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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

1 March 2016 (*)

(Community trade mark — Opposition proceedings — Application for the Community word mark 1e1 — Earlier national word mark UNO E and earlier figurative mark unoe — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑61/15,

1&1 Internet AG, established in Montabaur (Germany), represented by G. Klopp, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,

defendant,

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

Unoe Bank, SA, established in Madrid (Spain), represented by N. González-Alberto Rodríguez, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 4 December 2014 (Case R 101/2014-5) relating to opposition proceedings between Unoe Bank, SA and 1&1 Internet AG,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas (Rapporteur), President, E. Bieliūnas and I.S. Forrester, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 6 February 2015,

having regard to the response of OHIM lodged at the Registry on 3 August 2015,

having regard to the response of the intervener lodged at the Registry of the Court on 22 July 2015,

having regard to the decision of 8 September 2015 not to allow the lodging of a reply,

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

gives the following

Judgment

 Background to the dispute

1        On 17 July 2012, the applicant, 1&1 Internet AG, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the word sign 1e1.

3        The services in respect of which registration was applied for are in Classes 35, 38, 42 and 45 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:

–        Class 35 — ‘Banner advertising; Operating and providing an online ordering system; Professional business and organisation consultancy with regard to the development and conducting of business cooperation and business-to-business concepts; Advertising agencies, in particular the planning and design of advertising initiatives; Presentation of goods on communications media, including for retail purposes; Attracting customers and customer care by means of mail advertising (mailings); Market analysis; Marketing, in particular including marketing on digital networks; Merchandising; Online e-commerce provider services, namely the presentation of goods and services, order placement, order delivery and invoice management; Organisational consultancy with regard to creating multimedia products, with regard to internet and communications technology, and with regard to audio-visual productions; Business information services; Public relations; Planning and design of advertising activities; Presentation of companies on the internet and in other media for advertising purposes; Presentation of goods as sponsorship in the form of advertising, and through the arranging of advertising and promotional contracts for athletes, companies and events; Sales promotion; Rental of advertising space, including on the internet (banner exchange); Business management consultancy; Arranging and concluding commercial transactions, for others, via online shops, online platforms and virtual department stores; Arranging of trading and economical contacts, also over the internet; Display services for merchandising; Advertising services; Arranging of advertising; Advertising, in particular online advertising on computer networks; Advertising on the internet, for others, including by means of banner advertising; Compilation and systemisation of information into computer databases; Including all the aforesaid services via telecommunications networks, the internet or other online networks’;

–        Class 38 — ‘Information about telecommunications; Consultancy, information and advisory services in the field of telecommunications; Providing access to the internet; Access to telecommunications networks by means of a computer, telephone or television; Providing portals on the internet; Providing telecommunications channels for teleshopping services; Communication services for access to information, text, sound, images and data via communication and computer networks; Providing access to online portals or online search engines; Providing online chat rooms for transmission of messages among computer users; Providing online bulletin board services; Transfer of data by telecommunications; Services of an internet provider; Electronic mail services; Telecommunications; Providing access to computer databases via global computer networks; Providing access to data networks (the internet) and online message sending services for digital messaging services; Transmission and distribution of data or audio visual images via a global computer network or the internet; Transmission of information on/via the internet; Web messaging’;

–        Class 42 — ‘Consultancy with regard to the design of homepages and internet pages; Providing platforms on the internet; Software design services; Design and development of computer hardware and software; Design and development of software for providing online advertising and/or advertising on the internet; Design and development of computer hardware and software for online services for providing or exchanging information via the internet, or for operating search engines or online portals with information provided via the internet, in particular text data, image data, audio data or video data; Design and development of computer hardware and software for operating telecommunications services and digital services, in particular online services for communications via the internet by means of text data, image data, audio data, speech data and/or video data; Design, maintenance and updating of a telecommunications network search engine; Greeting card services, anti-spam and anti-virus services by means of the creating, maintenance and adaptation of software; Hosting of internet sites; Rental of storage space on the internet; Rental and maintenance of memory space for websites, for others (hosting); Rental of webservers; Providing of memory space on the internet; Providing memory capacity for external use (webhousing); Providing webspace (webhosting)’;

–        Class 45 — ‘Buying and selling of domains; Creation of domain names; Maintenance of domains; Domain name registration services; Allocating of domains; Rental and leasing of domains’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 155/2012 of 16 August 2012.

5        On 11 October 2012, the intervener, Unoe Bank, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, 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 earlier Spanish figurative mark UNO E designating, inter alia, services in Class 45 and corresponding to the following description: ‘personal and social services not included in other classes, given by third parties in order to satisfy individual needs; safety services for the protection of goods and persons; legal services; services of investigation and vigilance relative to the safety of persons and collectivities; services of matrimonial agencies; funeral services’.

7        The opposition was also based on the following earlier Spanish figurative mark:

8        The earlier mark figurative designates, inter alia, services in Classes 35, 38 and 42, corresponding, for each of those classes, to the following description:

–        Class 35 — ‘Advertising and help in the exploitation or management of commercial or industrial firms, commercial administration, office work, import-export agencies, retail or wholesale selling or selling by worldwide computer networks, exclusive selling and commercial representations’;

–        Class 38: ‘Telecommunications’;

–        Class 42 — ‘Scientific and technological services, as well as research and design related thereto, analysis and industrial or scientific research for medical purposes, design and development of computers and software, services rendered by individuals or groups regarding technical or practical aspects of complex activities, such services rendered by representations of professions such as chemist, physicist, engineers, computer experts; services of engineers who carry out evaluations, estimates, research and reports in scientific and technological fields’.

9        The opposition was based on all the services covered by the marks referred to in paragraphs 6 and 7 above.

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

11      On 12 November 2013, the Opposition Division rejected the opposition.

12      On 3 January 2014, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

13      By decision of 4 December 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM annulled the Opposition Division’s decision and refused registration of the mark applied for. It found, in essence, that given, in particular, the average degree of distinctiveness of the earlier marks, the aural similarities present at the start of the mark sought and the fact that the conflicting signs convey the same concept of ‘one’, even though the targeted Spanish consumers might not confuse the marks as such, there was still a likelihood that they would believe that the identical and highly similar services at issue came from the same undertaking or from economically-linked undertakings.

 Forms of order sought

14      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

15      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

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

17      The applicant denies that there is any likelihood of confusion between the conflicting signs; OHIM and the intervener disagree.

18      Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘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 Community trade mark.

19      According to established case-law, the risk that the public might 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 line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

20      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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

 The relevant territory and public

21      As held by the Board of Appeal, the relevant territory is Spain, given that the earlier marks are Spanish marks, which the applicant does not dispute.

22      With regard to the relevant public, it should be noted that, in the overall 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 degree of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

23      In the present case, the Board of Appeal held, first, that services in Classes 35, 42 and 45 are intended for a professional public, who will have a heightened level of attention when purchasing those services and, secondly, that services in Class 38 are directed at both a professional public and the public in general, the latter of whom will have a normal level of attention.

24      The applicant claims that, in so doing, the Board of Appeal did not correctly define the relevant public. Yet it puts forward arguments which, in essence, tend to confirm the view that, for services in Classes 35, 42 and 45, the level of attention of the relevant public — which it does not dispute will be a professional public — will be heightened, thereby ruling out any likelihood of confusion between the conflicting signs.

25      In those circumstances, the conclusion is that the applicant does not dispute the definition of the relevant public as such, but rather its being taken into account in the overall assessment of the likelihood of confusion.

26      The Board of Appeal’s findings as to the public’s level of attention must, in any event, be endorsed, except as regards the non-professional public’s level of attention with respect to services in Class 38, since, for a non-professional public and services in Class 38, the level of attention will be relatively high and not normal, as held by the Board of Appeal. While those goods and services may be used on a daily basis by the end consumer, that consumer does not purchase them regularly and their price is relatively high. Furthermore, they are, in part, technical and specialised in nature (see, to that effect and by analogy, judgment of 5 May 2015 in Skype v OHIM — Sky and Sky IP International (SKYPE), T‑184/13, EU:T:2015:258, paragraph 22).

27      It follows that, for all the services at issue, the relevant public — professional and non-professional — will have a heightened level of attention.

 Comparison of the services

28      According to settled case-law, in order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, 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 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

29      In the present case, the Board of Appeal took the view that the services in Class 35 covered by the mark sought were identical, that services in Classes 38 and 42 were identical or highly similar and that services in Class 45 were highly similar or identical to the services covered by the earlier marks.

30      The applicant complains that the Board of Appeal found, incorrectly that the services at issue were all identical or highly similar. It takes the view that the services covered by the mark sought in Classes 35, 38 and 42 and those covered by the earlier word mark are neither identical nor similar. As to the services covered by those marks in Class 45, the Board of Appeal found, incorrectly, that they are highly similar or identical. It further submits that the services covered by the mark sought in Class 45 are different from the services covered by the earlier figurative mark, which does not cover services in that class. As to ‘market analysis; organisational consultancy with regard to creating multimedia products, with regard to internet and communications technology, and with regard to audio-visual productions; display services for merchandising; compilation and systemisation of information into computer databases’, covered by the mark sought and in Class 35, and also ‘providing platforms on the internet; hosting of internet sites; rental of storage space on the internet; rental of webservers; providing of memory space on the internet; providing memory capacity for external use (web-housing); providing web space (webhosting)’, covered by the mark sought and in Class 42, they are also different from the services covered by the earlier figurative mark in those same classes.

31      OHIM contests the applicant’s arguments. ‘Display services for merchandising’, covered by the mark sought and in Class 35, are included in ‘advertising services’, covered by the earlier figurative mark and in Class 35, with the result that they are identical. Moreover, ‘market analysis, organisational consultancy with regard to creating multimedia products, with regard to internet and communications technology, and with regard to audio-visual productions’, covered by the mark sought and in Class 35, are included in ‘help in the exploitation or management of commercial or industrial firms’, covered by the earlier figurative mark and in the same class, so that they are also identical. Likewise, ‘compilation and systemisation of information into computer databases’, covered by the mark sought and in Class 35, are included in ‘office work and commercial administration’, covered by the earlier figurative mark and in the same class. Furthermore, ‘providing platforms on the internet; hosting of internet sites; rental of storage space on the internet; rental of webservers; providing of memory space on the internet; providing memory capacity for external use (web-housing); providing web space (webhosting)’, covered by the mark sought and in Class 42, are included in ‘services rendered by individuals or groups regarding technical or practical aspects of complex activities’, covered by the earlier figurative mark and in that class, and are therefore identical or, at the very least, highly similar. Lastly, ‘buying and selling of domains; creation of domain names; maintenance of domains; domain name registration services; allocating of domains; rental and leasing of domains’, covered by the mark sought and in Class 45 and ‘legal services’, covered by the earlier word mark and in Class 45, are, to an average degree, similar. It is well known that law firms and other legal practitioners provide their clients with legal advice concerning inter alia the creation and registration of domain names.

32      The intervener argues that, as the applicant did not put forward any argument before the Board of Appeal concerning the differences between the services at issue, the arguments pertaining thereto put forward for the first time before the General Court must be rejected. The contested decision must accordingly be held to be definitive in terms of the conclusion that those services are identical or highly similar. In the alternative, the intervener disputes the merits of the applicant’s arguments.

33      In the present case, as a preliminary point, regarding the plea of inadmissibility put forward by the intervener, it must be borne in mind that pleas put forward and evidence adduced for the first time before the General Court must be held to be inadmissible, without its being necessary to examine them (judgment of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 54). In the present case, however, the applicant’s arguments concerning the comparison of services cannot be regarded as being a plea introduced for the first time before the General Court since, both before the Opposition Division and before the Board of Appeal, the applicant argued that the relative grounds for refusal set out in Article 8(1)(b) of Regulation No 207/2009, which entails inter alia a comparison of the services at issue, was not applicable. It is, moreover, evident from the case file that, before the Opposition Division, the applicant and the intervener disagreed about the comparison of the services and that, in the interest of procedural economy, the Opposition Division did not examine the issue, opting instead to proceed on the assumption that the services were identical. Although, before the Board of Appeal, the applicant merely stated that there was no likelihood of confusion for the identical services on the ground that the conflicting signs were different, it cannot be inferred therefrom that the applicant was not disputing that some of the services were similar or identical. It is also apparent from the contested decision that the Board of Appeal disagreed with the Opposition Division’s conclusion and that it was ‘for the sake of completeness’ that it made a comparison of the services at issue. The Board of Appeal thus made a complete re-examination of those services. In those circumstances, the applicant cannot be precluded from criticising the Board of Appeal’s findings on this point in the context of its appeal before the General Court, the aim of which is a review of the lawfulness of the decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009. Consequently, the intervener’s plea of inadmissibility must be rejected.

34      Next, the General Court considers it appropriate to conduct a comparison of the services covered by the mark sought, beginning with those covered by the earlier word mark and then those covered by the earlier figurative mark.

 The comparison of the services covered by the mark sought and those covered by the earlier word mark

35      In the first place, regarding ‘creation of domain names; maintenance of domains; domain name registration services’, covered by the mark sought and in Class 45, it should be noted that, as argued, in essence, by the applicant, the Board of Appeal was incorrect in finding that those services and legal services covered by the earlier word mark, which are also in Class 45, were highly similar or identical.

36      Firstly, those services are not similar in nature, purpose or use. Nor has it been demonstrated that they are competing or complementary. According to the case-law, services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the provision of those services lies with the same undertaking (see judgment in Commercy v OHIM — easyGroup IP Licensing (easyHotel), paragraph 20 above, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). There is nothing to show that such a connection exists in the present case. Lastly, contrary to the Board of Appeal’s statements, there is nothing showing that those services have the same providers, distribution channels or end users.

37      In that regard, OHIM’s assertion that it is well known that law firms and other legal practitioners provide their clients with legal advice concerning inter alia the creation and registration of domain names, as evidenced in the contested decision, must be rejected. Even if that were well known and proven, such services are not ‘creation of domain names; maintenance of domains; domain name registration services’, but rather legal advisory services concerning the same. Moreover, domain name management services are generally provided by internet access providers or specialised providers, not by law firms or other legal service providers.

38      So, too, must the intervener’s assertion that ‘domain name registration services’ and ‘legal services’ are similar on the ground that the former are included in the latter. Given their title, purpose and nature, ‘domain name registration services’ cannot, in the present case, be considered as coming under ‘legal services’. This conclusion is not affected by the intervener’s argument that the Nice classification refers to ‘domain name registration services [legal services]’. In the present case, the indication between quotation marks ‘legal services’ is not found in the registration application filed by the applicant after the reference to ‘domain name registration services’. In those circumstances, it cannot be presumed, in the absence of a specific reference to that effect, that the applicant intended to apply for protection for such services or that such services were included in the category of ‘domain name registration services’, the nature and purpose of which are different from those of ‘legal services’. On the same grounds, it is appropriate to reject the argument based on the fact that the World Intellectual Property Organisation (WIPO) has stated, inter alia, that although domain name registration involves data programming (a service included in Class 42), it is placed in Class 45 due to the legal aspect of that service.

39      In the second place, regarding the other services covered by the mark sought in Class 45, namely ‘buying and selling of domains; allocating of domains; rental and leasing of domains’, the same considerations as those set out in paragraphs 36 and 37 above apply. The same holds true for the considerations set out in paragraph 38 above in respect of the arguments put forward by OHIM concerning those services. It should also be noted that the intervener has not put forward any argument concerning the latter specifically. Consequently, those services and the services covered by the earlier word mark and in Class 45 are neither identical nor similar.

40      Lastly, as regards the services covered by the mark sought in Classes 35, 38 and 42, it is clear, in the light of their nature, that they are different from those covered by the earlier figurative mark; nor did the Board of Appeal find any similarities between those services.

41      It follows that the services covered by the mark sought and those covered by the earlier word mark are different.

42      Therefore, in so far as it is based on the latter mark, the opposition must be dismissed, as one of the conditions of application of Article 8(1)(b) of Regulation No 207/2009 is not met.

 The comparison of the services covered by the mark sought and those covered by the earlier figurative mark

–       Services covered by the mark sought in Class 35

43      In the first place, as to ‘market analysis; organisational consultancy with regard to creating multimedia products, with regard to internet and communications technology, and with regard to audio-visual productions; display services for merchandising; compilation and systemisation of information into computer databases’, covered by the mark sought and in Class 35, it is clear that the Board of Appeal was correct in finding that they were identical to the services covered by the earlier figurative mark. It must be borne in mind that when the services covered by the earlier mark include the goods covered by the trade mark application, those services are considered to be identical (see judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR et FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 34 and the case-law cited). As rightly observed by the Board of Appeal, ‘market analysis’ as well as ‘organisational consultancy with regard to creating multimedia products, with regard to internet and communications technology, and with regard to audio-visual productions’ are included in the general category of ‘help in the exploitation or management of commercial or industrial firms’ covered by the earlier figurative mark and in Class 35. Similarly, as observed by the Board of Appeal, ‘compilation and systemisation of information into computer databases’ are included in the general category of ‘office work’ covered by the earlier figurative mark and in Class 35. Lastly, as stated, in essence, by the Board of Appeal, ‘display services for merchandising’ must be regarded as being included in the general category of ‘advertising and help in the exploitation or management of commercial or industrial firms’, covered by the earlier figurative mark and in Class 35. In those circumstances, those services must be considered identical.

44      There is no basis for calling that assessment into question. The applicant has not put forward any arguments refuting the position that the services covered by the mark sought in Class 35 were included in those covered by the earlier figurative mark. Moreover, the applicant’s argument that those services are not interchangeable with those covered by the earlier figurative mark, do not complete them, do not generally have the same origin, are generally not furnished by the same service providers, are generally directed at a different public and have no other connection with the services covered by the earlier figurative mark, can only be rejected. The services at issue are identical because, in accordance with the case-law cited in paragraph 43 above, the services covered by the mark sought are included in those covered by the earlier mark.

45      In the second place, as regards the other services covered by the mark sought in Class 35, the applicant has not adduced any evidence showing that those services and those covered by the earlier word mark are not identical or even similar. In any event, there is nothing casting doubt on the Board of Appeal’s reasoning on this point.

46      It follows that the services covered by the mark sought in Class 35 must be considered to be identical to those covered by the earlier figurative mark.

–       Services covered by the mark sought in Class 38

47      The applicant has not put forward any argument refuting the Board of Appeal’s assessment on the specific point of the comparison of the services covered by the mark sought in Class 38 with those covered by the earlier figurative mark.

48      In any event, there is nothing refuting the Board of Appeal’s finding that those services are identical or highly similar.

–       Services covered by the mark sought in Class 42

49      In the first place, as regards ‘providing platforms on the internet; hosting of internet sites; rental of storage space on the internet; rental of webservers; providing of memory space on the internet; providing memory capacity for external use (web-housing); providing web space (webhosting)’, covered by the mark sought and in Class 42, it is clear, as observed by the Board of Appeal, that they are included in the general category of ‘services rendered by individuals or groups regarding technical or practical aspects of complex activities’, covered by the earlier figurative mark and in Class 42. In those circumstances, those services must be considered to be identical.

50      As observed in paragraph 44 above, none of the arguments put forward by the applicant cast doubt on that finding.

51      In the second place, regarding other services covered by the mark sought in Class 42, the applicant has not adduced any evidence showing that those services and those covered by the earlier figurative mark are not identical or even similar. Nor is there anything refuting the Board of Appeal’s reasoning on this point.

52      It follows that the services covered by the mark sought in Class 42 and those covered by the earlier figurative mark in the same class must be considered to be identical or highly similar.

 The comparison of the signs

53      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, 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 proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

54      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. The comparison must be made by examining each of the marks at issue as a whole, but that does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, paragraph 53 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, paragraph 53 above, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

55      In the present case, the Board of Appeal found that the conflicting signs were similar to a certain degree. It held in that regard that the earlier marks and their components ‘uno’ and ‘unoe’ had an average degree of distinctiveness, and that although the conflicting signs were not visually similar there was a phonetic and conceptual similarity.

56      The applicant considers that the Board of Appeal was wrong to find that the conflicting signs were similar, arguing that not only do the earlier marks have a low, as opposed to normal, level of distinctiveness but the conflicting signs are only slightly phonetically similar and are conceptually different.

57      OHIM replies that, although the conflicting signs are visually different, they are phonetically and conceptually similar. The earlier marks also have an average degree of distinctiveness.

58      The intervener submits that the earlier marks are not descriptive of the services covered and that they have a normal level of distinctiveness. It also disputes the applicant’s arguments concerning the phonetic and conceptual similarities.

59      As a preliminary point, given the conclusion in paragraph 42 above, the comparison of the conflicting signs must be limited to the comparison of the mark sought with the earlier figurative mark.

60      Next, the dominant components of the conflicting signs should be considered. Beginning with the mark sought, neither of its components, namely the number ‘1’ and the letter ‘e’, appears to be dominant; nor does the applicant claim that to be the case. In the earlier figurative mark, given inter alia its size and positioning, the dominant component must be held to be made up of the word component ‘unoe’. The multi-coloured asterisk to the right of that word component, given its size and colours, cannot be considered negligible but rather secondary. The comparison of the conflicting signs accordingly cannot be made solely on the basis of the dominant word component of the earlier figurative mark, but rather in the light of each of the signs viewed as a whole.

61      As to the distinctiveness of the conflicting signs, the applicant is incorrect in claiming that the earlier figurative mark has a low level of distinctiveness. Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 54 and the case-law cited). In the present case, it is noteworthy that although the figurative component of the earlier figurative mark, namely the asterisk, is not negligible in terms of its size and colours, it is likely to be perceived by the consumer essentially as a decorative component and not a component indicating the commercial origin of the goods. As regards the word component of the earlier figurative mark, ‘unoe’, it should be borne in mind that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (judgment of 29 January 2013 in Fon Wireless v OHIM — nfon (nfon), T‑283/11, EU:T:2013:41, paragraph 59). In the present case, given inter alia the difference in colour between the letters making it up and the meaning that will confer on them, the relevant public will be likely to break down that component into two parts, the first comprising the term ‘uno’, perceived as a reference to the number ‘1’ in Spanish, and the second made up of the letter ‘e’. However, contrary to what the applicant claims, in essence, the letter ‘e’ will not be perceived as referring to electronics or the internet. Although ‘e’ is a well-known abbreviation for ‘electric’ or ‘electronic’ (judgment of 29 April 2009 in Enercon v OHIM (E-Ship), T‑81/08, EU:T:2009:128, paragraph 34), as OHIM has, in essence, stated, it will generally be perceived as such only when placed before another word component, usually with a hyphen between the ‘e’ and the other component, not after, as in the present case. Therefore, and contrary to what the applicant claims, the relevant public will not perceive the earlier figurative mark as referring to ‘one electronic’ or ‘one internet-related’ in the sense of ‘number one on the online market’, including in the context of the services at issue. There is nothing showing that it will be perceived as such, which would give it a descriptive character of those services. Lastly, it has not been demonstrated that, viewed as a whole, the word component of the figurative mark will be perceived as having another particular meaning. The applicant has not adduced any evidence casting doubt on the Board of Appeal’s finding that that component seems arbitrary for the services in question. It follows from the foregoing that, contrary to the applicant’s assertions and as argued by OHIM, taken as a whole, the earlier figurative mark has an average degree of distinctiveness.

62      Furthermore, although it is true that the mark sought is made up of components, being the letter ‘e’ and the number ‘1’, which, taken individually, have a low degree of inherent distinctiveness, it is also true that, viewed as a whole, the mark sought, which is made up of a combination of those components, has an average degree of distinctiveness. Nor do any of the parties argue that it is low.

63      As to the visual comparison, the applicant does not dispute the Board of Appeal’s finding that the conflicting signs are not similar. That finding can only be endorsed, as acknowledged by OHIM. Visually the signs will on the whole be perceived as completely different.

64      Regarding the phonetic comparison, the mark sought, as pronounced by the Spanish-speaking public, is composed of five syllables (u/no/e/u/no), whilst the word component of the earlier figurative mark comprises only three syllables (u/no/e), which are the same as the first three syllables of the mark sought. As correctly observed by the Board of Appeal, the consumer generally pays greater attention to the beginning of a mark than the end, as the first part of the mark tends to have a greater visual and phonetic impact than the final part (see, to that effect, judgments of 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 51, and 3 September 2010 in Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, ECR, EU:T:2010:347, paragraph 62 and the case-law cited). There is nothing to indicate that that would not hold true for the present case as well. The applicant’s argument that the components ‘uno’ and ‘e’ are not the first parts of the earlier marks but rather the whole marks can only be rejected. First of all, even if, as the applicant claims, they will be perceived as a whole, those components comprise three syllables, all of which will be pronounced. Secondly, those syllables are present and included in the first part of the mark sought. The applicant’s argument that the component ‘uno’ is repeated in the mark sought and gives a dominant impression does not offset the similarity arising from the inclusion of the three syllables making up the earlier figurative mark in the first part of the mark sought. So, too, must OHIM’s argument, to the effect that the repetition of that component, which is common to both signs, means that as a whole they are almost identical, be rejected. In fact, the presence of such a repetition in the mark sought may potentially accentuate the phonetic differences between it and the earlier figurative mark, particularly given the length and tone that repetition confers on the mark sought. In those circumstances, on the basis of an overall impression, the conflicting signs may be phonetically similar, but only to an average degree.

65      As regards the conceptual comparison, it is clear from the case-law that the possibility cannot be ruled out that a letter or number, included in a sign or making up that sign, may have a meaning (see, to that effect, judgments of 16 September 2009 in Zero Industry v OHIM — zero Germany (zerorh+), T‑400/06, EU:T:2009:331, paragraph 63; 10 May 2011 in Emram v OHIM — Guccio Gucci (G), T‑187/10, EU:T:2011:202, paragraph 60; and 10 November 2011 in Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, EU:T:2011:651, paragraph 99). In the present case, conflicting signs may be viewed as conveying, for the relevant public, a reference to the number ‘one’. However, even if that reference could be construed as having its own conceptual meaning, given its features, the mark sought could as a whole be perceived as referring to the concept of connection, junction or joining of units or individuals. In the present case, even though, as the Board of Appeal observed, under Spanish grammar rules the coordinating conjunction ‘and’ is ‘y’ and not ‘e’ and even though, as argued by OHIM, the letter ‘e’ is a conjunction which is not usually used to indicate an addition of numbers, the component ‘e’ in that mark could nevertheless be perceived as constituting a linking component between the components ‘1’ which surround it and refer to the unit. The positioning of the letter ‘e’, which resembles an ampersand, in the centre, combined with the fact that the component ‘one’ is written as a number and the component ‘e’ as a letter, reinforce that impression. Thus, as observed by the Opposition Division, the mark sought could be perceived as a play on words resembling the expression ‘1 + 1’ or ‘1&1’. Such a concept, which in essence relates to the joining of a unit, is absent from the earlier figurative mark. The combination of the components ‘uno’ and ‘e’ does not seem to have its own conceptual meaning and, at the most, can be construed as also containing a reference to the number ‘1’. In those circumstances, it must be found, on the basis of an overall impression, that the conceptual similarity between the conflicting signs is weak.

 The likelihood of confusion

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

67      In the present case, the Board of Appeal held that given, in particular, the average degree of distinctiveness of the earlier marks, the phonetic similarities in the first part of the mark sought and the fact that the conflicting signs convey the same concept of ‘one’, even though Spanish consumers might not confuse the marks per se, it is not unlikely that they will believe that the identical and highly similar services at issue originate from the same undertaking or economically-linked undertakings.

68      The applicant argues, in essence, that given the lack of visual similarity which, in the present case, is of particular importance because the services at issue are offered and ordered in writing, and the lack of conceptual similarity, which cannot be offset by the very weak phonetic similarity, the Board of Appeal was incorrect in finding that there was a likelihood of confusion. This is even more true of the services in Classes 35, 42 and 45 which, contrary to the Board of Appeal’s findings, are also intended for a professional public. It further submits that the Board of Appeal was incorrect in finding that there was an indirect likelihood of confusion because, on this point, it based itself on an alleged similarity between the conflicting signs, not on the existence of a mark series or family, the existence of which has, in any event, not been proven.

69      OHIM agrees with the Board of Appeal’s findings as to the existence of a likelihood of confusion. It disagrees with the applicant’s argument concerning the importance of the visual impression, observing that, in the present case, the visual impression is not as important as it might be for goods which are purchased on a daily basis and displayed on supermarket shelves. Moreover, the phonetic aspect could play an important role with respect to the services at issue because of radio advertising or because they are purchased on the basis of word-of-mouth recommendations. In any event, the phonetic aspect cannot be disregarded, even if greater attention is paid to visual perception. Lastly, OHIM disagrees with the argument concerning the likelihood of indirect confusion, observing that there is nothing restricting the findings about indirect confusion to cases of families or series of marks.

70      The intervener takes the view that, given the similarities between the conflicting signs and the identical nature or similarity of the services at issue, the Board of Appeal was correct in finding that there was a likelihood of confusion. It also disputes the applicant’s argument concerning the likelihood of indirect confusion.

71      In the present case, given the relevant public’s heightened level of attention, the average degree of distinctiveness of the earlier figurative mark and the lack of visual similarity between the conflicting signs, which will offset their average degree of phonetic similarity and weak conceptual similarity, there is no likelihood of confusion between the conflicting signs within the meaning of Article 8(1) of Regulation No 207/2009, notwithstanding the identical or highly similar nature of the services at issue.

72      In particular, the higher-than-average level of attention, combined with the very important visual differences between the conflicting signs, mean that the relevant public not only will not confuse the conflicting signs, as observed by the Board of Appeal, but also will not perceive the identical or highly similar services at issue in the present case as originating from the same undertaking or from economically-linked undertakings; the average degree of phonetic similarity and the weak conceptual similarity do not cast doubt on that finding.

73      It follows from all the foregoing that the Board of Appeal was incorrect in annulling the Opposition Division’s decision and rejecting the trade mark application.

74      The contested decision must therefore be annulled.

 Costs

75      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.

76      In the present case, OHIM and the intervener have been unsuccessful. Therefore, OHIM must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the latter’s pleadings. Secondly, the intervener has been unsuccessful and must bear its own costs.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Annuls the decision of the Fifth Board of Appeal of OHIM of 4 December 2014 (Case R 101/2014-5) relating to opposition proceedings between Unoe Bank, SA and 1&1 Internet AG;

2.      Orders OHIM to bear its own costs and to pay the costs incurred by 1&1 Internet AG;

3.      Orders Unoe Bank, SA to bear its own costs.

Delivered in open court in Luxembourg on 1 March 2016.

[Signatures]

* Language of the case: English.

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