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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

5 May 2021 (*)

(EU trade mark – Opposition proceedings – Application for EU word mark âme – Earlier international figurative mark AMEN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Counteraction of visual and phonetic similarities through conceptual differences – Conditions for counteraction)

In Case T‑442/20,

Isaline Grangé, residing in Edegem (Belgium),

Alizée Van Strydonck, residing in Strombeek-Bever (Belgium),

represented by M. De Vroey, lawyer,

applicants,

v

European Union Intellectual Property Office (EUIPO), represented by P. Villani and V. Ruzek, acting as Agents,

defendant,

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

Nema Srl, established in San Lazzaro di Savena (Italy),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 June 2020 (Case R 2960/2019-4), relating to opposition proceedings between Nema, on the one hand, and Ms Grangé and Ms Van Strydonck, on the other,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, Z. Csehi (Rapporteur) and G. Steinfatt, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 July 2020,

having regard to the response lodged at the Court Registry on 25 November 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 3 May 2018, the applicants, Ms Isaline Grangé and Ms Alizée Van Strydonck, 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 âme.

3        The goods in respect of which registration was sought are in Classes 18 and 25 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 18: ‘Leather and imitation leather; handbags, sport bags, bags for campers, travelling handbags, beach bags, school cases and bags; purses; wallets; backpacks; pouch bags; business card cases; credit card cases (pocket wallets); key cases; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walkingsticks’;

–        Class 25: ‘Clothing, footwear, headgear; belts, suspenders, neckties’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 94/2018 of 22 May 2018.

5        On 21 August 2018, Nema Srl 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 referred to in paragraph 3 above.

6        The opposition was based on the international registration designating the European Union of the figurative mark AMEN, registered on 22 June 2016 under number 1334318, reproduced below:

7        The earlier trade mark is registered for goods in Classes 18 and 25, within the meaning of the Nice Agreement, and correspond to the following description:

–        Class 18: ‘Clothing for pets; umbrella rings; saddle trees; saddlery; key cases; fastenings for saddles; shoulder belts [straps] of leather; harness for animals; mountaineering sticks; walking sticks; trunks [luggage]; travelling trunks; bags; beach bags; shopping bags; wheeled shopping bags; tool bags, empty; purses; handbags; travelling sets [leatherware]; bridles [harness]; bridoons; gut for making sausages; straps for soldiers’ equipment; kid; game bags [hunting accessories]; school satchels; leatherboard; cases of leather or leatherboard; halters; girths of leather; collars for animals; horse blankets; leather laces; straps of leather [saddlery]; harness straps; straps for skates; leather, unworked or semi-worked; leather thread; moleskin [imitation of leather]; umbrella covers; whips; knee-pads for horses; pads for horse saddles; trimmings of leather for furniture; harness fittings; leather leashes; walking stick handles; suitcase handles; slings for carrying infants; pouch baby carriers; cat o’ nine tails; bits for animals [harness]; muzzles; parasols; umbrellas; animal skins; curried skins; fur; parts of rubber for stirrups; business card cases; card cases [notecases]; pocket wallets; music cases; reins; net bags for shopping; furniture coverings of leather; haversacks; bags for campers; bags for climbers; boxes of vulcanised fibre; butts [parts of hides]; riding saddles; saddlecloths for horses; stirrups; stirrup leathers; umbrella or parasol ribs; luggage tags; frames for umbrellas or parasols; traces [harness]; valises; suitcases; attaché cases; valves of leather; rucksacks; umbrella sticks; vanity cases, not fitted; sling bags for carrying infants; bags for sports; chain mesh purses; briefcases; horse collars; leather straps; horseshoes; casings, of leather, for springs; covers for horse saddles; imitation leather; umbrella handles; chin straps, of leather; blinkers [harness]; cattle skins; chamois leather, other than for cleaning purposes; goldbeaters’ skin; credit card cases [wallets]; randsels [Japanese school satchels]; nose bags [feed bags]; bags [envelopes, pouches] of leather, for packaging; travelling bags; boxes of leather or leatherboard; hat boxes of leather; walking stick seats; handbag frames; garment bags for travel’;

–        Class 25: ‘Waterproof clothing; clothing of imitations of leather; clothing of leather; motorists’ clothing; cyclists’ clothing; clothing for gymnastics; dresses; suits; jumper dresses; non-slipping devices for footwear; bandanas [neckerchiefs]; bibs, not of paper; caps [headwear]; berets; underwear; boas [necklets]; braces for clothing [suspenders]; corsets [underclothing]; skull caps; footwear; boots for sports; stockings; sweat-absorbent stockings; socks; breeches for wear; bathing trunks; albs; shirts; short-sleeve shirts; bodices [lingerie]; hats; top hats; coats; hoods [clothing]; chasubles; belts [clothing]; tights; collars [clothing]; detachable collars; camisoles; layettes [clothing]; corselets; masquerade costumes; beach clothes; neckties; ascots; bathing caps; shower caps; panties; pocket squares; fittings of metal for footwear; scarfs; gabardines [clothing]; boot uppers; gaiters; jackets [clothing]; garters; stuff jackets [clothing]; skirts; overalls; aprons [clothing]; girdles; gloves [clothing]; ski gloves; welts for footwear; paper clothing; knitwear [clothing]; jerseys [clothing]; leggings [leg warmers]; leggings [trousers]; liveries; sports jerseys; hosiery; sweaters; muffs [clothing]; maniples; pelerines; mantillas; sleep masks; skorts; boxer shorts; underpants; wet suits for water-skiing; vests; trousers; slippers; ear muffs [clothing]; parkas; pelisses; shirt yokes; pajamas (Am.); ponchos; stocking suspenders; sock suspenders; brassieres; heelpieces for stockings; sandals; saris; sarongs; neck scarfs [mufflers]; footmuffs, not electrically heated; shoes; bath slippers; gymnastic shoes; football boots; sports shoes; shawls; sashes for wear; inner soles; overcoats; outerclothing; dress shields; petticoats; trouser straps; slips [undergarments]; shirt fronts; half-boots; lace boots; boots; fur stoles; soles for footwear; studs for football boots; heels; heelpieces for footwear; pockets for clothing; tee-shirts; togas; footwear uppers; ankle boots; turbans; combinations [clothing]; uniforms; valenki [felted boots]; veils [clothing]; dressing gowns; visors [headwear]; cap peaks; wooden shoes; bath robes; clothing; sweat-absorbent underwear; teddies [undergarments]; galoshes; sweat-absorbent socks; sports singlets; paper hats [clothing]; hat frames [skeletons]; money belts [clothing]; headgear for wear; bathing suits; headbands [clothing]; ready-made linings [parts of clothing]; fishing vests; mittens; ready-made clothing; miters [hats]; babies’ pants [underwear]; furs [clothing]; cuffs; tips for footwear; bath sandals; esparto shoes or sandals; beach shoes; ski boots; wimples’.

8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.

9        On 25 October 2019, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion.

10      On 23 December 2019, Nema filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

11      By decision of 4 June 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division and rejected the application for registration on the ground that there was a likelihood of confusion. In particular, it found, first, that the relevant public was the German-, Slovak- and Czech-speaking part of the public. According to the Board of Appeal, the goods at issue were aimed mainly at the general public and some of the goods in Class 18, namely leather and imitation leather, were also intended for the professional public. It found that the level of attention was average, both for the general public and for the professional public. Second, the Board of Appeal found that the goods in question and those covered by the earlier mark were identical. Third, the marks at issue were found to be visually and phonetically similar to an average degree. Fourth, as regards the conceptual comparison, according to the Board of Appeal, the mark applied for had no meaning for the relevant public.  The Board of Appeal found that the earlier mark would be perceived by the relevant public as ‘amen’. In that regard, the Board of Appeal stated, on the one hand, that that word, unless it is placed in conjunction with other text, such as a prayer, does not in itself convey any concept or meaning. On the other hand, according to the Board of Appeal, the concept conveyed by the earlier mark is rather abstract, to such a degree that it is liable to escape the attention of the consumer and, furthermore, is without any relation to the goods at issue. Consequently, it was not possible to carry out a conceptual comparison and the conceptual aspect remained neutral as regards the result of the similarity between the marks at issue. Fifth, the Board of Appeal found that even if the word ‘amen’ were meaningful, since the concept conveyed by the earlier mark is so abstract that it is liable to escape the consumer’s attention, any difference in meaning between the marks at issue cannot outweigh the visual and phonetic similarities of those marks. The Board of Appeal concluded that, in view of the average degree of visual and phonetic similarity, the average degree of distinctiveness of the earlier mark and the identity of the goods in question, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between the mark applied for and the earlier mark.

 Forms of order sought

12      The applicants claim that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicants to pay the costs.

 Law

14      In support of their action, the applicants rely on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

15      First, the applicants dispute, in essence, the Board of Appeal’s finding that the marks at issue are visually and phonetically similar to an average degree. Second, as regards the conceptual comparison, the applicants claim that the Board of Appeal wrongly denied the clear and specific meaning of the word ‘amen’. Third, the applicants submit that, in the context of the global assessment, the Board of Appeal incorrectly disregarded the case-law relating to the counteraction of visual and phonetic similarities through conceptual differences.

16      EUIPO disputes the applicants’ arguments.

17      Under Article 196(1) of Regulation 2017/1001, an international registration designating the European Union is subject to opposition in the same way as published EU trade mark applications.

18      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iv) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

19      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).

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

21      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).

22      It is in the light of those considerations that it is necessary to assess 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

23      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).

24      In that regard, the Board of Appeal found, in paragraphs 13, 17 and 18 of the contested decision, that the goods at issue were aimed at the general public as well as at the professional public, whose level of attention was average, and that it was necessary to analyse whether there was a likelihood of confusion on the basis of the perception of the German-, Slovak- and Czech-speaking part of the public.

25      It should be noted that the Board of Appeal’s reasoning in relation to the relevant public has not been challenged by the applicants in the present action. Thus, it is appropriate to take that reasoning into account in the assessment of the likelihood of confusion, particularly as there is nothing in the file to call it into question.

 The comparison of the goods

26      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, in particular, 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 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).

27      The Board of Appeal found, in paragraphs 22 and 25 of the contested decision, that all the goods at issue, in Class 18 and Class 25 respectively, were identical to the earlier goods in those classes.

28      Since the Board of Appeal’s reasoning relating to the identity of the goods at issue has not been disputed by the applicants in the present proceedings, it is appropriate to take that reasoning into account in the assessment of the likelihood of confusion, particularly as there is nothing in the file to call it into question.

 The comparison of the signs

29      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 given by the signs, bearing in mind, 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 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).

30      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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). 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).

31      The Board of Appeal found, in essence, in paragraphs 35 to 46 of the contested decision, that the marks at issue had an average degree of visual and phonetic similarity and that the conceptual aspect had no bearing on the similarity of the marks (that is to say, was neutral in relation to the result) since the two marks at issue had no meaning.

32      The applicants dispute each of those assessments, which EUIPO, for its part, claims to be well founded.

 The visual similarity

33      In paragraphs 33 and 35 to 41 of the contested decision, the Board of Appeal found, in essence, that the marks at issue are visually similar to an average degree, since their visual perception is almost entirely determined by the letters of which they consist. First, the marks at issue share the sequence of the first three letters and the difference linked to the last letter ‘n’, present in the earlier mark only, is diminished by the position of that letter at the end of the mark and by the fact that consumers generally pay more attention to the beginning of a mark. Second, by contrast, the additional graphic elements have, as found by the Board of Appeal, only a limited impact on the perception of the relevant public: (i) according to the Board of Appeal, the circumflex accent on the first letter ‘a’ of the mark applied for is not known by the German, Slovak and Czech public and will simply be perceived as an accent without any particular influence on the meaning or pronunciation of the word; (ii) the Board of Appeal found that the graphic elements of rhombuses in the earlier mark serve either as simple punctuation marks or as decorative elements and the slight stylisation of that mark will not be associated by the relevant public with any particular meaning or function capable of indicating the commercial origin of the goods at issue. Third, the Board of Appeal stated that the word elements have a greater impact on consumers than figurative elements, given that the public remembers them more easily and use them to identify the sign. In the light of the dominance of the word elements, and since the earlier mark must be assessed as a whole, the Board of Appeal considered that it would be unnatural to break it down into ‘a’ and ‘men’.

34      The applicants submit that the Board of Appeal did not properly take into account the visual impact of the graphic elements. First of all, according to the applicants, the fact that the circumflex accent is unknown to the German, Slovak and Czech public makes it more striking and noticeable in particular, first, in view of the fact that it is placed on the first letter, which draws the consumer’s attention and, second, in view of the short length of the mark applied for. Next, the applicants submit that the purpose of the rhombuses in the earlier mark is to split that mark visually by separating the word elements ‘a’ and ‘men’, since the word element ‘men’ has a clear meaning linked to men’s clothing. Lastly, the applicants claim that the Board of Appeal did not take account of the short length of the mark applied for, which, in their view, enables consumers easily to perceive the differences between the marks. The applicants refer, in that regard, to previous decisions of the Boards of Appeal and the Opposition Division and also cite the judgment of 3 April 2014, Debonair Trading Internacional v OHIM – Ibercosmetica (SÔ :UNIC) (T‑356/12, not published, EU:T:2014:178), to corroborate their claim that the circumflex accent is particularly striking and noticeable, especially in view of the fact that it is placed on the first letter.

35      EUIPO disputes the applicants’ arguments. It concurs with the findings set out in the contested decision  and maintains that, where two marks at issue consist of three and four letters respectively, the presence of an additional letter is not sufficient to preclude the visual similarity resulting from the sequence of letters which those marks have in common. As regards the previous decisions cited by the applicants, EUIPO adds that, apart from the fact that it is not bound by its previous decisions, those decisions are not analogous to the present case, given the different factual context of each dispute, a consideration which also applies to the judgment of 3 April 2014, SÔ :UNIC (T‑356/12, not published, EU:T:2014:178), cited by the applicants.

36      As regards the visual comparison, it must be pointed out, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

37      It should be noted that the Board of Appeal was fully entitled to find that there was an average degree of visual similarity between the marks at issue. In fact, those marks have three of the four letters in common, namely the first three letters ‘a’, ‘m’ and ‘e’, and are distinguished by the additional fourth letter ‘n’ at the end of the earlier mark. In that regard, it must be borne in mind that it has been held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited). Despite the fact that the marks at issue are short, the visual difference resulting from one letter is slight and not such as to counteract the similarity resulting from the fact that three of the four letters are identical.

38      Furthermore, the Board of Appeal was entitled to find, in paragraphs 36 and 39 of the contested decision, that the visual perception of the marks at issue was almost entirely determined by the letters of which they were composed, the additional graphic elements having only a limited impact on the perception of the relevant public. The same applies in the light of the fact that where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 2 June 2016, Staywell Hospitality Group and Sheraton International IP v EUIPO – Sheraton International IP and Staywell Hospitality Group (PARK REGIS), T‑510/14 et T‑536/14, not published, EU:T:2016:333, paragraph 75 and the case-law cited).

39      That conclusion is not affected by the applicants’ arguments. In concluding that the marks at issue were visually similar, the Board of Appeal did not disregard the graphic elements in the overall visual comparison of those marks.

40      In that respect, first, the Board of Appeal noted that the circumflex accent, which is not known to the German, Slovak and Czech public, constitutes a minor difference which would go unnoticed by a consumer. The applicants’ argument that the short length of the mark applied for facilitates the perception of the circumflex accent on the first letter ‘a’, which draws the consumer’s attention, is at odds with their other argument that, ‘although consumers generally pay greater attention to the beginning of a mark than to its ending, this principle is not a general rule that is always applicable … especially when taking into account the short length of the [contested mark]’. The applicants also refer to the judgment of 3 April 2014, SÔ :UNIC (T‑356/12, not published, EU:T:2014:178, paragraph 29), in order to substantiate the abovementioned argument. In that judgment, concerning the use of the circumflex accent over the letter ‘o’, the Court held that, even if the word element ‘unic’ could refer to the English word ‘unique’, the failure to respect English spelling further distinguishes the mark applied for from the family of marks relied on. Unlike the case which was the subject of that judgment, in the present case, the circumflex accent is used as an element of the word ‘âme’ which has no meaning for the relevant public. The Board of Appeal was therefore correct to find that the accent would pass unnoticed by a consumer, a consideration that also applies in view of the short length of the mark applied for.

41      The applicants also refer to decisions of the Boards of Appeal and the Opposition Division of EUIPO to support the statements referred to in paragraph 34 above. In that regard, it is apparent from settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65; of 6 December 2018, Vans v EUIPO – Deichmann (V), T‑817/16, not published, EU:T:2018:880, paragraph 131; and of 19 September 2019, Showroom v EUIPO – E-Gab (SHOWROOM), T‑679/18, not published, EU:T:2019:631, paragraph 97).

42      In addition, although EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application be stringent and comprehensive and be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (judgments of 16 January 2019, Poland v Stock Polska and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 60, and of 6 December 2018, V, T‑817/16, not published, EU:T:2018:880, paragraph 132).

43      It follows that the applicants cannot usefully rely on the previous decisions of the Boards of Appeal and the Opposition Division. In any event, in so far as the applicants cite decisions relating to marks applied for with three letters, the mere coincidence of the number of letters – in the absence of a comparable factual context – does not require the Board of Appeal to justify the contested decision in the light of each of its previous decisions. In addition, in so far as the applicants cite a decision of the Second Board of Appeal in Case R 742/2015-2, it should be noted that, as EUIPO correctly submits, the Board of Appeal reached the conclusion that the signs ILÂME and IMLAN had only a low degree of similarity given, in particular, the different arrangement of the common letters included therein. Consequently, the factual context of that decision differs from the present case, at the very least, in that those word elements differ between them as regards the arrangement of the four common letters of the two marks at issue.

44      Second, as regards the impact of the three rhombuses, contrary to what the applicants claim, those figurative elements are not capable of visually splitting the earlier mark by separating the word elements ‘a’ and ‘men’. It must be borne in mind that this is not a single rhombus, but three figurative elements represented as dots in the shape of rhombuses, placed before and after the first letter ‘a’ and after the last letter ‘n’. As is correctly stated in the contested decision, their visual impact is not diminished solely in view of their less prominent size as compared to the word elements ‘a’ and ‘men’, but also because they are repetitive and are not found only between the letters ‘a’ and ‘m’, which reduces their possible function as a separating element. Consequently, it cannot be considered that the relevant public will understand the three rhombuses, or only one of them, as an element that makes it possible to identify a word with the meaning of ‘a-men’. In any event, the rhombus is a mere punctuation mark which is not associated with any characteristic effect by the consumer.

45      Third, as regards the applicants’ argument that the Board of Appeal erred in finding that the influence of the letter ‘n’ was diminished by its position at the end of the earlier mark in view of the fact that it altered the entire meaning of the word and was the cause of an important conceptual difference, it is sufficient to note that that aspect forms part of the assessment of the conceptual similarity of the marks at issue and that it will therefore be addressed in the context of that assessment.

46      Thus, since the visual perception of the marks at issue is almost entirely determined by the letters of which they are composed, the additional graphic elements having only a limited impact on the perception of the relevant public, it must be concluded that the Board of Appeal was right to find that there was an average degree of visual similarity between those marks.

 The phonetic similarity

47      The Board of Appeal concluded, in paragraphs 42 and 43 of the contested decision, that there is an average degree of phonetic similarity, since the marks at issue coincide in the pronunciation of the group of letters ‘ame’ and differ in the sound of the last letter ‘n’ of the earlier mark, which has no counterpart in the mark applied for. It stated that the circumflex accent will not alter the pronunciation of the word element ‘ame’ for the relevant German-, Slovak- and Czech-speaking public.

48      The applicants submit that the marks at issue are not phonetically similar or that they have, at most, a low degree of phonetic similarity. According to the applicants, the rhythm and intonation of the signs are not the same, since the earlier mark consists of two syllables whereas the mark applied for is pronounced as a single syllable (‘am’), as indicated by the circumflex accent in that mark.

49      EUIPO disputes the applicants’ arguments. It supports the findings set out in the contested decision and adds that, according to the pronunciation rules in German, Slovak and Czech, the word ‘âme’ will be pronounced as a word of two syllables.

50      It should be noted that, while it is true that a French-speaking public will pronounce the word ‘âme’ as a single syllable, that will not apply to the relevant public, who will pronounce that word as two syllables. The Board of Appeal pointed out correctly that the circumflex accent would not alter the pronunciation of the word element ‘âme’ for the relevant German-, Slovak- and Czech-speaking public, which, as the applicants acknowledge, does not know that accent. Thus, the applicants’ observations in that regard are contradictory in so far as they rely on a correct application of that accent by a public which they admit is unaware of that accent.

51      Therefore, the Board of Appeal was fully entitled to find that there was an average degree of phonetic similarity.

 The conceptual similarity

52      The Board of Appeal noted, in paragraphs 31, 32, 44 to 46, 54 and 58 of the contested decision, that the mark applied for had no meaning for the relevant German-, Slovak- and Czech-speaking public. According to the Board of Appeal, the earlier mark would be understood as ‘amen’, which the Collins English-language dictionary defines as ‘so be it!’, a word used at the end of a prayer or religious statement. In that regard, the Board of Appeal stated that, first, that word, unless it is used in conjunction with other text, such as a prayer, did not convey any concept or meaning. According to the Board of Appeal, if the notion of a ‘concept’ were extended to the field of vague emotions or associations, that concept would in fact be fairly similar to the one conveyed by the French word for soul (‘âme’), given that religion actually deals with the soul. Second, the Board of Appeal found that the earlier mark has a rather abstract ‘concept’ and ‘content’ to such an extent that they are liable to escape the attention of the consumer. Furthermore, according to the Board of Appeal, the earlier mark is without any relevance in respect of the goods at issue. On that basis, the Board of Appeal concluded that it was not possible to carry out a conceptual comparison because the marks at issue did not convey any clear concept capable of being grasped directly and immediately by the average consumer and because the conceptual aspect remained, consequently, neutral as regards the result of the similarity of those marks.

53      Furthermore, the Board of Appeal stated that it is of little importance whether the earlier mark has any meaning or not. Even if that were the case, the mark applied for could be regarded as a misspelling of the earlier mark. According to the Board of Appeal, the fact that the earlier mark has a meaning does not preclude that the identical nature of the three letters of the mark applied for and the first three letters of the earlier mark can lead to a misreading or mispronunciation.

54      The applicants claim that the Board of Appeal should have concluded that the marks at issue were not conceptually similar in so far as at least the word ‘amen’, comprising the earlier mark, suggests a clear and specific meaning understood by the relevant public, namely ‘so be it!’, a term used at the end of a prayer or religious statement. According to the applicants, the Board of Appeal’s conclusion is incorrect and contrary both to the EUIPO guidelines and to previous decisions of EUIPO and of the United Kingdom Intellectual Property Office (UKIPO). The applicants claim that it is apparent from those decisions that the clear and specific meaning of the word ‘amen’ is understood universally in the European Union and in the United Kingdom. The applicants submit that the guidelines provide that if only one of the marks evokes a concept, the marks are not conceptually similar. The Board of Appeal’s reasoning that it could be held that the mark applied for corresponded to a misspelling of the earlier mark or that the identical first three letters of the mark applied for could lead to a misreading or mispronunciation is, according to the applicants, an artificial reasoning based on a hypothetical assumption that ignores the actual differences between the marks at issue.

55      EUIPO disputes the applicants’ arguments. It supports the findings set out in the contested decision which are not, in its view, contrary to the EUIPO guidelines since the two marks at issue do not have a clear meaning for the relevant public. As regards the previous decisions of the Boards of Appeal, the Opposition Division of EUIPO and UKIPO, cited by the applicants, EUIPO adds that, apart from the fact that it is not bound by its previous decisions or by the decisions of national authorities, those decisions are not factually comparable to the present case.

56      In that regard, it should be noted that, contrary to what is stated in the contested decision, the semantic content of the word ‘amen’, namely ‘“so be it!” a term used at the end of a prayer or religious statement’ does not necessarily have to be integrated into a religious context, such as a prayer or a biblical text, in order for it to be grasped directly by the relevant public. On the contrary, even outside of that context, the word ‘amen’ has a clear and specific meaning which the relevant public will grasp directly.

57      Furthermore, it should be noted that the assessment carried out in paragraph 56 above is also supported by the EUIPO decisions cited by the applicants. It is apparent from the decisions of the Fifth Board of Appeal of EUIPO in Cases R 3170/2014-5 and R 197/2015-5 and from the decision of the Opposition Division of EUIPO in Case B 2 289 935 that the majority of the public in the territory of the European Union and the Italian public will immediately grasp that the meaning of the word ‘amen’ corresponds to that of a term used at the end of a prayer.

58      Although, as noted in paragraphs 41 and 42 above, EUIPO is correct to claim that it is not bound by its previous decisions, the fact remains that, as noted in paragraph 42 above, it must take into account decisions already taken and consider with especial care whether it should decide in the same way or not. In that regard, it must be stated that EUIPO has not shown to what extent, in the previous decisions, the understanding of the semantic content of the word ‘amen’ by the general public differed from that in the present case. In actual fact, in view of the limited scope of that question, there are no obvious factual differences that would justify different answers. In particular, since the Board of Appeal based its assessment of the semantic content on the Collins English-language dictionary, it cannot be accepted that a difference arises from the language context of the relevant public, namely the general German-, Slovak- or Czech-speaking public, on the one hand, and the European or Italian public, on the other.

59      Furthermore, it should be noted that, contrary to what is stated in the contested decision, it is irrelevant that the meaning of the word ‘amen’ does not refer to the goods at issue, since it is not plausible to consider that, in the absence of concrete evidence to the contrary, the word ‘amen’, as a trade mark for clothing, may, in the perception of the relevant public, override the ordinary meaning of that term so that that consumer, confronted with the word ‘amen’ in the context of the goods concerned, will henceforth disregard that meaning and perceive it principally as a mark, among other marks, for clothing.

60      It must be held that the Board of Appeal erred in finding that it was not possible to carry out a conceptual comparison in view of the fact that the marks at issue did not convey any clear concept capable of being grasped directly and immediately by the average consumer. ‘Amen’ is the term used at the end of prayers and religious statements and it has a clear and specific meaning that the relevant public is capable of grasping directly, even if it is taken out of a religious context. Since only one of the marks at issue evokes a concept, it must be concluded that the marks at issue are not conceptually similar (see, to that effect, judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 22, and of 5 October 2017, Wolf Oil v EUIPO, C‑437/16 P, not published, EU:C:2017:737, paragraphs 46 and 47).

61      In so far as the Board of Appeal calls into question the case-law of the Court of Justice cited in paragraph 60 above and the EUIPO guidelines by claiming that the result would be contradictory, it should be noted that no contradiction arises from the fact that a different assessment is made if two marks are devoid of semantic meaning (a conceptual comparison being impossible) and if a mark with semantic meaning is compared with a mark devoid of meaning (the marks are not conceptually similar).

62      The Board of Appeal’s reasoning that it could be held that the mark applied for corresponded to a misspelling of the earlier mark or that the identical first three letters of the mark applied for could lead to a misreading or mispronunciation is based on an incorrect statement of reasons which disregarded the clear and unequivocal meaning of the earlier mark. In so far as the word ‘amen’, which constitutes the earlier mark, has a clear and specific meaning that the relevant public is capable of grasping directly, unlike the mark applied for, which does not convey any meaning for that public, the Board of Appeal did not demonstrate why the relevant public would amalgamate the two marks at issue and would perceive the mark applied for as a misspelling of the earlier mark.

 The overall comparison

63      The Board of Appeal found, first of all, in paragraphs 51 to 59 of the contested decision, that, when two marks convey two different meanings which will be easily be grasped without further reflection by the relevant public, it is necessary to take into account the case-law relating to the counteraction of visual and phonetic similarities through conceptual differences, while nevertheless stating that the case-law of the Court does not provide a uniform answer to the question whether that case-law also applies where only one mark has a meaning. Next, it noted that the word ‘amen’, unless it is placed in conjunction with other text, such as a prayer, has no concept or meaning of its own and concluded that it was illogical to apply the case-law relating to the counteraction of visual and phonetic similarities through conceptual differences in the present case. Finally, the Board of Appeal found that that also applied if it were assumed that the word ‘amen’ had a meaning. In that regard, it stated that the argument based on that case-law had to be viewed with circumspection and could only be one element among others in the assessment. Relying on the case-law of the Court, the Board of Appeal found that, where the concept conveyed by the earlier mark was rather abstract, such that it was liable to escape the attention of the consumer, any difference in meaning between the marks at issue cannot prevail when those marks have visual and phonetic similarities. The Board of Appeal concluded that the mere fact that the word ‘amen’ is a dictionary word could not offset the average degree of visual and phonetic similarity, taking into account the average degree of distinctiveness of the earlier mark and the identity of the goods in question.

64      The applicants claim that the word ‘amen’ has a clear and specific meaning capable of being immediately grasped by the public, irrespective of the category of goods concerned; a meaning which must be regarded as sufficient to counteract the visual and phonetic similarity between the marks at issue. In that regard, they refer to the case-law relating to the counteraction of visual and phonetic similarities through conceptual differences, which they consider to be applicable in the present case. By contrast, the case-law cited by the Board of Appeal is not, according to the applicants, factually comparable to the present case.

65      EUIPO disputes the applicants’ arguments. It submits, in the first place, that the semantic connotation of the earlier mark is abstract and vague, which is why it is unlikely that it will be retained by the relevant public and prevail over the visual and phonetic similarities between the marks at issue. In the second place, the case-law relating to the counteraction of visual and phonetic similarities through conceptual differences is not applied systematically, even in the case of conceptual differences. First, the Board of Appeal maintains that where none of the marks taken as a whole has a clear and specific meaning, any conceptual difference between the marks that may result from the evocation of an abstract concept is insufficient to neutralise the visual and phonetic similarities. Second, according to the Board of Appeal, even where at least one of the marks has a clear and specific meaning capable of being grasped immediately by the whole of the relevant public, the visual or phonetic similarities may be so strong that the corresponding conceptual differences cannot be counteracted. Consequently, according to the Board of Appeal, in the present case, even if the marks at issue were not conceptually similar, the absence of such similarity would not offset both the fact that the marks at issue are visually similar to an average degree, which is particularly important for the identical goods at issue, and the fact that they have an average degree of phonetic similarity.

66      It is apparent from the case-law that the global assessment of the similarity of the signs implies that conceptual differences between two signs may 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 (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98; of 5 October 2017, Wolf Oil v EUIPO, C‑437/16 P, not published, EU:C:2017:737, paragraph 44; and of 14 October 2003, Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 54).

67      First of all, it should be noted that, contrary to what is stated in the contested decision, the Court of Justice has expressly stated that the visual and phonetic similarities of the marks at issue could be counteracted in a situation in which only one mark had a clear and specific meaning (judgment of 5 October 2017, Wolf Oil v EUIPO, C‑437/16 P, not published, EU:C:2017:737, paragraph 47).

68      Next, it is necessary to examine the application of the case-law by the Board of Appeal in the contested decision.

69      First, it should be noted that it is indeed true, as EUIPO states, that the existence of conceptual differences does not automatically lead to the counteraction of visual and phonetic similarities.

70      Second, the Board of Appeal refers to the 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, paragraphs 90, 95 and 96), and of 27 February 2015, Bayer Intellectual Property v OHIM – Interhygiene (INTERFACE) (T‑227/13, not published, EU:T:2015:120, paragraph 48), concerning the word ‘interface’ and the word ‘mundicolor’ respectively, to support its position that, where the concept conveyed by the earlier mark is relatively abstract, to such an extent that it is liable to escape the attention of the consumer, any difference in meaning between the marks cannot prevail where they have visual and phonetic similarities.

71      It must be stated that the judgments of 17 March 2004, MUNDICOR (T‑183/02 and T‑184/02, EU:T:2004:79), and of 27 February 2015, INTERFACE (T‑227/13, not published, EU:T:2015:120), in view of the factual differences, cannot be transposed to the present case. Thus, as the applicants correctly submit, unlike the word ‘interface’ which relates only to an abstract concept and the word ‘mundicolor’ which is limited to a certain evocative force, the word ‘amen’ is not abstract and has a universally understood meaning. Accordingly, that word is not liable to escape the consumer’s attention.

72      Third, in so far as the contested decision refers to the judgment of 13 December 2012, Hairdreams v OHIM – Bartmann (MAGIC LIGHT) (T‑34/10, not published, EU:T:2012:687, paragraph 39), it must be held that that case-law also cannot be transposed to the present case. In that judgment, the Court held that, although there were conceptual differences between the marks at issue, they were not, however, sufficient to counteract the particularly high degree of visual and phonetic similarity between those marks. In the present case, as has been held in paragraphs 46 and 51 above, the Board of Appeal correctly found that there was an average degree of visual and phonetic similarity between the marks at issue.

73      It follows from the foregoing that the Board of Appeal was correct to find that there is an average degree of visual and phonetic similarity between the marks. By contrast, the Board of Appeal erred, first, in concluding that it was not possible to carry out a conceptual comparison of the marks at issue and, second, in failing to examine, in the present case and in the light of the finding in paragraph 60 above that the word ‘amen’ has a clear and specific meaning understood by the relevant public, whether the visual and phonetic similarities were counteracted by the fact that the marks at issue are not conceptually similar.

 The likelihood of confusion

74      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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

75      The Board of Appeal found in paragraph 59 of the contested decision, after concluding that the mere fact that the word ‘amen’ is a dictionary word could not offset the average degree of visual and phonetic similarity given the average degree of distinctiveness of the earlier mark and the identity of the goods at issue, that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between the mark applied for and the earlier mark.

76      The applicants submit that there is no likelihood of confusion between the marks at issue.

77      EUIPO claims that, in view of the concept of imperfect recollection and the principle of interdependence, there is a likelihood of confusion on the part of the German-, Slovak- and Czech-speaking part of the public.

78      In the present case, since, first, the Board of Appeal erred in concluding, that it was not possible to carry out a conceptual comparison in view of the fact that the marks at issue did not convey any clear concept capable of being grasped directly and immediately by the average consumer (see paragraph 60 above), its assessment of the likelihood of confusion is necessarily vitiated by errors (see, to that effect, judgment of 3 October 2019, Vafo Praha v EUIPO – Rutzinger-Kurpas (Meatlove), T‑491/18, not published, EU:T:2019:726, paragraph 71). Second, the same applies to its erroneous refusal to examine the possible application of the case-law relating to the counteraction of visual and phonetic similarities through conceptual differences (see paragraphs 66 to 73 above).

79      If the Board of Appeal had correctly examined the conceptual similarity of the marks at issue, in particular on the part of the German-, Slovak- and Czech-speaking public, and if it had not erroneously refused to examine the possible application of the case-law relating to the counteraction of visual and phonetic similarities through conceptual differences, it cannot be ruled out that it should have found, in the present case, that there was no likelihood of confusion.

80      It follows from all the foregoing considerations that the single plea in law must be upheld and, accordingly, that the contested decision must be annulled.

 Costs

81      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.

82      In the present case, the applicants have claimed that EUIPO should be ordered to pay the costs, including those incurred in the appeal proceedings.

83      Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are regarded as recoverable costs.

84      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicants, in accordance with the form of order sought by the applicants. Those costs also include the costs necessarily incurred by the applicants for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 June 2020 (Case R 2960/2019-4);

2.      Orders EUIPO to bear its own costs and to pay those incurred by Ms Isaline Grangé and Ms Alizée Van Strydonck, including the costs necessarily incurred by Ms Grangé and Ms Van Strydonck for the purposes of the proceedings before the Board of Appeal.

Delivered in open court in Luxembourg on 5 May 2021.

*      Language of the case: English.

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