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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

16 January 2018 (*)

(EU trade mark - Opposition proceedings - Application for EU word mark METAPORN - Earlier EU and national word marks META4 and figurative marks meta4 - Relative ground for refusal - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Similarity of the services - Meaning of complementary services - Similarity of the signs - Likelihood of confusion)

In Case T-273/16,

Sun Media Ltd, established in Hong Kong (China), represented by A. Schnider, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

defendant,

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

Meta4 Spain, SA, established in Las Rozas (Spain), represented by I. Temiño Ceniceros, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 March 2016 (Joined Cases R 653/2015-2 and R 674/2015-2) relating to opposition proceedings between Meta4 Spain and Sun Media,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, I.S. Forrester (Rapporteur) and E. Perillo, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 30 May 2016,

having regard to the response of EUIPO lodged at the Court Registry on 11 August 2016,

having regard to the response of the intervener lodged at the Court Registry on 11 August 2016,

further to the hearing on 4 July 2017,

gives the following

Judgment

 Background to the dispute

1        On 16 May 2013, the applicant, Sun Media Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), 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 word sign METAPORN.

3        The services in respect of which registration was sought are, inter alia, in Classes 35, 38, 41 and 42 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 35: ‘Promotional services, limited to the promotion of online third-party offers of adult entertainment, especially images, videos and sound-recordings, on the internet and other computer and communication networks, in particular on a website; promoting such third-party offers especially by public display of hyperlinks, especially of hyperlinks in the form of thumbnails or banners, on the internet and other computer and communication networks, in particular on a website’;

-        Class 38: ‘Enabling computer users to access data of any kind and respective hyperlinks via the internet and other computer and communication networks’;

-        Class 41: ‘Adult entertainment services, especially electronic and online adult entertainment services; public display of adult entertainment content, especially images, videos and sound-recordings, on the internet and other computer and communication networks, in particular on a website; public display of hyperlinks, especially of hyperlinks in the form of thumbnails, to adult entertainment content on the internet and other computer and communication networks, in particular on a website;’

-        Class 42: ‘Hosting adult entertainment content, especially images, videos and sound-recordings, for others, especially on the internet and other computer and communication networks, in particular on a website; Aggregation of adult entertainment content, especially images, videos and sound-recordings, on the internet and other computer and communication networks, in particular on a website; enabling computer users to update, manipulate, modify, organise, store, back up, synchronise, transmit and share data of any kind and respective hyperlinks via the internet and other computer and communication networks’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 122/2013 of 2 July 2013.

5        On 25 September 2013, the intervener, Meta4 Spain SA, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).

6        The opposition was based on the following earlier marks:

-        EU word mark No 8 335 606 META4 filed on 2 June 2009 and registered on 12 January 2010, covering, inter alia, services in Classes 35 and 38 and corresponding, for each of those classes, to the following description:

-        Class 35: ‘Advertising; Business management; Business administration; Office functions; information and advice on human resources and personnel; assistance to businesses relating to human resources organisation and management; payroll preparation and providing external human resource department services; salary data processing, salary calculation, human resource management data processing; retailing in shops and via global computer networks of computer goods and software’;

-        Class 38: ‘Telecommunications; communications by computer terminals, computer-aided transmission of messages and images, electronic mail, information about telecommunications, rental of telecommunications apparatus, radio communications, telephone and telegraphic communications, communications by fibre optic networks, rental of access time to a computer for data processing, rental of access time to a computer database; telecommunications services providing access to information on human resources, transmission of information on internet networks, in particular in the field of human resources, personnel recruitment and job seeking’;

-        EU word mark No 1 262 856 META4 filed on 2 August 1999 and registered on 10 September 2002, covering, inter alia, services in Class 42 and corresponding to the following description: ‘Computer programming; design and upgrading of computer software and computers; computer engineering and consultancy; legal services’;

-        EU figurative mark No 1 669 720 filed on 22 May 2000 and registered on 15 April 2002 covering, inter alia, the services ‘Telecommunications; communication by computer terminals; computer-aided transmission of messages and images; electronic mail; information about telecommunications; rental of telecommunications apparatus; radio broadcasting; communications by telephone, by telegram; communications by optical fibre networks’ in Class 38 and the services ‘Computer rental; leasing access time to a computer for data processing; leasing access time to a computer database; reconstruction of databases; consultancy in the field of computers; computer systems analysis; computer software design and rental; updating of computer software; computer programming’ in Class 42, as reproduced below:

;

-        Spanish word mark No 2 878 485 META4 filed on 2 June 2009 and registered on 13 October 2009, covering, inter alia, services in Class 35 and corresponding to the following description: ‘Advertising; business management; business administration; office functions; business organisation and management consulting; business management; business inquiries; arranging of exhibitions for commercial and advertising purposes; payroll preparation and providing external human resource department services; payroll data processing; salary calculation; human resource management data processing; wholesaling, retailing in shops and via global computer networks of computer-related goods and software; subscription to telecommunication services; business advice and information to consumers; human resource consulting; data searches in computerised files for others; computerised-file management; compilation of information from a central computer; systematisation of data in a central computer’;

-        Spanish figurative mark No 2 715 485 filed on 6 June 2006 and registered on 14 November 2006, covering the services ‘Advertising; commercial business management; administration of businesses; office functions; professional business consultancy; business management consulting; business organisation and management consulting; business inquiries; arranging of exhibitions for commercial or advertising purposes; retailing in shops and via global computer networks of computer software, hardware and computer-related goods; compilation of information from a central computer; systematisation of data on a central computer; data searches in computerised files for others; computerised-file management’ in Class 35 and the services ‘Providing of education; providing of training; entertainment; cultural and sporting activities; arranging and conducting of colloquiums, conferences, congresses, seminars and symposiums; organisation of exhibitions for educational or cultural purposes’ in Class 41, as reproduced below:

;

-        the unregistered Spanish word mark META4, well known in Spain for services corresponding to the following description: ‘Advertising; business management; business administration; office functions; human resource and personnel services, information and advice; assistance to businesses relating to human resources organisation and management; payroll preparation and providing external human resource department services; salary data processing, salary calculation, human resource management data processing; retailing in shops and via global computer networks of computer goods and software’.

7        The grounds relied on in support of the opposition were those laid down in Article 8(1)(b) and (2)(c) of Regulation No 207/2009 (now Article 8(1)(b) and (2) of Regulation 2017/1001).

8        On 4 February 2015, the Opposition Division upheld the opposition in part. It thus refused to register the mark applied for in respect of all the services in Classes 35, 38 and 42. However, it did authorise the registration of the mark applied for in respect of the services in Class 41.

9        On 30 March 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division in so far as it allowed registration of the mark applied for in respect of the services in Class 41 as described in paragraph 3 above.

10      On 3 April 2015 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision in so far as it rejected the mark applied for in respect of all the services in Classes 35, 38 and 42 as described in paragraph 3 above.

11      By decision of 3 March 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal brought by the intervener and dismissed the appeal brought by the applicant. In particular, with regard to the comparison of the services at issue, it found, as the Opposition Division had done, that the contested services in Classes 35 and 38 were identical and that those in Class 42 were similar (contested decision, paragraphs 60, 66, 100 and 101). On the other hand, unlike the Opposition Division, it found that the services in Class 41 of the mark applied for had at least a low degree of similarity to the services in Class 38 of the earlier EU marks registered under numbers 8 335 606 and 1 669 720, due to the complementarity between the entertainment services offered over the internet, including those reserved for adult users, and the telecommunications services (contested decision, paragraphs 87, 90 and 91).

12      Next, the Board of Appeal found that the element ‘meta’ in all of the signs at issue had a normal degree of distinctiveness and would be perceived as meaning ‘goal’ or ‘aim’ by the Spanish-speaking part of the relevant public. It came to that conclusion while stating that it could not exclude the possibility that part of the relevant public, including a part of the relevant Spanish-speaking public, might be able to associate that element with the prefix of Greek origin denoting change, transformation, permutation or substitution, or to understand that element as meaning ‘beyond’, ‘above’ or ‘at a higher level’, which is used in some compound words and in several medical and chemical terms. The Board also stated that it could not exclude the possibility that the part of the relevant public which had sufficient knowledge of the English language might associate the combination of the element in question and the element ‘4’, by virtue of its overall phonetic configuration, with the English term ‘metaphor’, but considered that this possibility could not be extended to the whole of the relevant public, nor to the whole of the relevant Spanish-speaking public who, in essence, would be more likely to pronounce that number in Spanish (contested decision, paragraphs 111, 112 and 128). With regard to the mark applied for, the Board of Appeal found that the element ‘meta’ was dominant as a result of the very weak distinctive character of the element ‘porn’ (contested decision, paragraphs 121 and 123).

13      As regards the comparison of the signs at issue, the Board considered that, on account of the presence of the element ‘meta’ placed at the beginning of each of those signs, they had average visual similarity, some phonetic similarity and some conceptual similarity (contested decision, paragraphs 127, 129 and 131).

14      With regard to the overall assessment of the likelihood of confusion, bearing in mind the identity and similarity of the services concerned, the average degree of visual similarity between the signs at issue, the fact there is some degree of phonetic and conceptual similarity between them and the normal degree of distinctiveness of the earlier marks, the Board of Appeal found that the differences between those signs were not sufficient to offset their similarity and that there was therefore a likelihood of confusion, at least on the part of the Spanish-speaking public (contested decision, paragraphs 143 to 147).

 Forms of order sought

15      The applicant claims that the Court should:

-        annul the contested decision and, consequently, reject the opposition and authorise the registration of the mark applied for;

-        order EUIPO and the intervener to pay the costs, including the costs incurred before the Board of Appeal of EUIPO.

16      EUIPO contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

17      The intervener contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs, including those incurred before EUIPO.

 Procedure and developments during the proceedings

18      By letter lodged at the Court Registry on 8 February 2017, EUIPO informed the Court that it had granted the intervener’s request to add the services ‘Rental of vending machines; auctioneering services; economic forecasting’ in Class 35 to the services covered by the EU word mark No 8 335 606 META4 in accordance with Article 28(8) of Regulation No 207/2009 (now Article 33(8) of Regulation 2017/1001). It took the view, however, that that addition had no effect on the outcome of this case.

 Law

19      In support of the action, the applicant raises three pleas in law, alleging, respectively, infringement of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001), infringement of Article 75 of that regulation (now Article 94 of Regulation 2017/1001), and infringement of the general principles of EU law.

20      It is necessary to start by examining the second plea.

 The second plea in law, alleging infringement of Article 75 of Regulation No 207/2009

21      By its second plea in law, the applicant submits that the Board of Appeal infringed Article 75 of Regulation No 207/2009 by concluding in paragraph 115 of the contested decision, the reasons stated having been inadequate and contradictory, that the element ‘4’ of the EU mark had normal distinctiveness in the earlier EU mark and that the relevant public would probably remember the word element ‘meta’ more easily than the element ‘4’.

22      EUIPO disputes that line of argument.

23      In that regard, it must be recalled that the right to good administration laid down in Article 41 of the Charter of Fundamental Rights, by virtue of paragraph 2(c) of that provision, includes, inter alia, the obligation of the administration to give reasons for its decisions. Article 75 of Regulation No 207/2009 specifically imposes that obligation in relation to decisions adopted by EUIPO. According to settled case-law, that obligation to give reasons has the same scope as that arising from Article 296 TFEU, according to which the reasoning of the author of the measure must be clear and unequivocal, and has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgments of 6 September 2012, Storck v OHIM, C-96/11 P, not published, EU:C:2012:537, paragraph 86 and the case-law cited; of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T-118/06, EU:T:2009:100, paragraph 19 and the case-law cited; and of 17 January 2017, Netguru v EUIPO (NETGURU), T-54/16, not published, EU:T:2017:9, paragraph 14).

24      According to the case-law, the question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see judgments of 2 April 2009, ULTIMATE FIGHTING CHAMPIONSHIP, T-118/06, EU:T:2009:100, paragraph 20 and the case-law cited, and of 13 April 2011, Safariland v OHIM - DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T-262/09, EU:T:2011:171, paragraph 91).

25      In the present case, contrary to what the applicant claims, it is clear that the Board of Appeal’s reasoning in paragraph 115 of the contested decision is not vitiated by any contradiction. In particular, the Board of Appeal was entitled to take the view, without committing any error, on the one hand, that the relevant public will focus on the earlier EU mark as a whole, due to the fact that the elements ‘meta’ and ‘4’ of that mark have the same degree of distinctiveness, while taking the view, on the other, that the element ‘meta’ will have more influence on the overall impression created by that mark than the element ‘4’ which is placed at the end of the mark and to which the relevant public will not attach any particular significance (contested decision, paragraphs 145 to 147).

26      In addition, with regard to the assessment of the similarity between the adult entertainment services in Class 41 of the mark applied for and the telecommunications services in Class 38 of the earlier EU mark, it must be observed that the Board of Appeal provided a sufficient statement of reasons in paragraphs 71 to 91 of the contested decision.

27      Consequently, it must be held that the contested decision contains a statement of reasons consistent with the requirements referred to in paragraphs 23 and 24 above, which made it possible to understand the Board of Appeal’s reasoning and which made it possible for the applicant to prepare its action. The second plea in law must therefore be rejected as unfounded.

 The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

28      The applicant states, in essence, that the Board of Appeal erred in law in confining itself to comparing the mark applied for only with the element ‘meta’ of the earlier marks instead of taking into consideration the overall impression created by those earlier marks. It also states that there is no likelihood of confusion between the signs at issue due to conceptual differences resulting from the perception that the earlier marks refer to the English word ‘metaphor’ and the weak distinctive character of the common element ‘meta’ in those signs. Furthermore, it states that the contested services in Class 41 and the services covered by the earlier marks in Class 38 are not similar.

29      EUIPO and the intervener dispute those arguments.

 The relevant public

30      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM - Altana Pharma (RESPICUR), T-256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

31      In the present case, since the earlier marks include EU marks and two Spanish marks, the Board of Appeal found that the relevant territory for the purposes of assessing the likelihood of confusion was, first, all of the European Union for the earlier EU word mark No 8 335 606 META4 (‘the earlier EU mark’) and the earlier EU figurative mark registered under number 1 669 720 containing the word element ‘meta4’, and secondly, Spain for the earlier Spanish word mark No 2 878 485 META4 and the earlier Spanish figurative mark No 2 715 485 meta4. It also found that the services at issue in Classes 35, 38 and 42 were directed at the public at large and professional consumers whose level of attention varied from average to high, while the services at issue in Class 41 were directed at the general public whose level of attention is average (contested decision, paragraphs 47 and 48). Those findings have not been disputed by the parties.

 Comparison of the services

32      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to 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 the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

33      Complementary services are services which are closely connected in the sense that one is indispensable or important for the use of the other so that consumers may think that the same undertaking is responsible for the provision of those services (see judgment of 2 October 2013, Cartoon Network v OHIM - Boomerang TV (BOOMERANG), T-285/12, not published, EU:T:2013:520, paragraph 26 and the case-law cited).

34      In the present case, the Board of Appeal found that the services concerned were partly identical and partly similar. In particular, it found that the services in Class 41 of the mark applied for had at least a low degree of similarity, both with the broadcasting services and the telecommunications services in Class 38 of the earlier EU marks, as a result of their complementary character.

35      The applicant does not dispute the Board of Appeal’s findings relating to the identical or similar nature of the services in Classes 35, 38 and 42 of the mark applied for. It merely states that the Board of Appeal made an error of assessment by concluding that the adult entertainment services in Class 41 of the mark applied for had at least a low degree of similarity with the telecommunications services in Class 38 of the earlier marks.

36      In that regard, first, it is true that the adult entertainment services in Class 41 of the mark applied for have a different nature and different purpose from those of the services in Class 38 of the earlier EU marks. However, as the Board of Appeal rightly points out in paragraph 78 of the contested decision, that finding is not, in itself, such as to call into question any complementarity between those services (see, to that effect, judgment of 2 October 2013, BOOMERANG, T-285/12, not published, EU:T:2013:520, paragraphs 29 to 35).

37      Secondly, with regard to the complementarity between the adult entertainment services in Class 41 of the mark applied for and the broadcasting services in Class 38 of the earlier EU marks, it should be noted that the Board of Appeal found that those adult entertainment services included the production of films (contested decision, paragraph 79). It also found that the telecommunications services in Class 38 of the earlier EU marks included broadcasting services, including radio and television broadcasting services, and it stated that the earlier EU figurative mark registered under number 1 669 720 expressly covered radio broadcasting services (contested decision, paragraph 76). Although the applicant disputes the conclusion reached by the Board of Appeal in relation to the complementary character of the services at issue and their similarity, it must be observed that it does not dispute the Board’s assessments in paragraphs 76 and 79 of the contested decision in relation to the scope of the services covered by the signs at issue.

38      It has already been held that the production of films in Class 41 had a certain degree of similarity with broadcasting services in Class 38, given their complementary character (see, to that effect, judgment of 2 October 2013, BOOMERANG, T-285/12, not published, EU:T:2013:520, paragraph 35). This is all the more so where, as in the present case, the services in Class 41 of the mark applied for and the broadcasting services in Class 38 of the earlier EU marks have the common feature of being offered in electronic format, in some cases on the internet, to the extent that that common mode of broadcasting is liable to accentuate the similarity between those services (see, to that effect, judgment of 4 June 2014, Free v OHIM - Conradi + Kaiser (FreeLounge), T-161/12, not published, EU:T:2014:350, paragraph 29).

39      In addition, it must be observed, as the Board of Appeal did, that radio and television programmes are currently being broadcast more and more via internet or broad band connections (contested decision, paragraph 80).

40      Thirdly, with regard to the complementarity between the adult entertainment services and the telecommunications services of the earlier EU marks, it must be pointed out, as the Board of Appeal rightly did in paragraph 81 of the contested decision, that the application to register the mark applied for stipulates that the adult entertainment services in Class 41 of the mark applied for are ‘especially’ provided in electronic and online form. Services in Class 41 which, as in the present case, are provided online have already been found to be similar to the services of ‘telecommunications; communications by computer terminals, computer-aided transmission of messages and images’ covered by the earlier EU marks (see, to that effect, judgment of 12 July 2012, Wall v OHIM - Bluepod Media Worldwide (bluepod MEDIA), T-227/11, not published, EU:T:2012:375, paragraphs 44 and 51).

41      It is true that, in the same judgment, the General Court also approved the Board of Appeal’s finding in the case in question that, even if some telecommunications operators provided some entertainment services in Class 41 using specialised subsidiaries, the consumer would not usually expect there to be a link between the supply of those entertainment services and services connected with the transmission of data by computer and data networks (judgment of 12 July 2012, bluepod MEDIA, T-227/11, not published, EU:T:2012:375, paragraph 48).

42      It is nevertheless appropriate to take into account, as the Board of Appeal did, the economic reality on the market as it currently exists in order to ascertain whether the finding of fact in the case which gave rise to the judgment of 12 July 2012, bluepod MEDIA (T-227/11, not published, EU:T:2012:375), still holds true today. It must be observed that that reality is very different from the one which prevailed even a few years ago, in particular as a result of the rapid technological developments that radically changed the manner in which audiovisual entertainment content is consumed. Moreover, whereas, in the past, traditional telecommunications service providers were only occasionally active in developing entertainment content, today they do so regularly, while entertainment companies offer services which, in the past, were the reserve of the telecommunications industries. Indeed, some companies offer packages which provide consumers with both a telecommunications connection and access to entertainment content via that connection. Telecommunications consumers can therefore be led to believe that the entertainment content provided through their internet connection is provided by the same company (contested decision, paragraphs 83 to 86).

43      In the light of all of the foregoing, it must be concluded that the Board of Appeal was correct in finding in paragraph 90 of the contested decision that the adult entertainment services in Class 41 of the mark applied for and the broadcasting and telecommunications services in Class 38 of the earlier EU marks were complementary within the meaning of the case-law referred to in paragraph 33 above and therefore those services had at least a low degree of similarity. Contrary to what the applicant claims, that conclusion does not necessarily extend to all the services in Class 41, but is limited only to the services covered by the mark applied for and which are in that class as a result of the findings relating to the economic reality currently prevailing on the market, characterised by a tendency towards the integration both of the services and of the operators offering those services, as set out in paragraph 39 and 42 above.

 Comparison of the signs at issue

44      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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 that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C-334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

45      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).

46      In the present case, the Board of Appeal found, first, that the element ‘meta’ was dominant in the mark applied for as a result of its position and the low level of distinctiveness of the element ‘porn’. On the other hand, it found that the earlier EU mark did not contain any clearly dominant or negligible elements and that it was therefore the overall impression which had to be taken into consideration. Furthermore, it found that the common element of the signs at issue, ‘meta’, had a normal degree of distinctiveness.

47      Secondly, with regard to the comparison of the signs at issue, the Board of Appeal stated that those signs coincided in that they both had the element ‘meta’ placed at the beginning of the signs, while they were different in that the earlier EU mark had the element ‘4’ and the mark applied for had the element ‘porn’. It found that the relevant public would pay more attention to the beginning of the signs and that the element ‘4’ in the earlier marks would be pronounced ‘cuatro’ by the relevant Spanish-speaking public. Consequently, it found that the signs at issue were similar to an average degree in visual terms and that they were similar to a certain degree in phonetic terms. Conceptually, it found that the signs also had a certain degree of similarity for that part of the relevant public which would perceive the common element ‘meta’ as referring to the prefix of Greek origin denoting change, transformation, permutation, or substitution or as meaning ‘beyond’, ‘above’ or ‘at a higher level’. It also found, however, that it was probable that the relevant public would not perceive any concrete meaning in the signs at issue taken overall.

48      The applicant submits, in essence, first, that the Board of Appeal erred in law in confining itself to comparing the mark applied for only with the element ‘meta’ of the earlier EU mark, instead of taking into consideration the overall impression created by that mark. Secondly, it submits that the relevant public will perceive the earlier EU mark as referring to the term ‘metaphor’ in English as a result of its familiarity with the language known as ‘SMS language’ and its basic knowledge of the English language, and consequently, that the signs at issue have no conceptual similarity. Furthermore, it states that the common element ‘meta’ of the signs at issue will be perceived as a mere prefix with only a weak distinctive character, so that it would not be possible to conclude that there is any similarity between the signs at issue on that basis alone.

-       The appropriateness of the Board of Appeal’s comparison

49      Contrary to what the applicant claims, it must be observed that the Board of Appeal made a comparison of the signs at issue by considering each one as a whole. It is expressly stated in the contested decision that the Board of Appeal did not confine itself to comparing the mark applied for with the sole element ‘meta’ of the earlier EU mark. Thus, it expressly stated that there were differences between the signs at issue as a result of the presence of the element ‘4’ in the earlier EU mark and the element ‘porn’ in the mark applied for, but found that they were not such as to exclude the existence of a similarity between those signs (contested decision, paragraphs 125 to 131). The merits of that finding will be examined below, but at this stage it must be observed that the Board of Appeal based its finding of a similarity between the signs at issue on the overall impression produced by those signs.

-       The dominant and distinctive character of the elements comprising the signs at issue

50      In that respect, first, with regard to the common element ‘meta’ of the signs at issue, it must first of all be observed that it is common ground that that element is a Spanish word meaning ‘goal’ or ‘aim’.

51      It is true that, conceivably, part of the relevant public, including part of the relevant Spanish-speaking public, may be able to associate the common element ‘meta’ of the signs at issue with the prefix of Greek origin denoting change, transformation, permutation or substitution, or to understand that element as meaning ‘beyond’, ‘above’ or ‘at a higher level’, which is used in some compound words and in several medical and chemical terms. However, as the Board of Appeal rightly points out in paragraph 111 of the contested decision, it is less likely that the relevant Spanish-speaking public would perceive that element as referring to that prefix where it is followed, as in the earlier EU mark, with a figure and not a word. The examples put forward by the applicant in order to provide proof of the widespread use of the term ‘meta’ as a prefix are not sufficient to cast doubt on that finding, since they concern only examples of the use of that prefix followed by another word. Therefore the Board of Appeal did not err in law when it considered that the element ‘meta’ will tend to be perceived as meaning ‘goal’ or ‘aim’ by the relevant Spanish-speaking public in the earlier EU mark.

52      In any event, it must be observed that none of the possible meanings of the common element ‘meta’ of the signs at issue is directly or indirectly descriptive of the services concerned and that the Board of Appeal therefore did not err in finding that it possessed a normal distinctive character.

53      Secondly, with regard to the element ‘4’ of the earlier EU mark, it must be observed, as the Board of Appeal did, that it has a normal distinctive character.

54      Thirdly, with regard to the element ‘porn’ of the mark applied for, all of the relevant public will perceive it as referring to pornography. It must therefore be observed, as the Board of Appeal did, that that element possesses a very weak distinctive character for that public and that the common element ‘meta’, due to its more distinctive character and its position at the beginning of the mark applied for, is dominant.

55      In the light of the foregoing, it must be concluded that the Board of Appeal did not err in its assessment of the distinctive and dominant character of the elements making up the signs at issue in paragraphs 122 to 124 of the contested decision.

-       Visual comparison of the signs at issue

56      With regard to the visual comparison of the signs at issue, it must, first of all, be observed that they coincide in that they both have the element ‘meta’ placed at the beginning of the signs, while they are different in that the earlier EU mark has the element ‘4’ and the mark applied for has the element ‘porn’.

57      It must also be recalled, as EUIPO and the intervener rightly contend, that the first component of the word marks is likely to catch the consumer’s attention more than the following components (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM - González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T-183/02 and T-184/02, EU:T:2004:79, paragraph 81, and of 16 March 2005, L’Oréal v OHIM - Revlon (FLEXI AIR), T-112/03, EU:T:2005:102, paragraphs 64 and 65). That is more specifically the case where, as in the present case, the elements placed at the end, in this instance the element ‘4’ in the earlier EU mark and the element ‘porn’ in the mark applied for, are shorter and less likely to attract the consumers’ attention (see, to that effect, judgment of 6 June 2013, Celtipharm v OHIM - Alliance Healthcare France (PHARMASTREET), T-411/12, not published, EU:T:2013:304, paragraph 26).

58      Consequently, the Board of Appeal did not err in concluding that the signs at issue have an average degree of visual similarity in paragraph 127 of the contested decision.

-       Phonetic comparison of the signs at issue

59      With regard to the phonetic comparison of the signs, it must be stated that they coincide in their first two syllables, ‘me’ and ‘ta’, while they are different in that the earlier EU mark has the element ‘4’ and the mark applied for has the element ‘porn’.

60      As with the reasoning relating to visual similarity, it must be observed that the presence of the common element ‘meta’ at the beginning of the signs at issue permits the inference that they have a certain degree of phonetic similarity (see, to that effect, judgment of 6 June 2013, PHARMASTREET, T-411/12, not published, EU:T:2013:304, paragraph 34).

61      Consequently, the Board of Appeal did not err in concluding that the signs at issue had a certain degree of phonetic similarity in paragraph 129 of the contested decision.

-       Conceptual comparison of the signs at issue

62      With regard to the conceptual comparison of the signs at issue, contrary to what the applicant claims, it must be observed, in the first place, that it is unlikely that the earlier EU mark will be perceived as a reference to the English word ‘metaphor’. It is clear that the applicant’s argument is based on the premiss that the element ‘4’ of the earlier EU mark is pronounced by the relevant public in the same way as the word ‘four’ is in English.

63      First, irrespective of its level of knowledge of the English language and of its familiarity with the language known as ‘SMS language’, the relevant Spanish-speaking public will first of all naturally tend to pronounce the element ‘4’ in the same way as the Spanish word ‘cuatro’. That is a fortiori the case when, as in the present case, that element is preceded by a term which has a clear meaning in Spanish. In that regard, as was stated in paragraph 50 above, it is common ground that the element ‘meta’ corresponds to a Spanish-language word meaning ‘goal’ or ‘aim’. Thus, since that public will perceive the latter element as referring to a Spanish word, it is unlikely that it would pronounce the element ‘4’ of the earlier EU mark in the same way as the English word ‘four’.

64      Similarly, even if the relevant Spanish-speaking public perceives the element ‘meta’ as a prefix of Greek origin denoting change, transformation, permutation or substitution, or as meaning ‘beyond’, ‘above’ or ‘at a higher level’, which is used in some compound words and in several medical and chemical terms, it is unlikely that a prefix of Greek origin will cause it to pronounce the element ‘4’ in the same way as the English word ‘four’. Contrary to what the applicant claims, the existence of a certain number of English words beginning with the prefix ‘meta’ is not sufficient to cast doubt on that finding, given that the issue here is only the use of that prefix of Greek origin which is not specific to the English language, something which indeed the applicant accepts when it points out that there are also numerous words beginning with that prefix in Spanish, Greek and German, and which will therefore not automatically cause that public to associate the earlier marks with English words.

65      In that regard, the judgment of 16 January 2014, Aloe Vera of America v OHIM - Detimos (FOREVER) (T-528/11, EU:T:2014:10), which the applicant relies on, does not support its argument. The considerations in paragraph 68 of that judgment are expressly based on the presence of an English word, in the present instance ‘ever’, causing the relevant public to understand the element ‘4’ of the sign 4ever in the language known as ‘SMS language’ and to perceive that sign as meaning ‘forever’. That is not the case here. On the contrary, by analogy with the Court’s reasoning in paragraph 69 of that judgment, it must be concluded that the element ‘4’ of the earlier EU mark will, in the present case, be associated with the Spanish word ‘cuatro’ given that it is preceded by a word from the Spanish language (see, to that effect, judgment of 25 September 2015, August Storck v OHIM (2good), T-366/14, not published, EU:T:2015:697, paragraph 28).

66      Secondly, it must be observed that the word ‘metaphor’ is not a basic or common word in English. This is another difference compared with the cases which gave rise to the judgments of 16 January 2014, FOREVER (T-528/11, EU:T:2014:10), and of 25 September 2015, 2good (T-366/14, not published, EU:T:2015:697). Consequently, even if the relevant Spanish-speaking public had a basic knowledge of English or was familiar with the language known as ‘SMS language’, it is unlikely that a significant part of that public would perceive the earlier EU mark as a reference to that word, when such a perception requires a certain cognitive effort and will not be brought naturally to mind by that public in view of the services referred to. Contrary to what the applicant claims, the existence of the Spanish word ‘metafora’ does not cast doubt on that finding. The fact that that public must go through the association with an English word, even though there is no clear invitation to do so in the earlier EU mark, in order to perceive the reference to a Spanish term shows the cognitive effort required and how unlikely this would be for at least a significant part of the public in question.

67      Thirdly, the applicant’s arguments seeking to establish that the relevant public for the services in Classes 35, 38 and 42, that is to say, professionals and consumers interested in IT, has a basic knowledge of English must be rejected as ineffective. Even if that were the case, which the applicant has not established to the requisite legal standard in its application, that public will not automatically, nor even necessarily, perceive the earlier EU mark as a reference to the term ‘metaphor’ for the reasons set out in paragraphs 62 to 66 above.

68      Consequently, in the light of the foregoing, the Board of Appeal did not err in concluding that, although it was conceivably possible that the part of the relevant public which had sufficient knowledge of the English language might associate the combination of the word element ‘meta’ and the element ‘4’ of the earlier EU mark, by virtue of its overall phonetic configuration, with the English term ‘metaphor’, that possibility cannot be extended to the whole of the Spanish-speaking public who would be more likely to associate the element ‘4’ with the Spanish word ‘cuatro’ (contested decision, paragraph 112).

69      In the second place, it must be recalled that the conceptual similarity of the signs at issue must be assessed on the basis of the evocative force that may be recognised in each of them taken as a whole (see, to that effect, judgment of 17 March 2004, MUNDICOR, T-183/02 and T-184/02, EU:T:2004:79, paragraph 90).

70      In the present case, with regard to the earlier EU mark, although the relevant public will attribute meaning to the element ‘meta’, the element ‘4’ will have no meaning. Therefore, that mark, taken as a whole, will not have any meaning either.

71      Furthermore, with regard to the mark applied for, the relevant public will attribute meaning both to the element ‘meta’, which it will perceive as meaning ‘goal’ or ‘aim’ or as a prefix of Greek origin meaning ‘beyond’, ‘above’ or ‘at a higher level’, and the element ‘porn’, which it will understand as referring to pornography (see paragraphs 50 to 52 and 54 above). Therefore, that mark, taken as a whole, will be perceived by the relevant public as a combination of the concepts set out above, meaning ‘pornography aim’ or ‘beyond pornography’ or ‘pornography at a higher level’, or even ‘pornography grouping’, depending on the meaning given to the element ‘meta’ by the relevant public. In any event, whatever specific meaning is attributed to the mark applied for, taken as a whole, that mark will be understood as alluding to the adult entertainment services at issue.

72      It is clear from the foregoing that the signs at issue are conceptually different, in that only the mark applied for, taken as a whole, will have a meaning attributed to it by the relevant public.

 The likelihood of confusion

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

74      In the present case, the Board of Appeal concluded that there was a likelihood of confusion between the signs at issue. In particular, in view of the identity and similarity of the services concerned, it considered that the differences between those signs arising from the elements ‘4’ of the earlier EU mark and ‘porn’ of the mark applied for were not sufficient to offset an average degree of visual similarity and a certain degree of phonetic and conceptual similarity between those signs taken as a whole. It also considered that, whatever meaning is given to the common element ‘meta’ of those signs, the relevant public would believe that the services concerned come from the same undertaking or from economically linked undertakings and will think that the mark applied for METAPORN is a variation of the earlier marks.

75      The applicant claims, in essence, that the conceptual differences between the signs at issue, arising from the perception that the earlier EU mark refers to the word ‘metaphor’ in English, offset any visual or phonetic similarity between those signs and exclude any likelihood of confusion.

76      EUIPO and the intervener dispute those arguments.

77      In that regard, in the first place, contrary to what the applicant claims, it must be observed that the Board of Appeal did in fact take into account each of the signs at issue as a whole to serve as a basis for its assessment of the existence of a likelihood of confusion in the present case (contested decision, paragraphs 144 and 145).

78      In the second place, it must be observed that the visual and phonetic differences between the signs at issue are not such as to rule out any similarity between those signs as a result of the presence of the element ‘meta’, placed at the beginning of the signs, and the overall impression created by those signs (see paragraphs 56 to 61 above).

79      With regard to the conceptual comparison between the signs at issue, it is apparent from the case-law that the global assessment of the likelihood of confusion implies that conceptual differences between two signs can counteract phonetic and visual similarities between them, provided that at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C-16/06 P, EU:C:2008:739, paragraph 98; see also, to that effect, judgment of 14 October 2003, Phillips-Van Heusen v OHIM - Pash Textilvertrieb und Einzelhandel (BASS), T-292/01, EU:T:2003:264, paragraph 54). However, that is not the situation in the present case.

80      The conceptual difference between the signs at issue resulting from the fact that the mark applied for, taken overall, will have a meaning attributed to it, while the earlier EU mark, taken overall, will not have any meaning attributed to it, is not, however, sufficient to neutralise their phonetic and visual similarities.

81      First, it must be observed that the mark applied for, taken overall, does not have a clear and specific meaning for the purposes of the case-law cited in paragraph 79, but, on the contrary, may be understood in many different ways (see paragraph 71 above).

82      Secondly, it must also be observed that, whatever specific meaning is attributed to the mark applied for, taken overall, it has only a relatively weak distinctive character in that it will be understood as alluding to the adult entertainment services at issue (see paragraph 71 above).

83      Thirdly, it must be observed that the meaning attributed to the mark applied for, taken as a whole, is only the combination of the meaning attributed to each of the two elements making up that mark (see paragraph 71 above) and that the element ‘meta’ is more distinctive and dominant in that mark (see paragraph 54 above). The conceptual difference between the signs at issue set out in paragraph 72 above is therefore substantially diminished by the fact that the most distinctive and dominant element of the mark applied for, that is to say, the element ‘meta’, is also present at the beginning of the earlier EU mark and that it is likely that the relevant public would attribute the same meaning to that element in each of the two signs at issue. That is specifically the case for that part of the relevant public which will perceive the element ‘meta’ as meaning ‘goal’ or ‘aim’ in the mark applied for.

84      Consequently, contrary to what the applicant claims, it must be stated that, for a significant part of the relevant public, those signs do not have any conceptual differences that might offset their similarities.

85      That is all the more so, since the services concerned are in part identical and in part similar (sees paragraphs 35 and 43 above). According to the settled case-law recalled in paragraph 73 above, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of those services.

86      Finally, it should be borne in mind that, according to established case-law, where, as in the present case, one of the earlier marks on which the opposition is founded is an EU trade mark, it is not a requirement of Article 8(1)(b) of Regulation No 207/2009 that, for the mark applied for to be refused registration, the likelihood of confusion must exist in all the Member States and in all the linguistic regions of the European Union. The unitary character of the EU trade mark means that an earlier EU trade mark can be relied on in opposition proceedings against any application for registration of an EU trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the EU (see judgment of 18 September 2012, Scandic Distilleries v OHIM - Bürgerbräu, Röhm & Söhne (BÜRGER), T-460/11, not published, EU:T:2012:432, paragraph 52 and the case-law cited).

87      Accordingly, since the relevant territory is, as is apparent from paragraph 31 above, that of the European Union, the existence of a likelihood of confusion for the Spanish-speaking part of the relevant public, because of the visual, phonetic and conceptual similarity between the signs at issue and the identity or the similarity of the services in question, is sufficient to prevent the registration of the mark applied for.

88      In the light of all of the foregoing, it must therefore be held that the applicant has not shown that the Board of Appeal had erred in any way whatsoever by finding that there was a likelihood of confusion between the signs at issue. The first plea in law must therefore be rejected as unfounded.

 The third plea in law, alleging infringement of the general principles of EU law

89      By its third plea in law, the applicant merely states that the Board of Appeal infringed the general principles of EU law.

90      EUIPO disputes that line of argument.

91      In that regard, it must be recalled that, under Article 21 of the Statute of the Court of Justice of the European Union and Article 76(d) of the Rules of Procedure of the General Court, the application initiating proceedings must contain a brief statement of the pleas in law on which the application is based. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. The application must accordingly specify the nature of the grounds on which the action is based, which means that a mere abstract statement of the grounds does not satisfy the requirements of the Rules of Procedure (see judgment of 11 September 2014, Gold East Paper and Gold Huasheng Paper v Council, T-444/11, EU:T:2014:773, paragraph 93 and the case-law cited). In addition, it has already been held that the abstract reliance on general principles of law, without identifying those principles, does not constitute a summary of the pleas in law for the purposes of Article 21 of the Statute of the Court of Justice of the European Union and Article 76(d) of the Rules of Procedure (order of 8 March 2006, Service station Veger v Commission, T-238/99, not published, EU:T:2006:69, paragraph 30).

92      In the present case, as EUIPO rightly points out, it must be observed that the applicant merely states that the Board of Appeal infringed the general principles of EU law without elaborating any further on its plea. Consequently, the third plea in law must be dismissed as inadmissible and, therefore, the action must be dismissed in its entirety.

 Costs

93      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

94      Furthermore, under Article 190(1) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. On the other hand, it is clear from that same provision that the General Court does not have jurisdiction to adjudicate on the costs relating to the proceedings before the Opposition Division of EUIPO. An application for taxation of such costs must therefore be declared inadmissible.

95      In the present case, since the applicant has been unsuccessful, it must be ordered to pay the costs, including the costs incurred before the Board of Appeal of EUIPO, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Sun Media Ltd to pay the costs.

Delivered in open court in Luxembourg on 16 January 2018.

Registrar      President

*      Language of the case: English.

© European Union
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