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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

12 October 2022 (*) (1)

(EU trade mark – Cancellation proceedings – EU figurative mark Shoppi – Earlier EU word mark SHOPIFY – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) – Lack of enhanced distinctiveness of the earlier mark – Agreement on the withdrawal of the United Kingdom from the European Union and from Euratom (Brexit))

In Case T‑222/21,

Shopify Inc., established in Ottawa, Ontario (Canada), represented by S. Völker and M. Pemsel, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,

defendant,

the other parties to the proceedings before the Board of Appeal of EUIPO, interveners before the General Court, being

Massimo Carlo Alberto Rossi, residing in Fiano (Italy),

Salvatore Vacante, residing in Berlin (Germany),

Shoppi Ltd, established in London (United Kingdom),

represented by V. Roth and A. Hogertz, lawyers,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of the deliberations, of M.J. Costeira, President, M. Kancheva (Rapporteur) and P. Zilgalvis, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the written part of the procedure,

further to the hearing on 17 March 2022,

gives the following

Judgment

1        By its action based on Article 263 TFEU, the applicant, Shopify Inc., seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 February 2021 (Case R 785/2020‑2) (‘the contested decision’).

 Background to the dispute

2        On 8 May 2017, the interveners, Mr Massimo Carlo Alberto Rossi and Mr Salvatore Vacante and Shoppi Ltd, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3        The mark for which registration was sought, and for which the applicant claimed the colours ‘dark blue; white; red; orange’, is the following figurative sign:

4        The goods and services in respect of which registration was sought are in Classes 9, 35 and 38 of the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 9: ‘Application software; e-commerce software; Mobile apps; Application software for mobile phones; Computer e-commerce software; Computer software for advertising; Computer software for mobile phones; Software for tablet computers; Software for online messaging; Software for mobile phones; Software for interactive television; Virtual reality software; Media content; Media software’;

–        Class 35: ‘Advertising for others; Advertising analysis; Analysis of advertising response; Evaluating the impact of advertising on audiences; Advertising, marketing and promotional consultancy, advisory and assistance services; Advertising and marketing services provided via communications channels; Provision of an on-line marketplace for buyers and sellers of goods and services; Analysis of the public awareness of advertising; Analysis relating to marketing; Consumer response analysis; Dissemination of data relating to advertising; Grain market analysis; Coupon procurement services for others; Mediation of advertising; Advertising via electronic media and specifically the internet; Promotional marketing services using audiovisual media; Retail purposes (Presentation of goods on communication media, for -); Presentation of goods on communications media, for retail purposes; Presentation of companies on the Internet and other media; Advertising and marketing services provided by means of social media; Presentation of goods on communication media, for retail purposes’;

–        Class 38: ‘Photo uploading services; Video uploading services; Providing on-line chat rooms for social networking; Digital transmission of data; Message services; Providing online chatrooms for the transmission of messages, comments and multimedia content among users; Communication services for the transmission of information; Communication services for the electronic transmission of voices; Communication services for the electronic transmission of images; Delivery of digital audio and/or video by telecommunications; Delivery of messages by audiovisual media; Digital transmission of data via the Internet; Digital transmission of voice; Delivery of messages by electronic media; Message sending, receiving and forwarding; Interactive transmission of video over digital networks; Interactive communication services; Inter-active video text services; Video transmission via digital networks; Transmission of messages and images; Provision of access to an electronic marketplace [portal] on computer networks’.

5        The trade mark application was published in European Union Trade Marks Bulletin No 145/2017 of  2 August 2017 and the corresponding figurative sign was registered on 4 May 2018 under number 016684797.

6        On 22 March 2019, the applicant, pursuant to Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, filed an application for a declaration of invalidity of the contested mark in respect of the goods and services referred to in paragraph 4 above.

7        The application for a declaration of invalidity was based on the earlier EU word mark SHOPIFY, covering goods and services in Classes 9, 35, 36 and 42 and corresponding, for each of those classes, to the following description:

–        Class 9: ‘Computer software for e-commerce; electronic publications for e-commerce’;

–        Class 35: ‘Provision of websites and mobile platforms featuring information in the fields of shopping, retailing, electronic commerce, and order fulfillment; online advertising; sales promotion; provision of an online marketplace for buyers and sellers of goods and services; business information in the field of e-commerce; providing business and trading contact information in the field of e-commerce; business management assistance in the field of e-commerce; commercial information and advice for consumers (consumer advice shop); presentation of goods on communication media, for retail purposes’;

–        Class 36: ‘Providing electronic processing of credit card transactions and electronic payments online for the retail industry’;

–        Class 42: ‘Online services that allow users to create hosted online stores to sell their goods and services; design, creation, hosting and maintenance of online stores; application service providing (ASP) in the field of e-commerce; software as a service (SAAS) in the field of e-commerce; creating and maintaining online stores; online store design consultancy; hosting websites in the field of e-commerce; computer software consultancy in the field of e-commerce; information technology consultancy in the field of e-commerce; providing search engines for the internet; providing information on computer technology and programming via a website and mobile platform; creating and maintaining online stores (allowing the merchant stores to set up shipping on the online stores)’.

8        By decision of 6 February 2020, the Cancellation Division upheld the application for a declaration of invalidity. It found, in essence, that the goods and services at issue were identical or similar, that the signs were visually and phonetically similar, whereas it was impossible to carry out a conceptual comparison, since the enhanced distinctiveness of the earlier mark was normal, despite the presence within that mark of the non-distinctive element ‘shop’, that the fact that the element ‘shop’ was not capable of indicating the commercial origin of the goods and services at issue was not sufficient in the present case to rule out safely a likelihood of confusion, since the overall impression conveyed by the marks at issue was similar, that there was therefore a likelihood of confusion on the part of the non-English-speaking part of the public, even when that part of the public displayed a higher level of attention, and that, since the cancellation application was successful on the basis of the inherent distinctiveness of the earlier mark, there was no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use.

9        On 28 February 2020, the applicant filed a notice of appeal with EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

10      On 18 February 2021, by the contested decision, the Board of Appeal upheld the appeal, annulled the Cancellation Division’s decision in its entirety and dismissed the application for a declaration of invalidity in its entirety. First, it found that the goods and services covered by the marks at issue were identical or similar. Second, it considered that the relevant public was made up of both professionals, with a heightened level of attention, and the general public, with a higher than average level of attention. Third, it found that the common element ‘shop’ was descriptive and that the marks at issue were visually similar to a low degree, phonetically similar to an average degree and conceptually similar to a low degree. Fourth, the Board of Appeal found that the earlier mark, for the non-English-speaking public, had a slightly higher distinctive character than the minimum level due to the element ‘ify’ and, for the English-speaking public, conveyed the highly allusive message of ‘to make something become a shop’, such that it had low inherent distinctiveness. Fifth, it found that the evidence submitted by the applicant in order to demonstrate the enhanced distinctiveness of the earlier mark through use was not sufficient for that purpose. Sixth, it concluded, as part of the overall assessment of the likelihood of confusion, that there was no such likelihood in the present case.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        dismiss the interveners’ appeal against the decision of the Cancellation Division;

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

12      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

13      The interveners contend that the Court should:

–        dismiss the application;

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

 Law

14      Given the date on which the application for registration at issue was filed, namely 8 May 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.

15      Consequently, in the present case, so far as concerns the substantive rules, the references to Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to Article 53 of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, the wording of which is identical.

16      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof. It disputes the findings of the Board of Appeal concerning, first, the level of attention of the relevant public, second, the comparison of the signs at issue, third, the inherent distinctiveness of the earlier mark, fourth, the enhanced distinctiveness of the earlier mark through use and, fifth, the overall assessment of the likelihood of confusion.

17      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the contested trade mark 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.

18      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. 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).

19      In the present case, as a preliminary point, there is no reason to call into question the comparison of the goods and services made by the Board of Appeal in paragraphs 19 to 25 of the contested decision, and in particular the finding that the goods and services at issue were identical or similar, which, moreover, is not disputed by the applicant.

 Level of attention of the relevant public

20      The applicant disputes the findings of the Board of Appeal, in paragraph 33 of the contested decision, relating to the level of attention of the general public with regard to certain of the goods and services at issue.

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

22      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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).

23      The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the contested mark. Thus, as a general rule, where the wording of the goods or services of one mark is wider than the wording of the other, the relevant public is generally defined by the narrower wording (see judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraphs 38 and 39 and the case-law cited).

24      In paragraph 33 of the contested decision, the Board of Appeal found that, to the extent that the goods and services that had been considered identical or similar were intended both for the professional public as well as the public at large – that is ‘providing information on computer technology and programming via a website and mobile platform’ versus ‘software for interactive television; virtual reality software and media software’ – those were goods and services that were generally used on a daily basis by the end consumer, their price was not relatively high and they did not require any particular technical knowledge. It considered that the level of attention of the general public for those goods and services was higher than in relation to everyday consumer goods but without, however, being particularly high, citing, for the latter qualification, paragraphs 33 to 38 of the judgment of 18 November 2020, LG Electronics v EUIPO – Staszewski (K7) (T‑21/20, not published, EU:T:2020:550). In paragraph 34 of that decision, it found that the remaining identical and similar goods and services were intended for a professional public, who would have, at least, a heightened level of attention towards those goods and services, citing paragraphs 23 to 27 of the judgment of 1 March 2016, 1&1 Internet v OHIM – Unoe Bank (1e1) (T‑61/15, not published, EU:T:2016:115).

25      In the present case, as a preliminary point, it should be noted that the applicant expressly states that it does not dispute the Board of Appeal’s finding that the level of attention for goods and services intended for a professional public will be heightened or higher than average. Moreover, that conclusion is free of error of assessment and must be upheld.

26      Likewise, there is no reason to call into question the Board of Appeal’s assessment that the relevant territory is that of the whole of the European Union, which, moreover, is not disputed by the applicant.

27      In the first place, the applicant disputes the Board of Appeal’s finding, in paragraph 33 of the contested decision, that the level of attention of the general public with regard to goods and services consisting in ‘software for interactive television; virtual reality software and media software’ and ‘providing information on computer technology and programming via a website and mobile platform’ falling within Classes 9 and 42 respectively, despite their relatively low prices, is higher than in relation to everyday consumer goods and services. It claims that, as regards those goods and services, the level of attention of the public will be only average, and not higher than average, as the Board of Appeal found. It relies on the case-law according to which, within the European Union, computer hardware (computers, tablets, smartphones, and so on) and computer products (software and so on) correspond, for the most part, to standardised goods that are easy to use, are not highly technical, and are widely distributed in all types of stores at affordable prices and that, to that extent, they are everyday consumer goods intended for the general public (see judgment of 17 February 2017, Construlink v EUIPO – Wit-Software (GATEWIT), T‑351/14, not published, EU:T:2017:101, paragraph 52 and the case-law cited; see also, to that effect, judgment of 15 November 2018, Haufe-Lexware v EUIPO – Shi Holdings (Beijing) (Leshare), T‑546/17, not published, EU:T:2018:782, paragraphs 25 and 29).

28      In that regard, however, it is must be stated that it is apparent from the same case-law that computer hardware and software will not in all cases be everyday consumer goods and that the level of attention of the average consumer of such products and services will not always be average (see, to that effect, judgment of 15 November 2018, Leshare, T‑546/17, not published, EU:T:2018:782, paragraph 27).

29      In the present case, it must be noted that the computer goods and services at issue relate, for the most part, to the creation of commercial spaces and online interactive commercial platforms, unlike the basic software and operating programs concerned by the judgment of 15 November 2018, Leshare (T‑546/17, not published, EU:T:2018:782), intended for the mere owner of a computer. It should also be noted, as did EUIPO, that the somewhat specialised nature of those computer goods and services makes it reasonable to assume that the involvement of the general public in the act of purchase will be at least slightly higher than for other types of everyday consumer goods and services.

30      Therefore, it is without committing an error of assessment that the Board of Appeal could consider that the level of attention of the average consumer for the computer goods and services at issue in the present case, which are of a specific and specialised type, was higher than in relation to everyday consumer goods and services but without, however, being particularly high.

31      In the second place, the applicant claims that the telecommunications services in Class 38 covered by the contested mark are aimed at a public whose level of attention must be regarded as low, because they are used on a daily basis, do not require any particular technical knowledge and are often free of charge or sold at low prices.

32      In that regard, it is sufficient to point out that the telecommunications services in Class 38 covered by the contested mark were considered similar to the ‘computer software for e-commerce; electronic publications for e-commerce’ falling within Class 9 covered by the earlier mark, which are aimed solely at the professional public, who will have, at least, a heightened level of attention towards those goods and services, as is apparent from paragraph 34 of the contested decision. In that regard, it is apparent from the file that the computer software for e-commerce in Class 9 covered by the earlier mark is a tool that drives all online store processes and offers everything needed to run a retail site, effectively simplifying the online store management.

33      According to the case-law, the relevant public to be taken into consideration is that composed of users likely to use both the goods and services covered by the earlier mark and those covered by the contested mark (see the case-law cited in paragraph 23 above).

34      Therefore, the relevant public for the comparison of the goods covered by the earlier mark with the services in Class 38 covered by the contested mark consists solely of a professional public with a level of attention higher than average. Furthermore, the applicant does not dispute the Board of Appeal’s finding, in paragraph 34 of the contested decision, that the level of attention of the professional public will be heightened or higher than average.

35      The applicant’s claim relating to the services in Class 38 covered by the contested mark must therefore be rejected as irrelevant.

36      For the same reasons, the applicant’s other claims relating to the level of attention allegedly displayed by the relevant public in respect of other goods and services covered by the contested mark in Classes 9, 35 and 42 must also be rejected as irrelevant, given that the relevant public to be taken into consideration for the comparison of the marks at issue, in the light of the case-law cited in paragraph 23 above, is a professional public with a level of attention higher than average.

 Comparison of the signs

37      The applicant complains that the Board of Appeal erred in its assessment of the visual, phonetic and conceptual similarity of the signs at issue.

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

39      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 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).

40      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. 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. 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43).

41      In the present case, before assessing the similarity of the signs at issue, it is necessary to examine the distinctive and dominant elements of those signs.

 The distinctive and dominant elements of the signs at issue

42      According to the applicant, first, the word element ‘shop’, placed at the beginning of the marks at issue, occupies a central position, meaning that it should be regarded as a dominant element, irrespective of its descriptive character. Second, the figurative or stylistic elements making up the contested mark are purely decorative and occupy a minor role in the overall impression of that mark. Moreover, the applicant disputes that the term ‘shop’ is descriptive in relation to the goods and services at issue. The Board of Appeal’s reasoning that the word element ‘shop’ is descriptive is superficial, since that element does not have a sufficiently direct and specific relationship with the goods and services at issue, namely, in particular, the advertising services in Class 35 or the telecommunications services in Class 38, which are not offered in commercial establishments. Furthermore, the Board of Appeal’s finding that a descriptive element cannot dominate the overall impression for the relevant public is not consistent with the case-law. Such an element may be dominant and be remembered by that public because it occupies a central position in the marks at issue. That, the applicant claims, is the case here.

43      It is appropriate to recall that, in order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is descriptive of the goods or services for which the mark has been registered (see judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 27 and the case-law cited).

44      Moreover, it must be borne in mind that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he or she will identify the elements which, for him or her, suggest a concrete meaning or resemble words known to him or her (see judgment of 5 October 2020, NATURANOVE, T‑602/19, not published, EU:T:2020:463, paragraph 28 and the case-law cited).

45      Last, owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).

46      In the present case, the Board of Appeal considered, first, that the signs at issue, on the one hand, coincided in the term ‘shop’, which had a descriptive nature in relation to the goods and services at issue for all the relevant public, both English-speaking and non-English-speaking, and was therefore not a dominant element of the said marks, and, on the other hand, was distinguished by the elements ‘ify’, present in the earlier mark, and ‘pi’, present in the contested mark. Second, the element ‘ify’ had a meaning only for the English-speaking public, who would understand the earlier mark as a whole as evoking the concept of ‘to make something become a shop’, and was therefore descriptive, in the sense of ‘making something become something else’, in relation to the goods and services at issue, whereas, for the non-English-speaking public, the element ‘ify’ had no meaning and conferred on the earlier mark an average distinctive character. Third, the contested mark did not, by contrast, have any particular meaning for the whole of the relevant public and therefore did not have descriptive character. Fourth, the figurative elements of the contested mark were not specific and did not attribute a distinctive character to it, while not being negligible, whereas the shopping trolley element enhanced the descriptive meaning of the word element ‘shop’ in the said mark.

47      In that respect, in the first place, as regards the descriptive character of the element ‘shop’ common to the marks at issue, it must be pointed out that it is well known that the word ‘shop’ is a basic English word, understood throughout the European Union as a commercial establishment in which goods are sold or services are provided. That word can thus be understood as the place where the goods or services at issue are sold or provided and is therefore descriptive in nature (see, to that effect, judgment of 6 December 2016, The Art Company B & S v EUIPO – Manifatture Daddato and Laurora (SHOP ART), T‑735/15, not published, EU:T:2016:704, paragraph 43).

48      That finding cannot be called into question by the applicant’s argument that the goods and services at issue are sold not in physical stores, but in virtual establishments or in offices. The term ‘shop’ can also encompass the latter, since it relates to the place, whether physical or virtual, where it is traditionally possible to buy such goods or services (see, to that effect, judgment of 11 April 2019, Pharmadom v EUIPO – Objective Pharma (WS wellpharma shop), T‑403/18, not published, EU:T:2019:248, paragraph 41), irrespective of the characteristics specific to that place.

49      In the second place, it is necessary to examine, in the light of the case-law cited in paragraph 40 above, whether or not the element ‘shop’ has a dominant role in the marks at issue.

50      So far as concerns the earlier mark, the other word component of it is the suffix ‘ify’, which, for the English-speaking public, will evoke the concept of transformation, and thus, together with the word ‘shop’, that of ‘making something become a shop’. Therefore, it is without committing an error of assessment that the Board of Appeal could find that the earlier mark, taken as a whole, was highly allusive to the goods and services aimed at creating e-commerce platforms or shopping sites that it designated for the English-speaking public. By contrast, for the non-English-speaking public, the suffix ‘ify’ has no meaning and therefore has an average distinctive character. In both cases, that additional element ‘ify’ is not negligible, within the meaning of the case-law cited in paragraph 40 above, in the earlier mark, and the element ‘shop’, which is moreover descriptive, cannot be regarded as dominant in that mark, contrary to what the applicant claims.

51      As far as the contested mark is concerned, as the Board of Appeal rightly noted, that mark includes, in addition to the term ‘shop’, the word element ‘pi’, which has no meaning either for the English-speaking public or for the non-English-speaking public and therefore has an average distinctive character. In addition, the contested mark is composed of other figurative and stylistic elements: in particular, a blue rectangular background, a shopping trolley containing red and orange packages, a rounded writing style and a lower-case font. In those circumstances, contrary to what the applicant claims, it cannot be held that all the elements of the contested mark other than the word element ‘shop’ are negligible, within the meaning of the case-law cited in paragraph 40 above, despite the fact that the Board of Appeal attributed no particular distinctive character to those figurative and stylistic elements, in view of the average distinctive character conferred on the contested mark by the word element ‘pi’.

52      The Board of Appeal was therefore right to find, in essence, that the element ‘shop’ was not dominant in the marks at issue.

53      Those findings cannot be called into question by the applicant’s argument that the position of the word ‘shop’ at the beginning of the mark will draw the attention of the relevant public, since the possible effect of such a circumstance is, in this case, blurred by the descriptive nature of that term. It is only if that descriptive element were dominant in the mark – quod non in this case, as is apparent from paragraphs 50 to 52 above – that it could be considered on its own in the comparison between the marks at issue.

54      It follows from the foregoing that the Board of Appeal did not commit any error of assessment in finding that the element ‘shop’ common to the marks at issue was descriptive and not dominant in the overall impression conveyed by those marks.

55      It follows that the signs at issue do not have a dominant element and that the assessment of their similarity must be based on those signs as a whole.

 Visual comparison

56      The applicant claims that the word elements of the signs are of greater importance than the figurative elements of the contested mark, which are purely decorative. Those word elements are similar in length, the first six or seven letters coincide in the same order, the public will not remember the two ‘p’ in the contested mark and pays more attention to the beginning of marks.

57      The applicant thus disputes the Board of Appeal’s assessment, made in paragraphs 48 to 51 of the contested decision, according to which the marks at issue are visually similar to a low degree. It considers the degree of visual similarity to be average.

58      In that regard, it is common ground that the two marks at issue are similar in length (seven letters for the earlier mark and six for the contested mark) and that five of those letters are in the same sequence, ‘s’, ‘h’, ‘o’, ‘p’, ‘i’, except for the second ‘p’, which is placed before the letter ‘i’ in the contested mark.

59      However, it must be noted, as did the Board of Appeal, that the letters coinciding in the two marks are those constituting the term ‘shop’, which, although present at the beginning of both marks, is, as has been found in paragraphs 47 to 55 above, a descriptive and non-dominant term.

60      The descriptiveness of an element which is common to two signs considerably reduces the relative weight of such an element in the comparison of those signs, including the visual and phonetic comparisons, even though its presence must be taken into account (see, to that effect, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 67 and the case-law cited).

61      It must therefore be emphasised that the fact that the element common to both signs – ‘shop’ – is descriptive of the goods and services in question considerably lessens the similarity arising from that sequence of letters in common, even though the relative importance of that prefix must, however, be taken into account when comparing the signs at issue (see, by analogy, judgment of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 48).

62      By contrast, the differences residing in the elements ‘ify’ and ‘pi’ placed at the end of the signs occupy an important distinctive position for the purposes of determining the commercial origin of the goods and services concerned.

63      Furthermore, the Court considers, like the interveners, that, although the stylistic and figurative elements present in the contested mark are not particularly distinctive, they contribute, in view of their not insignificant impact on the impression conveyed by the contested mark, to creating an overall visual impression of that mark different from that produced by the earlier mark, or at most faintly similar to it.

64      In the light of the foregoing and emphasising that the common descriptive element ‘shop’ cannot dominate the overall impression conveyed by the signs at issue, it must be held that those signs are visually similar to a low degree.

65      The Board of Appeal was therefore right to find that the signs at issue had a low degree of visual similarity.

 Phonetic comparison

66      The applicant submits that the contested mark is entirely included in the earlier mark and that the first two syllables of the marks at issue are identical, the only difference being the additional syllable ‘fy’, which is not particularly striking for the English-speaking public, placed at the end of the earlier mark. Moreover, according to the applicant, although the signs coincide in a descriptive element, the average consumer will pay more attention to the beginning of the mark.

67      The applicant thus disputes the Board of Appeal’s assessment, made in paragraphs 52 and 53 of the contested decision, according to which the marks at issue are phonetically similar to an average degree at most. It considers the degree of phonetic similarity to be high and submits that the Board of Appeal should have confirmed the same finding of high similarity made by the Cancellation Division.

68      It is common ground that the marks at issue coincide in two of the three syllables of which they are composed, including the sound ‘i’ after the ‘p’, that they follow the same rhythm and share the same sequence of consonants and vowels.

69      However, as the Board of Appeal rightly pointed out, without being contradicted by the applicant’s arguments, the descriptive character of the element ‘shop’ in both signs is of significant importance, such that, notwithstanding the length and position of that element, the difference between the additional syllables ‘fy’ and ‘pi’ placed at the end of the signs is not without importance in the overall assessment of phonetic similarity.

70      The Board of Appeal was therefore right to find that the signs at issue were phonetically similar to an average degree.

 Conceptual comparison

71      The applicant claims that the marks at issue coincide as to their semantic content, since they convey the same idea or the same specific concept, despite the descriptive nature of their common word ‘shop’. It thus disputes the Board of Appeal’s assessment, made in paragraph 54 of the contested decision, according to which the marks at issue are conceptually similar to a low degree. It considers the conceptual similarity to be high.

72      However, as the Board of Appeal pointed out, it is apparent from a section of the case-law that, where the signs at issue have only a descriptive term in common, the conceptual similarity must be regarded as low (see, to that effect, judgments of 5 October 2020, NATURANOVE, T‑602/19, not published, EU:T:2020:463, paragraph 51, and of 15 October 2020, BIOPLAST BIOPLASTICS FOR A BETTER LIFE, T‑2/20, not published, EU:T:2020:493, paragraph 67).

73      Even if the conceptual similarity resulting from the common element ‘shop’ were to be regarded as high, it is apparent from another section of the case-law that, where a conceptual similarity is based on a weakly distinctive, or even descriptive, element, it plays a limited role and has less impact on the assessment of the likelihood of confusion (see, to that effect, judgment of 15 October 2020, ROBOX, T‑49/20, not published, EU:T:2020:492, paragraph 92 and the case-law cited).

74      The Board of Appeal was therefore right to find that the marks at issue had a low degree of conceptual similarity for both the English-speaking and non-English-speaking public which, in essence, had little bearing on the overall assessment of the likelihood of confusion.

75      Accordingly, the Board of Appeal’s assessment concerning the similarity between the marks at issue is not vitiated by error.

 The inherent distinctiveness of the earlier mark

76      The applicant claims that the earlier mark has an average or ‘normal’ degree of distinctiveness. The Board of Appeal arrived at the finding that there was a low degree of distinctiveness by unduly dissecting the earlier mark and not taking account of the overall impression conveyed by that mark. For the English-speaking public, the overall impression will be that of a fanciful term, even if the term ‘shop’ were descriptive, and there was no evidence that that public will understand the mark as ‘to make something become a shop’. As regards the non-English-speaking public, the applicant relies on the case-law of the Court according to which the combination of a descriptive element with another non-descriptive element creates an overall impression that is sufficiently distinct.

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

78      In paragraphs 57 to 61 of the contested decision, the Board of Appeal, unlike the Cancellation Division, found that the inherent distinctiveness of the earlier mark was ‘slightly higher than minimum level’ for the non-English-speaking public and low for the English-speaking public.

79      In that regard, first, it is apparent from paragraphs 47 and 48 above that, in the earlier mark, the term ‘shop’ is descriptive in relation to the goods and services covered by the marks at issue, for the whole of the relevant public. Second, it has been held in paragraph 50 above that the earlier mark, taken as a whole, is highly allusive to those goods and services with regard to the English-speaking public. Third, the hindmost word element ‘ify’, while in itself of average distinctiveness for the non-English-speaking public, is shorter than the first element and is not in itself capable of conferring on the mark as a whole a level of distinctiveness higher than the minimum level required for registration.

80      More specifically, as regards, first, the English-speaking part of the relevant public, it should be emphasised, as did EUIPO, that the suffix ‘ify’ is commonly used in English, both with adjectives and nouns to form verbs meaning ‘to become, or make someone or something become something’. Consequently, it is necessary to uphold the Board of Appeal’s assessment, in paragraph 61 of the contested decision, according to which the combination of the word ‘shop’ and the suffix ‘ify’ will be understood by the relevant English-speaking public as meaning ‘to make something become a shop’, such that it is highly allusive.

81      Second, as regards the perception of the non-English-speaking part of the relevant public, the sign as a whole is admittedly meaningless in so far as the ending ‘ify’ will not necessarily be perceived as a suffix. However, the first part of the sign ‘shop’ is identified as a significant element, the descriptive nature of which has already been established in paragraph 47 above. This means that any distinctiveness of the earlier mark, considered as a whole, which is greater than the minimum distinctiveness is due to the additional element ‘ify’. In view of the brevity of that additional element, its visual, phonetic and conceptual characteristics are not such as to enhance the distinctiveness of the earlier mark, considered as a whole, beyond a slightly higher than minimum level which it necessarily has by virtue of its registration.

82      In those circumstances, the Board of Appeal’s conclusion regarding the low distinctive character for the English-speaking public and ‘slightly higher than minimum level’ for the non-English-speaking public of the earlier mark must be upheld. The Board of Appeal was also right, in paragraph 87 of the contested decision, to find, for the purposes of the present proceedings, that, first, any distinctiveness of the earlier mark as a whole, which was higher than the minimum level of distinctiveness for the non-English-speaking public was a result of the additional element ‘ify’ and, second, for the English-speaking public, the earlier mark conveyed the message of ‘to make something become a shop’, which is highly allusive for the goods and services at issue, such that, for that public the inherent distinctive character of the earlier mark was low.

83      That conclusion cannot be called into question by the applicant’s arguments that the combination of the two word elements at issue is fanciful for the non-English-speaking public.

84      The applicant relies in particular on certain recent judgments (judgments of 27 January 2021, Olimp Laboratories v EUIPO – OmniVision (Hydrovision), T‑817/19, not published, EU:T:2021:41, and of 24 March 2021, Creaton South-East Europe v EUIPO – Henkel (CREATHERM), T‑168/20, not published, EU:T:2021:160). The assessments made in those judgments cannot, however, be transposed to the present case, since they concern marks, admittedly composed of a descriptive term and a non-descriptive term, but in which the non-descriptive term was longer or occupied a more important position in the mark in question, in such a way as to create a fanciful combination and confer on that mark an average degree of distinctiveness. That is not the situation here.

85      Moreover, it should be emphasised, as the interveners have done, that the relevant public for the goods and services covered by the earlier mark is primarily a professional public in the e-commerce sector, with knowledge of English. Thus, for the vast majority of the relevant public, the earlier mark has only a low distinctive character.

86      In the light of the foregoing, it is necessary to uphold the Board of Appeal’s assessment regarding the ‘slightly higher than minimum level’ or low degree of inherent distinctiveness of the earlier mark.

 The enhanced distinctiveness of the earlier mark acquired through use

87      The applicant claims that the Board of Appeal erred in its assessment of the evidence of the enhanced distinctiveness of the earlier mark acquired through use. In the first place, as regards the United Kingdom of Great Britain and Northern Ireland, it takes the view that the Board of Appeal was wrong to dismiss the evidence of enhanced distinctiveness concerning that country on account of its withdrawal from the European Union during the cancellation proceedings, since the relevant time for assessing enhanced distinctiveness was the date on which the application for registration of the contested mark was filed, when the United Kingdom was part of the European Union. In the second place, so far as concerns Germany, the applicant takes the view that broad press coverage can make up for the absence of other evidence on market share or turnover, as it demonstrates that the mark is known by a large part of the relevant public. Moreover, the applicant’s description by a German magazine (Magazin für professionelle Informationstechnik) as ‘one of the top dogs in the field of SaaS solutions for e-commerce’ should be taken into account as an external, objective and reliable source. Furthermore, evidence from a period close to the date of the application for registration of the contested mark should not be disregarded, since reputation is acquired over time. In the third place, the Board of Appeal erred in not carrying out an overall assessment of the evidence submitted. The volume and content of that body of evidence should have been sufficient to demonstrate the enhanced distinctiveness of the earlier mark acquired through use.

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

89      According to settled case-law, the existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001). It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 15 October 2020, Decathlon v EUIPO – Athlon Custom Sportswear (athlon custom sportswear), T‑349/19, not published, EU:T:2020:488, paragraph 69 and the case-law cited).

90      It should also be noted that, although the inherent distinctive character of the earlier mark concerns an issue of law that EUIPO is required to examine, if necessary of its own motion (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 43), that does not apply to the reputation or enhanced distinctiveness of the earlier mark, evidence of which is a matter of fact which it is up to the parties to provide (see, to that effect, judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraphs 22 and 30 to 33). It is therefore for the party claiming enhanced distinctiveness of the earlier mark to provide EUIPO with solid and objective evidence capable of proving such a fact.

91      The date to be taken into account for assessing the enhanced distinctiveness of the earlier mark is the filing date of the application for registration of the contested mark (see, to that effect, judgment of 15 October 2020, athlon custom sportswear, T‑349/19, not published, EU:T:2020:488, paragraph 74 and the case-law cited), namely, in this case, 8 May 2017.

92      In the present case, the Board of Appeal analysed the evidence provided by the applicant in paragraphs 66 to 86 of the contested decision. It inter alia found that, first, the applicant’s market share in Europe, indicated by the latter, was apparent, in its view, from a press article published on its website ‘commercenews.eu’, albeit containing information pertaining to e-commerce sites worldwide. Second, the applicant had provided evidence concerning the United Kingdom, which could not be taken into account following that country’s withdrawal from the European Union. Third, the evidence concerning Germany consisted only in German press articles, referring to a great extent to the technical characteristics and application of the e-commerce software and not providing objective evidence regarding the applicant’s market share, turnover figures or advertising expenditure. Fourth, for the other Member States, the applicant had provided a website extract showing its market share only in five countries, ranging from 4.2% and 7.6%, on 19 February 2019, that is, well after the filing date of the application for registration of the contested mark. Thus, those elements were not conclusive. The Board of Appeal concluded that the totality of the evidence submitted was insufficient to demonstrate the enhanced distinctiveness of the earlier mark.

93      In the first place, as regards the evidence concerning the United Kingdom, in paragraphs 71 to 74 of the contested decision, the Board of Appeal found that, on 1 February 2020, the United Kingdom had withdrawn from the European Union pursuant to Article 50 TEU and had become a third country. While EU law continued to apply to the United Kingdom and within its territory during a transition period, that transition period had ended on 31 December 2020 in accordance with Articles 126 and 127 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the withdrawal agreement’). As from 1 January 2021, EU trade mark legislation no longer applied to the United Kingdom and within its territory, unless and to the extent that such continued application was explicitly provided for by the withdrawal agreement. The Board of Appeal also referred to paragraph 2 of Communication 2/20 of the Executive Director of EUIPO of 10 September 2020 on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice of EUIPO.

94      The Board of Appeal inferred from this that evidence of reputation or enhanced distinctiveness relating to the United Kingdom could no longer sustain or contribute to the protection of an EU trade mark as from 1 January 2021, even if that evidence predated 1 January 2021. Such a mark had to be reputed or possess enhanced distinctiveness ‘in the EU’ at the moment that the decision was taken (see also Communication 2/20, point 15 concerning reputation). Therefore, in so far as the applicant stressed the enhanced distinctiveness of the earlier mark in the United Kingdom, the Board of Appeal found that that element was irrelevant for the purposes of the proceedings before it.

95      The applicant submits that, although the time for assessing enhanced distinctiveness acquired through use is the date of filing of the application for registration of the contested mark – 8 May 2017 – the United Kingdom was still a member of the European Union at that time and the evidence relating to that territory should therefore be taken into account. At the hearing, it also cited the judgment of 16 March 2022, Nowhere v EUIPO – Ye (APE TEES) (T‑281/21, under appeal, EU:T:2022:139).

96      In that regard, it should be recalled that the withdrawal agreement, which was adopted on 17 October 2019 and entered into force on 1 February 2020, provides for a transition period from 1 February to 31 December 2020 (‘the transition period’). Since the expiry of that transition period, the withdrawal of the United Kingdom from the European Union, commonly called ‘Brexit’, has been in full effect.

97      Article 127 of the withdrawal agreement stipulates that, unless otherwise provided, EU law continues to be applicable in the United Kingdom during the transition period (judgment of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS), T‑421/18, EU:T:2020:433, paragraph 32). A contrario, as the Board of Appeal noted, as from 1 January 2021, EU trade mark legislation no longer applies to the United Kingdom and within its territory, unless and to the extent that such continued application is expressly provided for by the withdrawal agreement.

98      In the present case, it is common ground that the date on which the contested mark was filed is 8 May 2017, that is, before the expiry of the transition period, and that the date of adoption of the contested decision is 18 February 2021, that is, after the expiry of the transition period. Such a factual context is clearly distinguishable from the case where the date of the contested decision predates that expiry (see, to that effect, judgment of 6 October 2021, Indo European Foods v EUIPO – Chakari (Abresham Super Basmati Selaa Grade One World’s Best Rice), T‑342/20, under appeal, EU:T:2021:651, paragraph 22).

99      It is apparent from the case-law of the Court that, in the context of cancellation proceedings, the proprietor of an industrial property right, particularly an earlier mark, must establish that he or she may prohibit the use of the EU trade mark at issue, not only on the filing or priority date of that mark but also on the date on which EUIPO decides on the application for a declaration of invalidity (see, to that effect, judgment of 2 June 2021, Style & Taste v EUIPO – The Polo/Lauren Company (Representation of a polo player), T‑169/19, EU:T:2021:318, paragraphs 29 and 30). The same applies, a fortiori, in the context of opposition proceedings (judgment of 14 February 2019, Beko v EUIPO – ACER (ALTUS), T‑162/18, not published, EU:T:2019:87, paragraphs 41 to 43).

100    It follows, in essence, that, for the evidence of enhanced distinctiveness of the earlier mark acquired through use in the United Kingdom to be relevant for the application for a declaration of invalidity of the contested mark, that use must still be capable of being relied on at the date on which EUIPO rules on the application for a declaration of invalidity.

101    In the present case, however, the date of the contested decision – 18 February 2021 – post-dates the expiry of the transition period.

102    Therefore, the Board of Appeal was obliged not to take into account the use of the earlier mark in the United Kingdom – which was no longer enforceable against the interveners at the date of the contested decision – and to disregard the evidence relating to it.

103    Furthermore, it must be noted, as EUIPO has done, that, in the light of the fundamental principle of territoriality of intellectual property rights, set out in Article 1(2) of Regulation 2017/1001, after the expiry of the transitional period, no conflict can arise in the United Kingdom between the contested mark and the earlier mark, which are no longer protected in that territory. At the date of the contested decision, the public of the United Kingdom was no longer part of the relevant public of the European Union.

104    Lastly, while it is true that the date to be taken into account for assessing the enhanced distinctiveness of the earlier mark is the filing date of the contested trade mark application (see judgment of 15 October 2020, athlon custom sportswear, T‑349/19, not published, EU:T:2020:488, paragraph 74 and the case-law cited), the fact remains that the requirement of permanence or persistence of the prior right at the date on which EUIPO rules on the application for a declaration of invalidity is a matter of enforceability, previous to such a substantive assessment.

105    In the second place, as regards the evidence concerning Germany, according to the applicant, in essence, broad press coverage is sufficient to show that the mark was known to the relevant public.

106    However, it must be recalled that the case-law cited in paragraph 89 above necessitates taking into consideration the market share held by the proprietor of the earlier mark; how intensive, geographically widespread and long-standing use of that mark has been; the amount invested by the undertaking in promoting it; statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls.

107    First, it must be pointed out, as EUIPO has done, that the applicant has not submitted surveys, opinion polls or statements from chambers of commerce or other professional associations, which are generally regarded as relevant, reliable and of high probative value for the purpose of establishing awareness of a mark by a significant part of the relevant public.

108    Second, it should be borne in mind that the affidavit produced by the applicant (exhibit GL 3) providing data on its turnover and advertising expenditure is a statement of one of the applicant’s employees. As such, it has less probative value and must be corroborated by other objective and independent evidence, as is required by the case-law (see, to that effect, judgment of 11 December 2014, Nanu-Nana Joachim Hoepp v OHIM – Vincci Hoteles (NAMMU), T‑498/13, not published, EU:T:2014:1065, paragraph 38 and the case-law cited) and as the Board of Appeal correctly emphasised in paragraph 68 of the contested decision.

109    Third, the article taken from the German magazine Magazin für professionelle Informationstechnik (exhibit GL 10) stating that the applicant was one of the main players in the field of ‘Software as a service’ (SaaS) solutions for e-commerce, while originating from a source independent of the applicant, gives indications as to the number of online shops it operates, as declared by the applicant itself. Thus, that article merely disseminates information originating from the applicant and thus remains an item of evidence that needs to be corroborated by other evidence, as has been noted in paragraph 108 above.

110    Fourth, the article taken from the German magazine Computerwoche (GL 9) does provide information about the applicant’s number of customers, but on a global scale. The Board of Appeal did not therefore commit an error of assessment in finding that that element could not give a precise indication of the German market, although the source was undoubtedly German. The applicant claims that there is nothing ruling out the possibility that that article referred also to the German market. However, that does not suffice to provide precise data on that market in particular, since those data are aggregated for the world market.

111    Fifth, the article taken from the Süddeutsche Zeitung (exhibit GL 7), which was produced for the first time before the Board of Appeal, is dated 25 October 2018. In that regard, the Court agrees with EUIPO that, although evidence dating from a period subsequent to the filing date of the contested trade mark application may, in principle, be deemed relevant (see, to that effect, judgment of 16 October 2018, VF International v EUIPO – Virmani (ANOKHI), T‑548/17, not published, EU:T:2018:686, paragraph 104 and the case-law cited), that is, however, the case only where those documents enable conclusions to be drawn about the situation as it existed at that same date. In the present case, however, it is necessary to take into account the specific characteristics of the goods and services at issue, in connection with the e-commerce market, which is evolving rapidly, as is also borne out by the information in the affidavit produced by the applicant (exhibit GL 3, see paragraph 108 above). Therefore, information dating back more than a year after the date of filing of that application may no longer give a true picture of the situation at the relevant date.

112    In those circumstances, the arguments put forward by the applicant with regard to the Board of Appeal’s alleged errors of assessment regarding the items of evidence considered individually cannot succeed.

113    In the third place, as regards the applicant’s criticism of the Board of Appeal for not having carrying out an overall assessment of the evidence provided, in accordance with the case-law cited in paragraph 89 above, first of all, it is apparent from paragraph 66 of the contested decision that the Board of Appeal took into account the various items of evidence produced by the applicant. It then analysed them one after the other, in paragraphs 69 to 84 of that decision, noting, moreover, in paragraph 85 thereof, that, apart from a website extract showing the applicant’s market share in five Member States, but dating from 19 February 2019, that is, well after the filing date of the application for registration of the contested mark, the applicant had not provided any evidence concerning the other Member States. Last, in paragraph 86 of the contested decision, in a section entitled ‘Conclusion on distinctive character’, it found that the applicant had not demonstrated an enhanced distinctiveness of the earlier mark for the relevant public in the European Union.

114    Such a ‘conclusion’ should be considered as necessarily being the result of an overall assessment. The Board of Appeal implicitly yet necessarily based this conclusion on the consideration that the totality of the items of evidence, each of which either has proved to be irrelevant from a temporal perspective or has little probative value, unsupported by other objective and reliable evidence, is not sufficient for the purpose of demonstrating an enhanced distinctiveness of the earlier mark.

115    Accordingly, the Board of Appeal was right to conclude that the evidence submitted, considered as a whole, was not sufficient to demonstrate an enhanced distinctiveness of the earlier mark for the goods and services at issue.

 Likelihood of confusion

116    The applicant contests the Board of Appeal’s global assessment of the likelihood of confusion, taking the view that it is based on several errors. In particular, the applicant contests the assessment of the level of attention of the relevant public, set out in paragraph 33 of the contested decision, stating that, even with a high level of attention, having regard to the imperfect memory of that public, a likelihood of confusion cannot be excluded where the goods and services in question are partly identical and partly similar, where the earlier mark has an average or even above-average distinctiveness due to its extensive and long-standing use, and where the differences between the signs consist in the additional syllable ‘fy’ of the earlier mark and in the stylisation of the contested mark. Even if the earlier mark were to be found to be weakly distinctive, such a finding would have no decisive influence on whether there is a likelihood of confusion, contrary to what is established in paragraphs 94 and 95 of the same decision, where the signs and the goods and services covered are similar, as is confirmed by the case-law of the Court of Justice. If the interveners wished to dispute the lack of distinctive character of the earlier mark, they should have done so by applying for a declaration of invalidity of that mark, in an action based on Article 7(1)(b) and (c) of Regulation No 207/2009. If, in an action based on the existence of a likelihood of confusion, the protection afforded to the earlier mark did not extend to the present case, it would be limited to identical or near-identical reproductions of that mark.

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

118    According to settled case-law, 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 trade marks, and vice versa (judgments of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraphs 67 to 69 and the case-law cited, and of 15 October 2020, BIOPLAST BIOPLASTICS FOR A BETTER LIFE, T‑2/20, not published, EU:T:2020:493, paragraph 69 and the case-law cited; see also, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).

119    It is also settled case-law that the degree of distinctiveness of the earlier mark, which determines the extent of the protection conferred by it, is one of the relevant factors in the case in point. Where the distinctiveness of the earlier mark is significant, such a circumstance is likely to increase the likelihood of confusion. That being so, the existence of a likelihood of confusion is not precluded where the distinctiveness of the earlier mark is weak (see judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).

120    Where the earlier trade mark and the contested mark coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists (judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53).

121    In the present case, the Board of Appeal considered, in essence, that, despite the identity or similarity of the goods and services concerned, given the descriptive nature of the element common to the two marks at issue, namely ‘shop’, the attention of the relevant public focused on the differentiating elements, in particular, on the ‘ify’ and ‘pi’ endings of the two signs, meaning that the coincidence between the signs resulting from the presence of the said common element was not decisive and that the similarity was weak overall. Furthermore, in view of the high level of attention for professionals and higher than average level of attention for the general public as well as the weak distinctive character of the earlier mark, there was no likelihood of confusion.

122    At the outset, it should be noted that the applicant disputes the analysis of the likelihood of confusion carried out by the Board of Appeal on the basis of the premiss of various errors of assessment relating to the level of attention of the relevant public, the degree of similarity between the signs and the distinctive character of the earlier mark. The Court having found that the contested decision was free of such errors of assessment (see paragraphs 20 to 115 above), the analysis of the likelihood of confusion cannot be vitiated by this, either.

123    Moreover, it should be borne in mind that, while the finding of a weak distinctive character does not in itself prevent a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45), on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 63), it appears, however, that where the elements of similarity between two signs are the result of the fact that, like in this case, they have a weakly distinctive component in common, the impact of those elements of similarity on the global assessment of the likelihood of confusion is itself low (see, to that effect, judgments of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited; of 15 October 2020, athlon custom sportswear, T‑349/19, not published, EU:T:2020:488, paragraph 90; and of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).

124    That is true, in the present case, of the weakly distinctive and non-dominant element of similarity ‘shop’, the common presence of which within both signs is not decisive and has only a minor impact on the assessment of the likelihood of confusion.

125    Moreover, as the Board of Appeal pointed out in paragraph 93 of the contested decision, although, in accordance with the case-law of the Court of Justice, the more distinctive the earlier mark, the greater will be the likelihood of confusion, the opposite is also true. With regard to a trade mark with a weak distinctive character, and which thus has a lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking, the degree of similarity between the signs should, in principle, be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor (see, to that effect, judgment of 5 October 2020, NATURANOVE, T‑602/19, not published, EU:T:2020:463, paragraph 56).

126    In the present case, as is apparent from paragraphs 39 to 75 above, the degree of similarity between the signs is far from being so high. In particular, the differences relating to the additional elements of the signs at issue, other than the weakly distinctive and non-dominant common element ‘shop’, are not negligible in the overall impression of those signs for the relevant public, but offset the similarities which result solely from the presence of that common element, especially since the relevant public will have a high or higher than average level of attention.

127    Ultimately, it must be concluded, in terms of the global assessment of the likelihood of confusion, that, having regard to the low visual, average phonetic and conceptual similarity, essentially of low impact between the signs at issue, to the weak distinctive character of the earlier mark and to the relatively high or higher than average level of attention of the relevant public, notwithstanding its imperfect memory and the identity or similarity of the goods and services at issue, no likelihood of confusion can exist.

128    The Board of Appeal was therefore right to consider, in paragraphs 98 and 99 of the contested decision, that the relevant public was not likely to believe that the goods or services provided under the marks at issue came from the same undertaking or from economically linked undertakings, and that there was no likelihood of confusion.

129    In view of all of the foregoing considerations, the applicant’s single plea in law must be rejected and the action must therefore be dismissed in its entirety.

 Costs

130    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.

131    Since the applicant has been unsuccessful, it must be ordered to pay the costs relating to the present proceedings, in accordance with the forms of order sought by EUIPO and the interveners. Furthermore, as regards the costs incurred by the latter before the Board of Appeal, it is sufficient to note that, given that the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs at issue (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – General Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Shopify Inc. to pay the costs.

Delivered in open court in Luxembourg on 12 October 2022.

*      Language of the case: English.

1      The present judgment is the subject of publication in extract form.

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