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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

28 April 2021 (*)

(EU trade mark – Opposition proceedings – Application for the EU word mark Pandem – Earlier national and international word marks PANDA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

In Case T‑191/20,

FCA Italy SpA, established in Turin (Italy), represented by F. Jacobacci and E. Truffo, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and J. Crespo Carrillo, acting as Agents,

defendant,

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

Christoph Bettag, residing in Aachen (Germany), represented by M. Metzner, A. Hönninger and M. Zeis, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 4 February 2020 (Case R 1483/2019‑5), relating to opposition proceedings between FCA Italy and Mr Bettag,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, M. Kancheva and T. Perišin (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 April 2020,

having regard to the response of EUIPO lodged at the Court Registry on 16 July 2020,

having regard to the response of the intervener lodged at the Court Registry on 3 September 2020,

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

gives the following

Judgment

 Background to the dispute

1        On 6 October 2017, the intervener, Mr Christoph Bettag, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 Pandem.

3        The goods in respect of which registration was sought are in Classes 12, 18 and 25 within the meaning 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 Class 12, to the following description: ‘Windshield wipers [vehicle parts]; parts and fittings for land vehicles; wheels, tyres and continuous tracks’.

4        The trade mark application was published in the European Union Trade Marks Bulletin of 12 October 2017.

5        On 12 January 2018, the applicant, FCA Italy SpA, filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the mark applied for in respect of the goods in Class 12 referred to in paragraph 3 above.

6        The opposition was based on the following earlier marks:

–        Italian mark No 1241401 PANDA, filed on 21 December 2009 and registered on 27 January 2010 in respect of goods in Class 12 corresponding to the following description: ‘Motor vehicles and parts thereof, namely bodies for vehicles and their parts, motors and their parts, clutch mechanisms, brakes and braking equipment, safety belts for passengers of motor-driven vehicles’;

–        international mark designating the European Union No 1031174 PANDA, filed on 27 January 2010 in respect of goods in Class 12 corresponding to the following description: ‘Motor vehicles and parts thereof, namely bodies for vehicles and their parts, motors and their parts, clutch mechanisms, brakes and braking equipment, safety belts for passengers of motor-driven vehicles’.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.

8        On 14 May 2019, the Opposition Division rejected the opposition in respect of all of the contested goods.

9        On 11 July 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.

10      By decision of 4 February 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal, taking the view that there was no likelihood of confusion between the signs at issue. In particular, it found, first, that the relevant public consisted of the public of the European Union as a whole, which displayed a high level of attention for all of the contested goods. Second, the Board of Appeal stated that the goods were identical and similar. Third, the Board of Appeal stated that the signs at issue had a lower than average degree of similarity. As regards visual similarity, it concluded that the signs at issue were similar at most to an average degree. It found that the signs at issue were phonetically similar to a below average degree. The Board of Appeal found that the signs were conceptually dissimilar.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener contends, in essence, that the Court should dismiss the action.

 Law

14      In support of its action, the applicant puts forward six pleas in law, each of which alleges infringement of Article 8(1)(b) of Regulation 2017/1001. The first plea alleges incorrect assessment of the phonetic comparison of the signs at issue. The second plea concerns an incorrect assessment of the conceptual comparison of the marks at issue. The third plea alleges incorrect assessment of the visual comparison of the marks at issue. The fourth plea alleges incorrect assessment of the enhanced distinctiveness of the earlier mark. The fifth plea alleges incorrect assessment of the relevant public. The sixth plea alleges an incorrect overall assessment of the likelihood of confusion. Since those pleas relate to an infringement of Article 8(1)(b) of Regulation 2017/1001, they must be regarded as a single plea in law.

15      EUIPO and the intervener dispute the applicant’s arguments.

16      As set out in Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

17      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

18      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

19      It is in the light of the abovementioned principles that the Court must examine whether the Board of Appeal was correct in finding that there was no likelihood of confusion between the marks at issue in the present case.

 The relevant public

20      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).

21      The Board of Appeal, first, concluded that the relevant public was that of the whole of the European Union. Second, the Board of Appeal did not call into question the Opposition Division’s assessment that the contested goods were aimed at the general public and at business customers with specific professional knowledge or expertise.

22      Those findings of the Board of Appeal, which, moreover, are not disputed by the applicant, must be upheld.

23      In addition, the Board of Appeal found that the relevant public had a high level of attention with regard to all the contested goods, because they consisted of vehicle parts and fittings, which are articles that are not bought on a daily basis with the result that members of the public will dedicate a considerable amount of time to finding the product most suitable for their vehicle, even when purchasing goods such as windscreen wipers and other less expensive parts and fittings.

24      In that regard, the applicant makes the argument, first, that, as regards certain goods in Class 12, such as cars and other land vehicles, the public’s level of attention could be regarded as high, as could also be the case with some of the spare parts and other fittings for cars and other vehicles. However, as regards common spare parts for cars and vehicles, which are often purchased in emergency situations, the level of attention of the relevant public is average, if not below average.

25      Second, the applicant argues that the contested decision is vitiated by a failure to state reasons, since it does not set out any reasoning for the decision to classify the level of attention of the relevant public as high.

26      EUIPO and the intervener dispute the applicant’s arguments.

27      It must be stated, first, that the goods at issue consist, as the Board of Appeal correctly found, of parts and fittings of vehicles, which must correspond to the vehicle for which they are purchased. Those goods are items which the relevant public does not purchase on a daily basis and their purchase requires a considerable amount of time, since that public must ensure that those goods best correspond to the vehicle for which they are purchased, even when they are buying goods such as windscreen wipers or other less expensive parts and fittings. It follows that the level of attention of the relevant public must be considered to be high in respect of all the goods at issue.

28      That conclusion cannot be called into question by the applicant’s argument that, as regards certain ‘common’ spare parts for vehicles, which are very often purchased in emergency situations, the public’s level of attention is average or below average. Apart from the fact that the applicant has not established precisely which parts constitute ‘common’ parts in respect of which the public’s level of attention is below average, or how they are purchased in many instances in emergency situations, it should be noted that, even when purchasing ‘common’ spare parts, the relevant public will devote a certain amount of time to looking for the product best suited to the vehicle for which such parts are intended. Therefore, even in respect of such common spare parts, that public’s level of attention must be considered to be high and the fact that some goods are sometimes purchased in emergency situations cannot justify a lower level of attention on the part of the public.

29      Second, it must be noted that, in paragraph 18 of the contested decision, the Board of Appeal found that the level of attention of the relevant public was high for all of the contested goods, since they consist of vehicle parts and fittings which are not purchased on a daily basis, with the result that members of the relevant public will dedicate a considerable amount of time to looking for the product best suited to their vehicle. Thus, contrary to what the applicant claims, the Board of Appeal did state to the requisite legal standard the reasons for its finding that the level of attention of the public is high, with the result that the contested decision cannot be regarded as lacking in adequate reasoning in that regard.

30      Consequently, the Board of Appeal did not err in finding that the level of attention of the relevant public was high.

 The comparison of the goods

31      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, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned  (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

32      In the present case, the Board of Appeal found that the parts and fittings for land vehicles covered by the mark applied for included the brakes covered by the earlier marks, with the result that those goods were identical.  As for the windscreen wipers, wheels, tyres and continuous tracks covered by the mark applied for, the Board of Appeal found that they were similar to the motor vehicles covered by the earlier marks in that they could be manufactured by the same undertakings, they coincide in distribution channels, they target the same relevant public and are complementary.

33      Those findings of the Board of Appeal, which, moreover, are not disputed by the applicant, must be upheld.

 The comparison of the signs

34      According to case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 23 March 2017, Vignerons de la Méditerranée v EUIPO – Bodegas Grupo Yllera (LE VAL FRANCE), T‑216/16, not published, EU:T:2017:201, paragraph 23 and the case-law cited).

35      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression produced by the marks at issue, taking into account, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

 The visual similarity

36      The Board of Appeal found that none of the signs at issue contained a dominant element, since they were word marks. It found that the signs at issue coincided in their first four letters and differed in their endings and, since the public tends to read from left to right, it is the beginning part of the signs to which the public will pay the most attention. Thus, the Board of Appeal concluded that the signs at issue had, at most, an average degree of visual similarity.

37      The applicant claims that the contested decision runs counter to the settled case-law of EUIPO, of the General Court and of the Court of Justice, and makes reference to certain signs which the General Court and the Court of Justice concluded were visually similar to a high degree. It submits that, in those decisions, it was held that, when comparing short marks, the mere difference of a couple of letters and the absence of a specific font reserved for one or both of the marks was sufficient for there to be a high degree of similarity and, consequently, a high likelihood of confusion.

38      EUIPO and the intervener dispute the applicant’s arguments.

39      It must be noted that the signs at issue coincide in the sequence of letters ‘pand’ and differ in their endings – ‘a’ in the earlier marks and ‘em’ in the mark applied for. The signs thus coincide in their initial part, namely the first four letters out of the five and six of which they are composed. In that regard, it should be noted that, as regards relatively short word signs, as in the present case, the elements at the beginning and the end of the sign are as important as the central elements (see judgment of 16 September 2009, Hipp & Co v OHIM – Laboratorios Ordesa (Bebimil), T‑221/06, not published, EU:T:2009:330, paragraph 47 and the case-law cited). It follows that the relevant public will not disregard any letter of such signs. Thus, taking into account the marks at issue as a whole and, in particular, the differences in their endings, there is an average degree of visual similarity between the marks at issue.

40      That conclusion cannot be called into question by the applicant’s argument that, when comparing short marks, the mere difference in a few letters and the absence of a specific font reserved for one or both marks are sufficient for there to be a high degree of similarity. Indeed, the case-law cited in paragraph 39 above contradicts that argument raised by the applicant.

41      As regards the applicant’s argument that the Board of Appeal’s conclusion runs counter to EUIPO’s decision-making practice and to the case-law of the Court of Justice and of the General Court, it must be noted, first, that the Court of Justice has held that, in the light of the principles of equal treatment and sound administration, EUIPO was required, when examining an application for registration of an EU trade mark, to take into account the decisions already taken in respect of similar applications and to consider with especial care the question whether it should decide in the same way or not (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74).

42      However, it added that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76).

43      Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77).

44      Second, as regards the case-law of the Court of Justice and of the General Court, it must be pointed out that no conclusions can be drawn from the comparison of signs which are different from those at issue in the case at hand (see, to that effect, judgment of 15 July 2020, Itinerant Show Room v EUIPO – Save the Duck (FAKE DUCK), T‑371/19, not published, EU:T:2020:339, paragraph 43). The conclusion drawn in paragraph 39 above also cannot be called into question by the case-law cited by the applicant, since the signs examined in that case-law are different from the signs at issue in the case at hand and therefore no conclusions can be drawn from their comparison in the present case.

45      In those circumstances, the Board of Appeal did not err in finding that the signs at issue were visually similar to at most an average degree.

 The phonetic similarity

46      The Board of Appeal found that the signs at issue coincided in the sound of the sequence of letters ‘pand’ at the beginning of the signs and differed in the sound of their endings ‘a’ and ‘em’, which produce a very different impression. Thus, the Board of Appeal found that, since they had markedly different endings and consisted of only two syllables, the signs at issue were phonetically similar to a below average degree.

47      The applicant argues that the signs at issue have a high or above average degree of phonetic similarity. It claims that the Board of Appeal did not take account of the settled case-law of the Court of Justice or of the General Court concerning phonetic comparison and cites, in that regard, the judgments of 16 January 2014, Aloe Vera of America v OHIM – Detimos (FOREVER) (T‑528/11, EU:T:2014:10); of 14 January 2015, dm-drogerie markt v OHIM – V-Contact Kereskedelmi és Szolgáltató (CAMEA) (T‑195/13, not published, EU:T:2015:6); of 5 May 2015, Skype v OHIM – Sky and Sky IP International (SKYPE) (T‑183/13, not published, EU:T:2015:259); and of 9 February 2017, zero v EUIPO – Hemming (ZIRO), T‑106/16, not published, EU:T:2017:67), and the decision of EUIPO in Cases R‑1071/2009 1 and C‑14311. The applicant is of the view that the departure from the case-law and from EUIPO’s practice is unjustified when two marks that are pronounced relatively in the same way and differ only in a minor part which, moreover, has no direct impact on the pronunciation of those marks are regarded as having a lower than average degree of similarity. In addition, the applicant claims that the contested decision is incorrect in so far as it disregards the very concept of phonetic comparison according to the EUIPO Guidelines.

48      EUIPO and the intervener dispute the applicant’s arguments.

49      It must be noted that the signs at issue coincide in the pronunciation of the first four letters ‘p’, ‘a’, ‘n’ and ‘d’, at the beginning of the words making up those signs. The signs at issue have different endings – ‘a’ and ‘em’, which, contrary to what the applicant submits, are not without a direct impact on the pronunciation of the signs at issue. On the contrary, the last syllables of the signs at issue are completely different in their sound, with the result that their pronunciation produces a very different overall impression. Thus, in view of the markedly different endings and the fact that the marks contain only two syllables, it must be concluded that those signs are phonetically similar to a below average degree.

50      That conclusion cannot be called into question by the applicant’s argument that two marks which are pronounced relatively in the same way and differ only in a minor part, which, moreover, has no direct impact on the pronunciation of those marks, are considered to have a lower than average degree of similarity. As has been held in paragraph 49 above, the signs at issue do not differ in a minor part, but in their markedly different endings which have a direct impact on their pronunciation.

51      As regards the applicant’s arguments that the Board of Appeal departed from its decision-making practice and from the case-law of the Court of Justice and the General Court, it must be borne in mind that it is apparent from the case-law cited in paragraphs 41 to 43 above that the conclusion drawn in paragraph 49 above cannot be called into question by the case-law cited by the applicant, since the signs examined in that case-law are different from the signs at issue in the case at hand and therefore no conclusions can be drawn from their comparison in the present case.

52      In those circumstances, the Board of Appeal was right to find that the signs at issue were phonetically similar to a below average degree.

 The conceptual similarity

53      The Board of Appeal found that the relevant public will associate the term ‘panda’ of the earlier marks with a black and white bear native to south east China and that that word will be understood in all the official languages in the relevant territory. It found that the mark applied for would be devoid of meaning in all the relevant languages. It thus concluded that the signs at issue were conceptually different.

54      The applicant claims that the signs at issue are highly similar. In that regard, first, the applicant maintains that the contested decision is incorrect and contrary to the case-law of the Court of Justice and the General Court. It cites in that regard the judgment of 27 June 2019, Sandrone v EUIPO – J. García Carrión (Luciano Sandrone) (T‑268/18, EU:T:2019:452, paragraph 84), according to which conceptual similarity means that the signs at issue convey analogous semantic content. Therefore, according to the applicant, in order to carry out a conceptual comparison of two marks in order to determine the likelihood of conceptual confusion, it is necessary to define the semantic field in which the two marks at issue live and exist. The applicant considers that the Board of Appeal did not define the semantic field to which each of the signs at issue should belong and that it took for granted that the word ‘pandem’ had no meaning and, above all, that it did not belong to any semantic field.

55      Second, the applicant claims that it is necessary to define the scope of the earlier mark. It submits in that regard a table showing the translation of the word ‘panda’ into a number of EU official languages.

56      Third, the applicant claims that, to deepen the conceptual comparison of the signs at issue, it should be borne in mind that the two parties to the proceedings are based in Italy and Germany, therefore Italian and German must be considered as a first level of comparison. The applicant considers that it is well known throughout the European Union that adjectives and nouns decline in accordance with German grammar rules, so that the average consumer in the European Union, and certainly the average consumer in Italy and in Germany, is fully aware of the fact that German grammar includes declensions. Accordingly, to define the semantic field in which the word ‘pandem’ originated, it is necessary, according to the applicant, to take account of the fact that the mother tongue of the intervener is German. The applicant submits that the word ‘pandem’ is the declension of the word ‘panda’ in the dative, with the result that that word has the meaning of ‘for panda, intended to panda, to panda, in favour of panda’. Thus, since the mark applied for covers parts and other accessories for cars, there is a strong conceptual similarity between the signs at issue.

57      Fourth, the applicant asserts that, in order to determine whether two marks convey a similar concept, it is necessary to define the target audience; however, the Board of Appeal did not properly define the relevant market. The applicant states that, according to the settled case-law of the General Court and of the Court of Justice, the target audience is not the whole population of the European Union, but the potential customers for the goods covered by the signs at issue. The applicant claims that, in the present case, the target audience of the signs at issue is rather identical, since the goods covered by those signs are identical. The Board of Appeal should therefore have carried out a specific comparison of the signs at issue taking into account the particular group consisting in the persons interested in buying spare parts and accessories for cars. In that regard, the applicant points out that the earlier marks have enhanced distinctiveness within the European Union as a result of over 30 years of constant, continuous and uninterrupted use, with the result that they will immediately be associated, by any person interested in buying spare parts or other accessories for cars, with the Panda car manufactured by the applicant. The applicant submits that the Panda car went on sale in 1980 and, since then, it has achieved a large number of sales and was ranked among the best selling cars in Europe and in Italy.

58      EUIPO and the intervener dispute the applicant’s arguments.

59      It must be held, in the first place, that the relevant public will understand the word ‘panda’ of the earlier marks as referring to a black and white bear native to south east China, as the Board of Appeal found, without being contradicted by the applicant. That meaning is, from the point of view of the relevant public, a clear, specific meaning which can be grasped immediately by that public.

60      In the second place, it must be held, first, as was correctly pointed out by the Board of Appeal, that the word ‘pandem’, in itself, has no meaning in any of the languages of the European Union. In that regard, it should be noted that, as EUIPO states, the semantic content is defined in accordance with the meaning of the word as defined by the dictionary or encyclopaedia. In the present case, the word ‘pandem’ does not appear in any dictionary. Second, as EUIPO points out, it cannot be accepted that it is well known throughout the European Union that adjectives and nouns decline in accordance with German grammar rules. Third, the fact that the parties to the present case are based in Italy and Germany cannot have an impact on the semantic content of the signs at issue. Fourth, as the intervener rightly submits, the word ‘pandem’ is not the declension of the word ‘panda’ in the dative in German. The applicant’s assertion that the word ‘pandem’ is a declension of the word ‘panda’ must therefore be rejected.

61      In the third place, it must be held that, contrary to what the applicant submits, the Board of Appeal did define the semantic field of the marks at issue. The Board of Appeal defined the word ‘panda’ of the earlier marks as referring to a black and white bear native to south east China. It also defined the semantic field of the mark applied for, finding that it had no meaning in any of the relevant languages.

62      It must therefore be concluded that there is no conceptual similarity between the signs at issue. Accordingly, the principle referred to by the Court in paragraph 84 of the judgment of 27 June 2019, Luciano Sandrone (T‑268/18, EU:T:2019:452), cited by the applicant, according to which conceptual similarity implies that the signs at issue convey analogous semantic content, cannot apply in the present case.

63      That conclusion cannot be called into question by the applicant’s argument that the Board of Appeal did not define the target audience of the goods at issue for the purpose of assessing conceptual similarity, but merely referred to the entire population of the European Union. It must be pointed out that the applicant has not demonstrated how the earlier marks or the mark applied for have a different meaning or a meaning depending on the sector of the relevant public taken into account, respectively.

64      Therefore, the Board of Appeal rightly concluded that the signs at issue were conceptually different.

 The likelihood of confusion

65      In the present case, the Board of Appeal found that there was no likelihood of confusion between the marks at issue.

66      First, the Board of Appeal held that the earlier marks had a high degree of distinctiveness with regard to motor vehicles in the European Union.

67      Second, it found that the visual and phonetic similarities between the signs at issue were counteracted by their conceptual differences, based on the overall impression created by those signs, given that the earlier marks made a clear reference to a black and white bear originating from south east China, which would be understood in all the languages of the European Union, whereas the mark applied for is not associated with any meaning in the relevant territory.

68      Third, the Board of Appeal found that there was nothing to support the assertion that the goods at issue rely on a visual and/or phonetic inspection to the extent that the visual and phonetic similarities between the signs override that conceptual difference between them.

69      Fourth, the Board of Appeal found that the conceptual difference between the signs, together with the effect of the difference introduced by the differing endings, overrode the fact that the goods were identical and similar and that some consumers, namely the general public, will be likely to have an imperfect recollection. Thus, having regard to the average degree of visual similarity, the below average degree of phonetic similarity and the capacity of the conceptual aspect to neutralise the visual and phonetic resemblances, as well as the public’s high degree of attention, the Board concluded that consumers of the goods in question were not likely to believe that the goods came from the same undertaking or from undertakings which are economically linked.

70      Therefore, notwithstanding the fact that the goods at issue are identical and similar, in addition to the fact that the earlier marks had enhanced distinctiveness as a result of their use on the market, the Board of Appeal concluded that, in view of the relevant public’s high level of attention, there was no likelihood of confusion between the signs at issue.

71      The applicant claims that it is not possible for the unproven conceptual difference between the signs at issue to counteract the visual and phonetic similarities. In that regard, it submits that the components of an appropriate comparison of the signs at issue are (i) the fact that the goods are identical, (ii) the fact that the relevant public is identical, (iii) the fact that the earlier mark has enhanced distinctiveness, (iv) the phonetic and visual similarity and, (v) the conceptual similarity. According to the applicant, those factors should have led the Board of Appeal to conclude that there was a likelihood of confusion between the signs at issue.

72      The applicant adds that the Board of Appeal disregarded the fact that the earlier mark had enhanced distinctiveness. It considers that that enhanced distinctive character is of direct and paramount importance in the global assessment of the likelihood of confusion and, as a result, it is not sufficient to introduce small changes in order to avoid any likelihood of confusion.

73      EUIPO and the intervener dispute the applicant’s arguments.

74      In that regard, as was noted in paragraph 17 above, according to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. In accordance with that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the case (see judgment of 30 June 2015, La Rioja Alta v OHIM – Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 68 and the case-law cited).

75      A global assessment of the likelihood of confusion implies some interdependence between the factors assessed 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 covered 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).

76      For the purposes of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on an imperfect recollection of them. 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 (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

77      It must be borne in mind that, in accordance with the case-law of the Court of Justice, the global assessment of the likelihood of confusion implies that conceptual differences between the signs at issue may counteract phonetic and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning so that that public is capable of grasping it immediately (see judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 74 and the case-law cited). However, it should be noted that that consideration is intrinsically linked to the exceptional case in which at least one of the signs at issue has, from the perspective of the relevant public, a clear and specific meaning which can be grasped immediately by that public (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 75).

78      In the present case, as stated in paragraph 59 above, the earlier marks have, from the point of view of the relevant public, a clear, specific meaning which can be grasped immediately by that public, whereas the sign applied for has no meaning, as was held in paragraph 60 above. Accordingly, the signs at issue are conceptually dissimilar (see paragraph 64 above).

79      Therefore, it must be held that, in accordance with the case-law referred to in paragraph 77 above, the conceptual difference between the signs at issue counteracts the phonetic and visual similarities between those two signs. Accordingly, on account of the conceptual difference and despite the lower than average degree of phonetic similarity and the average degree of visual similarity, the relevant public, which has a high level of attention, is not likely to consider that the signs at issue originate from the same undertaking or from economically linked undertakings, despite the enhanced distinctiveness of the earlier marks. The distinctive character of the earlier marks, which is not disputed by the parties, cannot affect the fact that the signs at issue are conceptually different.

80      As regards the applicant’s argument that the Board of Appeal disregarded the enhanced distinctiveness of the earlier marks, it must be stated that that feature was expressly taken into account by the Board of Appeal in paragraphs 44 and 52 of the contested decision, in which it found that the earlier marks had a high degree of distinctiveness with regard to motor vehicles in the European Union and that that finding had no bearing on the conclusion that there was no likelihood of confusion between the marks at issue.

81      The single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must therefore be rejected and the action must accordingly be dismissed in its entirety.

 Costs

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

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders FCA Italy SpA to pay the costs.

Delivered in open court in Luxembourg on 28 April 2021.

*      Language of the case: English.

© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.