant claims that the more general term ‘entertainment’ includes ‘sporting and cultural activities’.

43      These arguments cannot be accepted. It must be pointed out, as EUIPO observed, that entertainment services are those typically provided by broadcasting undertakings, radio or television stations, record companies etc., while sporting and cultural services are normally provided by undertakings of a different nature, for example by sports clubs, universities or other cultural bodies. Therefore, the applicant is incorrect to submit that the services of ‘entertainment’ include ‘sporting and cultural activities’.

44      It follows that the applicant has not established that the Board of Appeal committed an error in respect of the comparison of the goods and services at issue.

 Comparison of the signs

 The visual aspect

–        Arguments of the intervener

45      Concerning the visual aspect, the intervener puts forward three arguments to contest the Board of Appeal’s assessment. First, the Board did not give sufficient importance to the difference between the beginnings of the marks at issue. Secondly, it did not duly take into account the hyphen and the length of the contested mark and the visual impression produced by its graphic design. Thirdly, the Board did not give sufficient importance to the alliteration created by the fact that the two words comprising the earlier marks begin with the letter ‘m’.

46      These arguments are not convincing.

47      As regards the first argument, it is true that, according to the case-law, consumers normally attach more importance to the beginning of words (judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello et Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81; and of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 75). The Board of Appeal, which duly took that case-law into account, nevertheless held that the relevant public would be decisively influenced by the similarities, both visual and phonetic, produced by the element ‘miglia’ which was present on all the marks at issue, which constituted a distinctive element and which was naturally different to the word ‘mille’ and the prefix ‘e’ in the respective marks. That conclusion is not vitiated by any error. It should be recalled that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 18 October 2007, OMEGA3, T‑28/05, EU:T:2007:312, paragraph 54). The Board of Appeal rightly added that, in any event, the prefix ‘e’ was not such as to divert the consumer’s attention from the more distinctive element ‘miglia’ in the mark applied for, which appears in the same (final) position as in the earlier marks.

48      Concerning the second argument of the intervener, it refers to a hyphen present in the mark applied for, to the respective length of the marks at issue and to the figurative elements of the mark applied for.

49      It is true that inserting a hyphen can constitute an important difference when it concerns a very short sign, given that, in short signs, such differences are more easily perceived, as follows from the judgment of 23 September 2009, Arcandor v OHIM — dm drogerie markt (S-HE) (T‑391/06, not published, EU:T:2009:348, paragraph 41), invoked by the intervener. However, that judgment, upon which the intervener relies in this context, concerned the comparison of the signs she and s-he and, thus, signs comprising only three letters. In the present case, as the intervener itself has pointed out, the marks comprise 11 and 7 letters respectively. It is therefore clear that the present case does not concern very short signs and that the case-law cited above is not relevant.

50      Regarding the length of the marks, the intervener states that the earlier marks consist of 11 letters whereas the mark applied for consists of 7 letters and a hyphen. The intervener adds that the earlier marks have seven ascenders whereas the mark applied for has only one letter longer in height, the ‘l’, and a descender with ‘g’. It states that the mark applied for has graphic elements, namely stylised letters and the black parallelogram shaped background.

51      In that respect, it must be recalled that the Board of Appeal recognised that there were differences between the marks at issue. Even though the Board of Appeal did not compare the number of respective letters, it is clear that it took account of the differences in respect of the elements preceding the common element ‘miglia’ in the marks at issue. In any event, the difference regarding the length of the verbal parts of the marks at issue is not such as to lead to the conclusion that, in spite of the fact that they have the element ‘miglia’ and the element ‘e’ in common, there is no similarity between those marks. The differences regarding the ascenders or descenders, even if they were relevant, cannot alter that conclusion.

52      Finally, the Board of Appeal cannot be criticised for the way in which it took the figurative elements of the mark applied for into account. The Board’s finding that those elements are essentially decorative, although they cannot be regarded as completely negligible in the overall impression given by that sign, is correct.

53      Regarding the intervener’s third argument, without it being necessary to establish whether an alliteration can have particular importance in respect of the visual comparison, suffice it to note that the fact that the two words comprising the earlier marks begin with the same letter does not affect the finding that the marks at issue have the element ‘miglia’ in common and that this element is found in the same (final) position in the marks at issue.

54      The intervener adds that the non-Italian-speaking part of the relevant public will perceive the two elements of the earlier marks MILLE MIGLIA as fanciful and that those two elements are therefore equivalent and neither is dominant. The element ‘miglia’ could not, consequently, be the distinctive element of the earlier signs and the signs at issue do not, therefore, coincide in a dominant element.

55      That argument fails to convince. The fact that an element of a mark cannot be qualified as dominant does not mean that that element cannot be a distinctive element.

–        Arguments of the applicant

56      The applicant submits, first of all, that the Board of Appeal, having established that the marks at issue have a dominant element in common, should have concluded that there is a high degree of similarity between them.

57      However, that argument is based on an incorrect premiss. As EUIPO has rightly observed, the Board of Appeal did not find that the element ‘miglia’ was the dominant element of the earlier marks. In fact, the Board of Appeal found only that this word was the more distinctive element of the mark applied for.

58      The same conclusion applies in respect of the applicant’s argument that the Board of Appeal should have, illogically and contradictorily, qualified as essential the trivial graphic differences and a small difference in the initial part of the mark applied for. In fact, the Board of Appeal, which recognised that the figurative elements of the mark applied for were essentially decorative, found only that they could not be regarded as completely negligible in the overall impression given by that sign. The Board of Appeal also took into account the differences in the initial parts of the marks at issue when it examined the overall impression given by those marks. Evidently, that approach is neither illogical nor contradictory. On the contrary, by taking those elements into consideration, the Board of Appeal proceeded only with the global assessment that it was expected to perform, in accordance with the case‑law cited in paragraph 27 above.

59      The applicant also argues that the Board of Appeal failed appropriately to take into consideration the distinctive and dominant elements of those marks. According to the applicant, the word ‘miglia’ is the dominant element both for the mark applied for and the earlier marks.

60      It follows from the case-law that the global assessment of the likelihood of confusion, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (see judgment of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 47 and the case-law cited). A component forms the dominant element within the overall impression created by a composite mark when it is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 33).

61      The applicant’s proposition that the word ‘miglia’ is the dominant element of the marks at issue is based on the premiss that the other elements of the marks at issue can be ignored.

62      That premiss is incorrect.

63      First, as EUIPO has rightly observed, the difference between the elements ‘mille’ and ‘e-’ is a significant factor of differentiation within the overall impression created by the marks at issue and, in that regard, it certainly cannot be considered, as the applicant maintains, to be a ‘small’ difference.

64      Secondly, the applicant has not established why the hyphen, which it considers to be a character that is ‘not unusual in the relevant market’, is irrelevant. The case‑law to which the applicant refers in that regard, according to which the protection offered by the registration of a word mark applies to the word in the application for registration and not to any individual graphic or stylistic characteristics of that mark (judgment of 22 May 2008, Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, not published, EU:T:2008:165, paragraph 43), is certainly not relevant in the present case, as the hyphen at issue is not a graphic or stylistic characteristic.

65      Thirdly, as EUIPO has rightly observed, the earlier marks consist of two words which, with five and six letters, have almost the same length. The word ‘mille’, which constitutes nearly 50% of those marks, cannot therefore be regarded as a negligible element.

66      Fourthly, the Board of Appeal’s finding that the figurative elements of the mark applied for, even though they are essentially decorative, cannot be regarded as completely negligible in the overall impression produced by that sign is not vitiated by any error (see paragraph 52 above).

67      Moreover, it must be noted, as regards the earlier marks, that the applicant bases its proposition that the word ‘miglia’ is the dominant element on the premiss that the other word comprising those marks, namely the word ‘mille’, is purely descriptive since its meaning is understandable to the relevant public. However, that is clearly not the case as regards the non-Italian-speaking public (see paragraph 91 below)

68      The applicant’s argument, based on the presence of a common dominant element in the marks at issue, must therefore be rejected.

69      The applicant also claims that the mark applied for is wholly contained in the earlier marks. That argument, which is based on the presence of the element ‘miglia’ and the letter ‘e’ in all those marks, fails, however, to take account of the fact that the mark applied for also contains a hyphen and figurative elements. The mark applied for is therefore not wholly contained in the earlier marks.

70      Finally, the applicant claims that the Board of Appeal failed to comment on the positioning of the common elements. However, it clearly follows from the contested decision that the Board of Appeal did indeed take into account the fact that the common element was at the end of the marks at issue.

71      The Court therefore considers that the Board of Appeal did not commit an error when, after examining the similarities and differences between the marks at issue, it came to the conclusion that those marks were visually similar to a low degree.

 The phonetic aspect

–       Arguments of the intervener

72      Concerning the phonetic aspect, the intervener puts forward three arguments to contest the Board of Appeal’s assessment. First, the Board of Appeal did not give sufficient importance to the alliteration created by the fact that the two words comprising the earlier marks begin with the letter ‘m’. Secondly, it did not duly take into account the importance of the beginning of the earlier marks. Thirdly, the Board of Appeal ignored the effect of the strong vowel ‘e’ of the mark e‑miglia on its pronunciation.

73      As regards the first of those arguments, it must be stated that the intervener confines itself, in that regard, to stressing the importance of the alliteration in question without explaining what effect it could have on the phonetic comparison. In any event, it must be recalled that the fact that the two words comprising the earlier marks begin with the same letter does not affect the finding that the marks at issue have the element ‘miglia’ in common and that this element is found in the same (final) position in the marks at issue. The intervener has not established that the alliteration in question results in removing the phonetic similarity produced by that element.

74      Regarding the second argument put forward by the intervener, it must be stated that the Board of Appeal did indeed take account of the importance that the first part of a word or a mark normally has for the consumer. Its finding that the relevant public would nevertheless be decisively influenced by the similarities produced by the element ‘miglia’, present in all of the marks at issue and forming a distinctive element, is not vitiated by any error (see paragraph 47 above).

75      In relation to the third argument, the intervener suggests that, as the vowel ‘e’ found at the beginning of the mark applied for has a strong sound, it significantly distinguishes the term ‘e-miglia’ from the earlier marks. It maintains, additionally, that the long vowel ‘e’, because of its position at the beginning of the mark, changes the pronunciation of the mark e-miglia. According to the intervener, the elements ‘e’ and ‘miglia’ combine into a new word that the public will take up and pronounce as a single word. Linguistically, there is no reason to make a clearly perceptible pause between the elements ‘e’ and ‘miglia’. In addition, the mark e-miglia is too sonorous and concise for the public to tend to split the mark into its two elements ‘e’ and ‘miglia’. The intervener also submits that, when the signs at issue are pronounced, the emphasis is placed on their first common part and that the other parts of the signs are not noticed because their sound is weaker.

76      The Court takes the view that none of these arguments is convincing. Factually, the Court considers that the reference made by the intervener to the ‘first common part’ of the marks at issue is an error, given that the verbal part preceding the element ‘miglia’ is not identical regarding those marks. On the substance, it should be noted that, by putting forward those arguments, the intervener attempts to minimise or even to deny the fact that its mark contains a hyphen to which it has, however, attributed considerable importance in respect of the visual comparison. However, it is clear that this hyphen effects a certain separation between the two elements ‘e’ and ‘miglia’ in the mark applied for. Even if one were to consider that, for the relevant public, the two elements combine to form the word ‘emiglia’, it would however have to be found that the intervener has not established that this combination is likely to affect the pronunciation of the element ‘miglia’ that is common to the marks at issue. The intervener’s proposition seeking to demonstrate the impact of the first of those elements on the pronunciation of the second element seems to be based on the idea that, because of that impact, the element ‘miglia’ would be pronounced differently for the mark applied for, on the one hand, and the earlier marks on the other. However, the intervener has not provided any evidence to support that proposition. As EUIPO has rightly contended, given that the signs at issue coincide in the pronunciation of the word ‘miglia’, it is undeniable, regardless of the different rules of pronunciation that apply in each of the relevant languages, that the signs have a certain phonetic similarity, even if it is slight.

–        Arguments of the applicant

77      As regards the phonetic comparison, the applicant puts forward two arguments in support of its position that there is a very high degree of phonetic similarity. First, the Board of Appeal did not take into consideration the fact that the distinctive element ‘miglia’ of the earlier marks was wholly reproduced in the mark applied for. According to the applicant, that fact necessarily makes the two marks phonetically similar, given that no other relevant elements are present to make any substantial phonetic difference. Secondly, the Board of Appeal disregarded the fact that, for the goods at issue, the visual aspect is more important than the phonetic aspect.

78      These arguments are not convincing.

79      As regards the applicant’s first argument, it must first of all be noted that the Board of Appeal recognised that there was phonetic similarity between the marks at issue, although it held that that similarity was to a below average degree. In reaching that conclusion, the Board of Appeal did take into consideration the fact that the earlier marks and the mark applied for had the term ‘miglia’ in common. While its reasoning on that point is somewhat brief, it clearly follows from the contested decision that the Board of Appeal held that the fact that this common element was preceded by different elements — namely, the term ‘mille’ in respect of the earlier marks and the letter ‘e’ as regards the contested mark — resulted in reducing the phonetic similarity to a below average degree. That conclusion is not vitiated by any error. Contrary to the applicant’s claim, the element ‘miglia’ is not the only distinctive element of the earlier marks, given that the non‑Italian‑speaking public will understand neither the meaning of the word ‘mille’ nor that of the word ‘miglia’. Moreover, the differences between the marks at issue concerning the elements other than the common element ‘miglia’ necessarily reduce the similarity between those marks produced by that element.

80      As regards the applicant’s second argument, the fact that the visual aspect was more important than the phonetic aspect in the present case, even if it were established, is not sufficient, in any event, to prove that the degree of similarity was very high even phonetically, as the applicant argues.

81      The Court therefore considers that the Board of Appeal did not commit an error when it came to the conclusion, after examining the similarities and differences between the marks at issue, that those marks were phonetically similar to a below average degree.

 The conceptual aspect

82      The intervener does not contest the contested decision as regards the conceptual comparison of the marks at issue.

83      It must be recalled, first of all, that the Board of Appeal reached the conclusion that, for certain goods and services, there was a likelihood of confusion between the marks at issue in respect of the non‑Italian‑speaking part of the relevant public.

84      That approach is in line with the case-law. In order to find that there exists a likelihood of confusion, it is not necessary to find that that likelihood exists for the whole of the relevant public (judgment of 10 October 2012, Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, not published, EU:T:2012:535, paragraph 69).

85      Given that the Board of Appeal made a finding of a likelihood of confusion only in relation to the non-Italian-speaking part of the relevant public, the existence of a conceptual similarity between the marks at issue from the Italian‑speaking public’s perspective is irrelevant to the assessment of the contested decision. In order to prove that the Board of Appeal, in that decision, underestimated the similarity between the marks at issue, the applicant would have to prove that there was also a conceptual similarity for the non‑Italian‑speaking public.

86      In the contested decision, the Board of Appeal held that, for the non‑Italian‑speaking public, both the expression ‘mille miglia’ and the word ‘miglia’ had no meaning. The Board of Appeal added that, for that public, there was a certain conceptual difference between the marks at issue, given that the prefix ‘e’ in the mark applied for evoked a concept relating to electronics. That conceptual difference was, however, of minor importance as regards the comparison of the marks at issue, given that the non‑Italian-speaking public would more easily recall the more distinctive element ‘miglia’ in the mark applied for.

87      While the wording adopted by the Board of Appeal in paragraph 34 of the contested decision is not very clear, the fact that, in paragraph 43 of that decision, the Board mentions only visual and phonetic similarity permits the finding that it held that the conceptual comparison was neutral for the non‑Italian-speaking public, since they would neither understand the word ‘miglia’ nor the word ‘mille’ and the difference introduced by the element ‘e-’, which features exclusively in the mark applied for and may be associated with the word ‘electronic’, should not be overestimated.

88      In that context, the applicant submits that the non‑Italian‑speaking part of the relevant public will understand the terms ‘miglia’ and ‘e‑miglia’ in the same way, or else the term will be neutral, or have the same meaning, for all. Thus, the signs are identical. The Board of Appeal’s assessment that there was no conceptual similarity between the marks at issue is therefore wrong.

89      That argument is not convincing, since it is based on a comparison not of the marks in their entirety, but on the mark applied for and part of the earlier marks. It must also be stressed that the fact that certain signs have no meaning for the relevant public does not mean that there is thus a conceptual similarity between those signs. When the relevant public does not understand the meaning of the signs at issue, the conceptual comparison of those signs is entirely irrelevant.

90      The applicant further maintains that the expression ‘miglia’, in the sense of unit of measure and length, will be understood not only in Italy and in Italian, but also in most of the countries of the European Union. By way of example, the applicant cites ‘milje’ (Albanian), ‘meilen’ (German), ‘miles’ (English), ‘millas’ (Spanish), ‘miili’ (Estonian), ‘miles’ (French) and ‘milhas’ (Portuguese).

91      However, as EUIPO has rightly observed, this claim is unfounded. The degree of similarity between these words and ‘miglia’ is not sufficiently high to find that consumers would think that they possess the same meaning. The applicant has not, moreover, provided any evidence in support of its argument.

92      The same conclusion applies concerning the applicant’s argument that, taking account of the reputation of the motorcar race mentioned in paragraph 16 above, a large part of the consumers in the European Union will make a connection between the marks at issue and that race.

93      Moreover, the applicant argues, in essence, that at least part of the non‑Italian‑speaking public is able to associate the term ‘miglia’ with a concept, that of ‘miles’, which is common to the signs at issue. Therefore, for that part of the relevant public there is no conceptual difference between the signs at issue. In that regard, it states that a conceptual difference would not reduce the likelihood of confusion unless it is valid for all the relevant public.

94      Even assuming that, in spite of what was stated in paragraph 87 above, the Board of Appeal had recognised the existence of a conceptual difference concerning the non‑Italian-speaking public, that argument is not convincing, given that it is based on the premiss that a ‘common concept’ exists. However, the applicant has not established that such a common concept exists. As the Board of Appeal rightly stated, the word ‘miglia’ has no meaning for the non‑Italian-speaking public.

 The likelihood of confusion

95      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 lesser degree of similarity between the goods or services designated may be offset by a greater 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).

96      The Board of Appeal, finding that the earlier marks had a normal degree of distinctive character, held that the likelihood of confusion in the present case existed for the public that would understand neither the combination of words ‘mille miglia’ nor the element ‘miglia’, but only with regard to the goods and services deemed identical.

97      The intervener contests the Board of Appeal’s finding that the earlier marks had average distinctive character. It submits that the Italian‑speaking part of the public would recognise that the words ‘mille miglia’ mean ‘thousand miles’, that the services designated by the earlier marks were linked to organising motorcar races and that those marks were, thus, purely descriptive. To that extent, the earlier marks were therefore completely devoid of any distinctive character.

98      As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and marks with a highly distinctive character, either per se or because of their recognition by the public, therefore enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

99      It must be stated that the Board of Appeal concluded that there was a likelihood of confusion between the marks by the non‑Italian-speaking part of the relevant public. However, the intervener’s arguments are based on the perception of those marks by the Italian-speaking part of that public. These arguments are therefore not capable of calling into question the Board of Appeal’s finding on this point. Indeed, it must be noted that the intervener itself takes up, without contesting it, the Board of Appeal’s finding that the earlier marks must be considered to have an average degree of distinctive character as regards the non‑Italian‑speaking part of the relevant public.

100    Finally, the intervener maintains that there is no likelihood of confusion because the Board of Appeal committed an error by concluding that the element ‘miglia’ was the distinctive element of the earlier marks.

101    In that regard, suffice it to note that, in the paragraph of the contested decision that the intervener criticises, the Board of Appeal found only that the element ‘miglia’ was a distinctive element which, evidently, does not exclude the possibility that there are other distinctive elements.

102    The applicant maintains, concerning the likelihood of confusion, that such likelihood exists in the case of a high degree of similarity between the signs and a high degree of similarity between the goods and services.

103    However, in the present case, the Board of Appeal found, without erring, that the marks were similar only to a low degree visually and to a below average degree phonetically. The applicant’s argument is therefore incapable of calling into question the Board of Appeal’s findings on the likelihood of confusion.

104    It follows from the foregoing that both the applicant’s single plea put forward in support of the application and the intervener’s single plea put forward in support of the cross-claim must be rejected.

105    Therefore, both the application and the cross-claim must be dismissed in their entirety.

 Costs

106    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. Under Article 134(2) of those Rules of Procedure, where there are several unsuccessful parties the General Court is to decide how the costs are to be shared.

107    In the present case, since both the applicant and the intervener have been unsuccessful, they must be ordered to bear their own costs and each pay half of the costs of EUIPO.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Dismisses the cross-claim;

3.      Orders Automobile Club di Brescia and Rebel Media Ltd to bear their own costs and each pay half of the costs of EUIPO.

Delivered in open court in Luxembourg on 30 November 2016.

© European Union
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