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

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

13 September 2018 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark apo — Earlier EU figurative mark representing an apple and earlier EU word marks APPLE — Relative grounds for refusal — Similarity of the signs — Article 8(1)(b) and (5) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and (5) of Regulation (EU) 2017/1001))

In Case T‑104/17,

Apple Inc., established in Cupertino, California (United States), represented by J. Olsen and P. Andreottola, Solicitors, and by G. Tritton, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and D. Walicka, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being:

Apo International Co. Ltd, established in Taipei (Taiwan),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 1 December 2016 (Case R 698/2016-4), relating to opposition proceedings between Apple and Apo International,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 15 February 2017,

having regard to the response lodged at the Court Registry on 11 May 2017,

further to the hearing on 12 April 2018,

gives the following

Judgment

 Background to the dispute

1        On 25 October 2012, Apo International Co. Ltd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

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 9, 11 and 35 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 9: ‘Projector; projection equipment; cameras; camcorders; slide projector; movie machine; camera strap; camera equipment box’;

–        Class 11: ‘Laboratory lamps; stage lamps and lanterns; Lamp glasses; Lighting apparatus for vehicles; Vehicle headlights; Lamps; Lamp reflectors; Burners for lamps; Projector lamps; Lights for automobiles’;

–        Class 35: ‘Advertising; import and export agent services; online shopping; the retail and wholesale of electrical appliances’.

4        The trade mark application was published in Community Trade Marks Bulletin No 239/2012 of 17 December 2012.

5        On 28 February 2013, the applicant, Apple Inc., filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6        The opposition was based on, inter alia, the following rights:

–        EU figurative trade mark registered on 30 March 2012 under No 9784299, reproduced below, designating goods and services in Classes 1 to 12, 14 to 18, 20 to 33, 35 to 45:

–        EU word mark APPLE, registered on 20 January 2009 under No 6313564, designating goods and services in Classes 9, 16, 35, 38, 41 and 42;

–        EU word mark APPLE, registered on 3 February 2009 under No 3529013, designating goods and services in Classes 2, 3, 5 to 8, 11, 12, 15, 20, 43 to 45.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001).

8        On 15 February 2016, the Opposition Division rejected the opposition. Regarding the ground for refusal set out in Article 8(1)(b) of Regulation No 207/2009, it found that the degree of similarity between the marks at issue was below average and that the goods and services at issue were identical, but that there was no likelihood of confusion. As regards the ground for refusal set out in Article 8(4) of Regulation No 207/2009, the Opposition Division rejected the opposition as not substantiated and, with regard to the law of the United Kingdom relating to an action for passing off, on the ground that one of the conditions for the application of that law was not satisfied. Regarding the ground for refusal set out in Article 8(5) of Regulation No 207/2009, the Opposition Division noted that the opponent had failed to provide evidence or present any convincing arguments to show that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

9        On 14 April 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10      By decision of 1 December 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

11      With regard to the grounds for refusal set out in Article 8(1)(b) and (5) of Regulation No 207/2009, the Board of Appeal took the view that the marks at issue were not similar and that that lack of similarity led to the rejection of the opposition on the basis of those grounds. Visually, the mark applied for clearly distinguished itself, first, from the earlier figurative marks due to the word ‘apo’, which was prominently visible in the contested sign and did not have a counterpart in the earlier figurative mark, and, second, from the earlier word marks by reason of its graphic features and due to the fact that the word ‘apo’ was shorter than the word ‘apple’. Phonetically, the Board of Appeal limited itself to comparing the mark applied for and the earlier word marks. In its view, the mark applied for would be pronounced ‘apo’ or ‘capo’ and was phonetically different from the earlier word marks due to the fact that their respective endings, namely ‘o’ and ‘ple’, lead to very different pronunciations. Finally, from a conceptual point of view, the Board of Appeal considered that the earlier marks clearly designated an apple or made reference to an apple, whereas the word element ‘apo’ did not have such a meaning, and that it would not be possible to attribute a specific object, with certainty, to the figurative element contained in the mark applied for. Moreover, as regards the application of Article 8(4) of Regulation No 207/2009, the Board of Appeal found that the applicant had not provided sufficient information capable of proving the content of the law of the United Kingdom relating to an action for passing off.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision under Article 63(3) of Regulation No 207/2009;

–        uphold its action against the contested decision in its entirety;

–        order EUIPO to pay the costs.

13      Upon being questioned by the Court during the hearing, the applicant stated that it was appropriate to treat the first two heads of claim as being one and the same, seeking the annulment of the contested decision.

14      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

15      In support of its application for annulment of the contested decision, the applicant relies on four pleas in law, alleging, in the first and second places, infringement of Article 8(1)(b) and (5) of Regulation No 207/2009, in the third place, breach of the principle of the prohibition of reformatio in pejus, and, in the fourth place, infringement of Article 8(4) of Regulation No 207/2009.

 The first and second pleas, alleging infringement of Article 8(1)(b) and (5) of Regulation No 207/2009

16      By its first plea in law, the applicant complains that the Board of Appeal did not apply the relevant case-law, pursuant to which all similarity, even a low degree of similarity, requires an assessment of the other conditions concerning the relative grounds for refusal set out in Article 8(1)(b) and (5) of Regulation No 207/2009. By its second plea in law, the applicant disputes the Board of Appeal’s findings as to the absence of visual, phonetic and conceptual similarity between the signs at issue.

17      Given that application of the case-law cited by the applicant in support of the first plea presupposes the existence of a certain similarity between the signs at issue and that, by virtue of the second plea, the applicant disputes the Board of Appeal’s conclusion as to the absence of any similarity between the signs at issue, those pleas must be examined together.

18      In that context, it should be noted that the existence of a similarity between the earlier marks and the mark applied for is a precondition for the application of both Article 8(1)(b) of Regulation No 207/2009 and Article 8(5) thereof. In the context of both those provisions, that condition relating to similarity between the marks at issue requires the existence, in particular, of elements of visual, phonetic or conceptual similarity (see, to that effect, judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52 and the case-law cited, and of 11 December 2014, Coca-Cola v OHIM — Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 31).

19      It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it does not appear either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way depending on whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) of Regulation No 207/2009 (see judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 54 and the case-law cited, and of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 32).

20      Consequently, Article 8(1)(b) of Regulation No 207/2009, just like Article 8(5) thereof, is manifestly inapplicable where any similarity between the marks at issue is ruled out. It is only if there is some similarity, however faint, between the marks at issue that it will be necessary to carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, by reason of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public (see judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 66, and of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 33).

21      The Board of Appeal, having found that the marks at issue were not similar, but different, rightly found that the grounds for refusal set out in Article 8(1)(b) and (5) of Regulation No 207/2009 were inapplicable, without conducting an assessment of their other conditions. However, it also follows from the case-law cited in paragraph 20 above that, if there is a certain similarity, however faint, between the signs at issue, the applicant’s pleas will be well founded, even if the grounds for opposition could possibly have been rejected for other reasons, not analysed by the Board of Appeal.

22      In that context, it should be noted that, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is to say visually, phonetically or conceptually (see judgment of 14 November 2017, Claranet Europe v EUIPO — Claro (claranet), T‑129/16, not published, EU:T:2017:800, paragraph 27 and the case-law cited).

23      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

24      In the case at hand, it should be noted that the marks to be compared are, on the one hand, the mark applied for, which is a figurative mark comprising the word element ‘apo’ and a figurative element, and, on the other hand, the earlier figurative mark representing an apple, reproduced in paragraph 6 above, and the earlier word marks APPLE.

25      Moreover, it should be pointed out that the contested decision contains no definition of the relevant public. It is therefore appropriate to find that the Board of Appeal endorsed, in the present case, the Opposition Division’s conclusion in that regard, according to which the relevant public was made up of the public at large of the European Union and professionals with specific knowledge, and that their degree of attention could be regarded as varying from average to high. It is appropriate to endorse that assessment.

 Visual comparison of the signs at issue

26      So far as concerns the visual comparison between the mark applied for and the earlier figurative mark, the Board of Appeal, in paragraph 13 of the contested decision, denied the existence of any similarity, citing the fact that the word ‘apo’ is prominently visible in the mark applied for owing to its bold black letters and its central position, and that it has no counterpart in the earlier figurative mark.

27      The applicant takes the view that the Board of Appeal carried out an incorrect analysis of the similarity between the mark applied for and the earlier figurative mark. The applicant states that the average consumer will plainly see the figurative element as half of an apple. Moreover, it complains that the Board of Appeal focused on only one element of the mark applied for, namely the word ‘apo’, without taking into account the obvious similarity between the mark applied for and the earlier figurative mark, namely that they would both be perceived as parts of an apple.

28      EUIPO disputes those arguments. As far as the figurative element of the mark applied for is concerned, EUIPO maintains that it might be seen as a capital letter ‘C’, but it acknowledges that it might also be seen as a stylised representation of a part of a fruit. EUIPO states that it is, however, impossible to define the fruit represented clearly, that there is no evidence that a significant part of the relevant public will see the figurative element as being an apple and that the manners in which the figurative element and the earlier figurative mark are represented are completely different. In addition, EUIPO argues that the mark applied for also contains the word element ‘apo’, which occupies a prominent position and will thus be the first element noticed by the relevant public. Last, EUIPO argues that signs may be found to be dissimilar, notwithstanding certain similarities in their figurative elements.

29      In the first place, regarding the earlier figurative mark, it should be stated that it contains a graphic object which comprises two components that are black in colour. The first component is in the shape of an apple, missing a part in the shape of a semicircle on the right side. The second component, placed above and at the centre of the first, is in a pointed elliptical shape which inclines towards the right. From a visual point of view, the earlier figurative mark will be seen by the relevant public as representing an apple with a stalk or a leaf and with a bite taken out of it.

30      In the second place, regarding the mark applied for, it should be noted that it consists of the word element ‘apo’, written in bold black lower-case letters, and a figurative element. The graphic characteristics of the word element are relatively banal and are not such as to distract consumers’ attention from the word ‘apo’. By contrast, the figurative element of the mark applied for is more complex. It contains two distinct components, one of which is on the left side, with the other being above the letter ‘a’ of the word element ‘apo’. The first component, situated on the left side of the letter ‘a’, is a line in the shape of a semicircle, which is open on the right side, is not perfectly circular, but which widens from the bottom to the top and extends, at the level of the upper part of the semicircle, appreciably horizontally and has, underneath, a wavy part. The second component, placed above the letter ‘a’ of the word element ‘apo’, is made up of a thin standing quadrilateral, which widens upwardly and which inclines slightly towards the left. A pointed elliptical element inclined towards the right is attached to that element halfway up.

31      So far as concerns the relevant public’s visual perception of the figurative element, it is appropriate to reject, first of all, the finding of EUIPO, which maintains, as the Board of Appeal found, that the figurative element of the mark applied for might be seen as the letter ‘c’ or as the combination of the letters ‘c’ and ‘y’. In fact, on account of their identical graphic style, which is clearly distinct from the bold letters of the word element ‘apo’, the two components of the figurative element will be seen as two parts of one and the same graphic object. Owing to the presence of the component located above the ‘a’ and the wavy part of the line situated underneath the letter ‘a’, the view cannot be taken that the visual content of the figurative element will be perceived, by the average consumer or even a significant part of the relevant public, as a stylised representation of the letter ‘c’.

32      It is appropriate, by contrast, to uphold the argument raised by the applicant, according to which the figurative element will be seen — at least by a significant part of the relevant public — as a stylised representation of a part of an apple. The element situated above the letter ‘a’ will readily be perceived as the stalk of a fruit with a leaf owing to its aforementioned graphic particularities. Moreover, it should be pointed out that the line situated on the left side of the letter ‘a’ is not perfectly circular, but widens clearly from the bottom to the top, which calls to mind the typical shape of an apple. The same also applies to the wavy part of the line underneath the letter ‘a’, which is in the shape of the apple’s ‘hollow’. However, those visual particularities of the figurative element can with difficulty be reconciled with the typical characteristics of the other fruit relied on by EUIPO, namely oranges, apricots, peaches and tangerines. For example, as the applicant notes, oranges are more rounded and do not have a comparable dip in the centre of the bottom side. That finding applies also to tangerines, apricots and peaches. Therefore, owing to the objective particularities of the figurative element, it is appropriate to take the view that at least a significant part of the relevant public will perceive that element as a stylised representation of an apple. It follows that EUIPO’s argument that there is no evidence to that effect must be rejected.

33      That conclusion is not called into question by EUIPO’s argument that it is impossible to define the graphic object clearly. While it is true that it is necessary to take into consideration the average consumer’s perception of the goods at issue, that does not exclude the possibility, in the case of signs which allow multiple interpretations, that the perception of those signs may not be identical for all consumers. Even if one were to suppose that a part of the relevant public might perceive the figurative element as the letter ‘c’ or as a fruit other than an apple, that does not mean that a significant part of the relevant public will not immediately see it as being the stylised representation of an apple.

34      Last, it should be noted that, so far as concerns the earlier figurative mark, EUIPO does not deny that the public concerned will see it as the representation of an apple, even though, according to the logic of the arguments put forward in relation to the mark applied for, the possibility also cannot be excluded that a part of the relevant public might regard the earlier figurative mark as representing, for example, a peach from which a bite has been taken.

35      In sum, it should be held that, from a visual point of view, the figurative element of the mark applied for will be perceived, at least by a significant part of the relevant public, as being the representation of a part of an apple.

36      With regard to the overall impression created by the mark applied for and the applicant’s complaint criticising the Board of Appeal for having focused on a single element of the mark applied for, namely the word ‘apo’, it is appropriate to recall the case-law cited in paragraph 23 above. So far as concerns the distinctive and dominant elements of the mark applied for, it should first be stated that the distinctive character of the elements of the mark applied for is normal, since neither the word ‘apo’ nor the figurative element is descriptive of the goods and services in Classes 9, 11 and 35, in respect of which registration has been applied for.

37      Second, regarding the question whether one of the two elements is dominant, it should be noted that, contrary to what EUIPO argued at the hearing, neither the word element nor the figurative element alone visually dominates the mark applied for, given that neither is negligible in the overall impression produced. It is true that the word element ‘apo’ is written in bold and occupies a central position. However, the figurative element also cannot escape the notice of consumers owing to its position at the beginning of the sign, its size and its complex graphic design. Therefore, the two elements will have a comparable impact on the image of the mark applied for that will be retained by the relevant public.

38      In the third place, regarding the visual comparison of the marks at issue, each considered as a whole, the Board of Appeal was right to find, in paragraph 13 of the contested decision, that they are distinct from one another due to the presence of the word element ‘apo’ in the mark applied for, which is not found in the earlier figurative mark. Furthermore, account should be taken of the fact, relied on by EUIPO, that the figurative element of the mark applied for and the earlier figurative mark are arranged differently.

39      The figurative element of the mark applied for is far from being identical to the figurative element that makes up the earlier figurative mark. While the mark applied for contains the left half of the outline of an apple with a stalk and a leaf, the earlier figurative mark features the full outline of an apple, with a stalk or a leaf, from which a bite has been taken and the surface demarcated by that outline which is black in colour. This also results in a notable difference regarding the size and the surface occupied by the figurative elements of the marks at issue, as well as with regard to their proportions in relation to the whole of the respective marks. From a strictly visual point of view, the signs at issue coincide solely in that the first component of the figurative element of the mark applied for, namely the line placed to the left of the letter ‘a’, is similar to a part of the outline of the figurative element of the earlier mark, and in that it contains a pointed elliptical component.

40      It should be noted, however, that, despite the different stylisation, the marks at issue still have the basic feature in common that they represent an apple (see, by analogy, judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 79). A significant part of the relevant public will see them as representing the same object. In addition, it should be recalled that the figurative element is not negligible in the overall impression created by the mark applied for, but constitutes a distinctive element which contributes to the image of that mark.

41      In the light of all the foregoing considerations, it must be held that the signs at issue, each considered as a whole, show a certain degree of visual similarity. The differences existing between them do not suffice to rule out their common point, namely the fact that a significant part of the relevant public will immediately see them as representing an apple. Consequently, the Board of Appeal’s conclusion, in paragraph 13 of the contested decision, that the mark applied for and the earlier figurative mark are not visually similar is incorrect.

42      Regarding the comparison between the figurative mark applied for and the earlier APPLE word marks, it should be recalled, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

43      In the present case, the Board of Appeal took the view, in paragraph 13 of the contested decision, that the mark applied for was clearly distinct from the earlier word marks by reason of its graphic features and the fact that the word element ‘apo’ was shorter than the word ‘apple’.

44      The applicant considers there to be at least some degree of visual similarity between the elements ‘apo’ and ‘apple’ and refers to the Opposition Division’s decision, which found a lower than average degree of similarity by taking into account, in particular, the fact that the first two letters, ‘ap’, are identical.

45      EUIPO takes issue with the applicant’s argument and argues that the signs at issue create overall different visual impressions as regards, first, the image of a half fruit in the mark applied for and, second, the group of letters ‘ple’ in the earlier word mark. EUIPO also argues that signs may be found to be dissimilar despite an overlapping sequence of letters.

46      In that context, it is appropriate to recall, in the first place, the overall impression created by the mark applied for, examined in paragraphs 30 to 37 above.

47      In the second place, it should be noted that the protection arising from the registration of the word mark APPLE relates to the word indicated in the application for registration and not to the particular graphic or stylistic aspects which that mark might possibly assume (see judgment of 5 July 2016, Future Enterprises v EUIPO — McDonald’s International Property (MACCOFFEE), T‑518/13, EU:T:2016:389, paragraph 24 and the case-law cited). It follows that a dissimilarity between the signs at issue cannot be inferred from the use of capital letters by the earlier word marks.

48      In the third place, regarding the visual comparison of the signs at issue, it is appropriate to endorse, first of all, the applicant’s observation that the marks at issue have a visual point in common, namely the identity between the groups of the two initial letters ‘ap’.

49      By contrast, it is also necessary to take into account the differences between the mark applied for and the earlier word marks APPLE. First, as the Board of Appeal found, the word elements of the signs compared are different in length, namely three and five letters. Second, as EUIPO maintains, they differ in their endings, namely ‘o’ and ‘ple’. Third, the signs compared differ by reason of the presence of the figurative element in the mark applied for. Concerning that difference, it is worth referring to the considerations set out in paragraph 37 above, according to which the figurative element of the mark applied for is not merely a negligible decorative component, but has a distinctive character and contributes to determining the image of the mark applied for which is retained by the relevant public.

50      Accordingly, in view of those differences, the signs at issue, each considered as a whole, create impressions that are, as a whole, dissimilar overall on the visual level. The mere fact that the two letters ‘a’ and ‘p’ coincide is not sufficient to counterbalance the clear differences between the mark applied for and the earlier word marks APPLE. So far as concerns the comparison between the mark applied for and the earlier word marks, the Board of Appeal found, correctly, in paragraph 13 of the contested decision, that they were not visually similar.

51      In sum, it should nevertheless be held that there is a certain degree of visual similarity between the mark applied for and the earlier figurative mark.

 Phonetic comparison of the signs at issue

52      Regarding the phonetic comparison between the mark applied for and the earlier figurative mark in the shape of an apple, it should be noted that a figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally (judgment of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 46). Even if one were to suppose that, in the case at hand, the earlier figurative mark were easily recognised and designated by the word ‘apple’ in the respective languages of the relevant public (judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 53), that description coincides with the conceptual perception of the marks concerned, examined in paragraphs 65 to 75 below. Consequently, as the Board of Appeal found in paragraph 14 of the contested decision, it is not necessary to examine separately the phonetic perception of the purely figurative marks and to compare them with the phonetic perception of other marks. Moreover, that conclusion is not disputed by the applicant.

53      So far as concerns the phonetic comparison between the mark applied for and the earlier word marks APPLE, the Board of Appeal indicated, also in paragraph 14 of the contested decision, that the mark applied for would be pronounced ‘apo’ or ‘capo’ and was phonetically different from the earlier word marks owing to the fact that their respective endings, namely ‘o’ and ‘ple’, led to very different pronunciations.

54      The applicant, by contrast, takes the view that there is a phonetic similarity between the mark applied for and the earlier word marks APPLE. First, it argues that the first syllable ‘ap’ of the two marks is identical. Second, it submits that, in English, the emphasis will be placed on the first syllable and the second syllable will be ‘swallowed’ due to the absence of a hard consonant at the end of that syllable. Third, the applicant considers that the pronunciation of ‘apo’ and of the word ‘apple’ is very similar and, finally, that the Opposition Division had found that there was a certain degree of phonetic similarity.

55      EUIPO notes, first, that the pronunciation of the earlier word sign APPLE varies according to the rules of the English language or those of the other languages of the members of the relevant public. Second, EUIPO considers that the sign applied for will be pronounced either by pronouncing each of its letters separately or as a single word, depending on the rules of each of the relevant languages. Third, EUIPO submits that the fact that the first two letters of the signs at issue are identical is not sufficient for them to be considered similar. That finding is based on EUIPO’s observations that, first, a part of the relevant public will pronounce ‘apo’ by pronouncing each of the letters separately, given that that element of the mark applied for is composed of only three letters and has no clear meaning in the majority of the relevant languages, and that, second, the pronunciation of the remaining letters making up the marks at issue would make the overall phonetic impression quite different, notwithstanding the relevant language. Fourth, EUIPO argues that the phonetic dissimilarity between the signs at issue would be even greater if the figurative element of the contested sign were perceived as a stylised capital ‘C’.

56      In the first place, regarding the pronunciation of the earlier word marks, it should be stated that, in view of the fact that the word ‘apple’ is part of basic English vocabulary, the relevant public will pronounce it according to the rules of that language, namely in two syllables ‘app’ and ‘le’. Moreover, the word stress will be placed on the first syllable ‘app’ and the second syllable will be swallowed.

57      In the second place, regarding the overall impression created by the mark applied for on the phonetic level, it should be noted, first of all, that the considerations set out in paragraph 31 above contradict EUIPO’s contention that the figurative element of the mark applied for is a stylised representation of a letter and will be pronounced like a ‘c’.

58      Furthermore, it is apparent from the case-law that, if a figurative mark also includes a word element, in general it will be through the use of that word element that the relevant public will refer to the mark (judgment of 7 May 2015, GELENKGOLD, T‑599/13, EU:T:2015:262, paragraph 53). It follows that, in the case at hand, the relevant public will refer to the mark applied for by pronouncing its word element, namely ‘apo’.

59      In that context, it should be noted that there are multiple possible ways of pronouncing the word element ‘apo’. It is possible to pronounce it, as the applicant submits, in two syllables: ‘ap’ and ‘o’. This requires, first, that the word element be read as a single word and, second, that it be, according to the relevant linguistic rules, pronounced in those syllables. However, it is also conceivable, as EUIPO argues, that the word element will be read as an abbreviation and each of the letters of the word element will be pronounced separately, namely ‘a’, ‘p’, ‘o’, or that the relevant pronunciation rules will result in a pronunciation in two syllables ‘a’ and ‘po’.

60      In the third place, regarding the comparison between the word elements ‘apo’ and ‘apple’, it should be noted that, if the letters of the word element of the mark applied for are pronounced separately, this will result in a completely different rhythm and sound. Consequently, in this case, the signs at issue will seem phonetically different. That conclusion also holds good where the relevant pronunciation rules result in a pronunciation of the word element in two syllables: ‘a’ and ‘po’.

61      The conclusion will be otherwise if the word element is pronounced in two syllables: ‘ap’ and ‘o’.

62      In that regard, it should be pointed out, first, that EUIPO does not deny the possibility that the word element might be pronounced as a single two-syllable word and not as the abbreviation ‘a’, ‘p’, ‘o’. Nor is it ruled out by the fact that the word element ‘apo’ has only three letters and does not have any clear meaning. On the contrary, that scenario is very probable given that the relevant public will have no problem in pronouncing ‘a’, ‘p’ and ‘o’ as a single word. Second, where the rules of English pronunciation apply, the element ‘apo’ will, as the applicant suggests, be pronounced in two syllables: ‘ap’ and ‘o’. Moreover, in English, the emphasis will be placed on the first syllable ‘ap’ and the second syllable will be swallowed due to the absence of a hard consonant at the end of that second syllable.

63      In that case, as the applicant notes, the pronunciation of the first syllable of the word ‘apo’ will be the same as that of the first syllable of the word ‘apple’. In addition, the word elements coincide in that they consist of two syllables, and by the fact that the first syllable will be stressed, whereas the second syllable will be swallowed. The result is a comparable rhythm and sound. It is, admittedly, true, as EUIPO maintains, that the endings of the word elements, namely ‘o’ and ‘ple’, are different. However, on the phonetic level and in view of the rules on stress referred to, that difference is slight and cannot counterbalance the phonetic similarity which follows from the other abovementioned factors.

64      Accordingly, there will be, at least for a significant part of the relevant public, a certain degree of phonetic similarity between the mark applied for and the earlier word marks. In those circumstances, the Board of Appeal’s assessment, in paragraph 14 of the contested decision, that there is no phonetic similarity cannot be endorsed.

 Conceptual comparison of the signs at issue

65      On the conceptual level, the Board of Appeal denied, in paragraph 15 of the contested decision, that there was any similarity between the signs at issue. It noted that the earlier marks clearly designated an apple or referred to one, whereas the word element ‘apo’ did not have such a meaning, and that it was not possible to attribute a specific object, with certainty, to the figurative element contained in the mark applied for. In that regard, the Board of Appeal maintains, first, that the ‘c’-shaped line may be perceived as the letter ‘c’, second, that, in order to see the representation of a fruit, the consumer has to make the connection between that line and the ‘y’-shaped feature on top of the letter ‘a’ and, third, that the fruit could be an apple but could also be another fruit, such as an orange.

66      The applicant disputes those findings of the Board of Appeal. In its view, while it may be possible that a person will perceive the figurative element as representing the letter ‘c’, the average consumer will plainly view the figurative element as representing half of an apple. The applicant argues that it must be considered fanciful to perceive the figurative element in the mark applied for as representing the letters ‘c’ and ‘y’ and that the two elements beside and above the letter ‘a’ will be clearly perceived as graphic elements which form an integral part of the outline of an apple. It adds that the figurative element will not be viewed as an orange, either, given that oranges are perfectly round, but that, in any event, the signs at issue show part of a fruit and consequently, as the Opposition Division found, are conceptually similar. Furthermore, the applicant submits that the impression of the concept of an apple is reinforced by the fact that the figurative element appears right next to the group of letters ‘ap’ and that the element ‘apo’ looks, to some extent, like the word ‘apple’.

67      Next, the applicant argues that the trade mark applicant described the mark applied for, in an application to the United States Patent and Trade Mark Office (USPTO), as consisting of ‘half of an apple’.

68      EUIPO rejects those arguments and takes the view that the signs at issue are not conceptually similar. First, EUIPO submits that the word element ‘apo’ does not refer to any type of fruit and, for that reason, proposes that the argument that the first two letters ‘ap’ would reinforce the concept of an apple should be rejected. Second, EUIPO argues that the figurative element will not be immediately perceived as an apple because an oval shape and a stalk with a leaf could characterise a number of other fruits, such as an apricot, a peach or a tangerine. In that context, EUIPO also argues that the relevant public will not examine the signs side by side and that that public’s conceptual perception of the contested sign will therefore not be influenced by that of the earlier signs. Third, EUIPO notes that it cannot be excluded that a relevant part of the public will perceive the figurative element as a stylised capital ‘C’ and consequently associate it with a meaningless concept or a concept completely different from that of an apple. Fourth, EUIPO argues that a general concept, which encompasses any conceivable fruit, is, in any event, too broad for a conclusion that the signs at issue are conceptually similar.

69      In that context, it should be noted that, according to the case-law, a conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (judgment of 8 November 2017, Oakley v EUIPO — Xuebo Ye (Representation of a discontinuous ellipse), T‑754/16, not published, EU:T:2017:786, paragraph 62).

70      In the first place, regarding the earlier figurative mark and the earlier word marks APPLE, it is appropriate to endorse the Board of Appeal’s assessment contained in paragraph 15 of the contested decision, according to which they evoke the concept of an apple. Moreover, that finding is not disputed by the parties.

71      In the second place, concerning the mark applied for, it should be stated, first, that the word element ‘apo’ does not have a meaning, in most languages, for the relevant public. In addition, so far as concerns the languages in which that word exists, namely, for example, Greek (‘from’), Portuguese (‘plough beam’) or Hungarian (‘old man’), the concept conveyed, as the Opposition Division found, is different from that of an apple.

72      Second, with regard to the figurative element of the mark applied for, it is appropriate to recall the considerations set out in paragraph 31 above. It follows that the graphic particularities of the figurative element contradict the proposition that the figurative element would be perceived as the letter ‘c’ by a significant part of the relevant public. Therefore, EUIPO’s observation as to the conceptual difference between the words ‘capo’ and ‘apple’ must also be rejected. Moreover, it follows from those considerations that the average consumer will easily establish, contrary to what the Board of Appeal found in paragraph 15 of the contested decision, a link between the two components of the figurative element in order to see the representation of a fruit. Furthermore, as far as the type of fruit represented is concerned, it should be noted that it is indeed possible that a sign may allow multiple interpretations and that, consequently, the perception of that sign will not be identical for all consumers. However, that has no bearing on the fact that a significant part of the relevant public will see the figurative element as the outline of an apple. Therefore, it should be stated that the figurative element of the mark applied for evokes the concept of an apple.

73      In that context, it should be made clear that that conclusion relating to the conceptual impression created by the figurative element of the mark applied for is not, contrary to what EUIPO suggests, influenced by that of the earlier signs. Nor does it rely on the applicant’s observation that the applicant for the mark applied for described the mark, in an application to the United States Patent and Trade Mark Office, as consisting of ‘half of an apple’. On the contrary, the analysis of the concept evoked by the figurative element is based on the perception of its objective characteristics from the perspective of the relevant public.

74      As regards, third, the overall conceptual impression created by the mark applied for, it should be noted that the absence of conceptual meaning of the word element ‘apo’ is no reason to disregard the existence of a conceptual similarity by reason of the fact that the figurative element of the mark applied for refers to the concept of an apple.

75      It is therefore appropriate to hold that there is a conceptual similarity between the marks at issue, to the extent that all the marks at issue evoke the concept of an apple. It follows that the Board of Appeal’s conclusion, in paragraph 15 of the contested decision, regarding the absence of any conceptual comparison between the signs at issue is erroneous.

76      In the light of all the foregoing considerations, it is necessary to hold that there is, first, a certain degree of visual and conceptual similarity between the mark applied for and the earlier figurative mark and, second, a certain degree of phonetic and conceptual similarity between the mark applied for and the earlier word marks.

77      Accordingly, the Board of Appeal erred in taking the view, in paragraphs 16 and 17 of the contested decision, that the marks at issue were different and in rejecting the opposition based on the grounds for refusal set out in Article 8(1)(b) and (5) of Regulation No 207/2009, without conducting an assessment of the other conditions laid down in that article.

78      Consequently, it is appropriate to uphold the first and second pleas. Given that the Board of Appeal did not, by the contested decision, take a position on the other conditions of the aforementioned grounds for refusal, it is necessary to annul the contested decision in its entirety, without it being necessary to examine the other pleas raised by the applicant.

 Costs

79      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.

80      Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 December 2016 (Case R 698/2016-4);

2.      Orders EUIPO to pay the costs.

Delivered in open court in Luxembourg on 13 September 2018.

*      Language of the case: English.

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