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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

18 January 2023 (*)

(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark YOGA ALLIANCE INDIA INTERNATIONAL – Earlier EU figurative mark yoga ALLIANCE – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Examination of the facts by EUIPO of its own motion – Article 95(1) of Regulation 2017/1001)

In Case T‑443/21,

YAplus DBA Yoga Alliance, established in Arlington, Virginia (United States), represented by A. Thünken, lawyer,

applicant,

v

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

defendant,

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

Swami Vidyanand, residing in Villupuram (India), represented by L. Saglietti and E. Bianco, lawyers,

THE GENERAL COURT (Ninth Chamber),

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

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 14 September 2022,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, YAplus DBA Yoga Alliance, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 May 2021 (Case R 1062/2020-1) (‘the contested decision’).

 Background to the dispute

2        On 16 April 2018, the intervener, Mr Swami Vidyanand, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration designating the European Union under number 1415321 of the figurative mark represented below, which was notified to EUIPO on 2 August 2018:

3        The services in respect of which registration was sought are in Class 41 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 to the following description: ‘Education; providing of training; entertainment; sporting and cultural activities’.

4        On 5 December 2018, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

5        The opposition was based on the earlier EU figurative mark reproduced below:

6        The earlier mark was filed on 27 April 2016 and registered on 22 December 2016 under number 15378839 for services in Classes 35, 41 and 42 corresponding, for each of those classes, to the following description:

–        Class 35: ‘Association services, namely, promoting the interests of yoga teachers and yoga schools; public advocacy to promote awareness of yoga’;

–        Class 41: ‘Setting standards and reviewing practices to assure compliance in the provision of yoga education and training; Educational services, namely, providing classes, conferences, workshops, and seminars in the field of yoga; development of educational materials for yoga schools and teachers; setting of training and educational standards for yoga schools and teachers’;

–        Class 42: ‘Testing, analysis, and evaluation of yoga teachers and schools to determine conformity with certification standards’.

7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of 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).

8        On 2 April 2020, the Opposition Division upheld the opposition. It found, in essence, first, that the services at issue were identical or similar and that they were aimed both at the general public and at professionals with an average level of attention, second, that the comparison of the signs had to be made from the point of view of non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the European Union and that the signs were visually similar to an average degree, highly similar phonetically and conceptually similar to a low degree. Third, it found that the distinctive character of the earlier mark was normal despite the presence within it of certain elements, at most weakly distinctive, such as their decorative elements or the common word element ‘yoga’. Lastly, it found that there was a likelihood of confusion on the basis of Article 8(1)(b) of Regulation 2017/1001.

9        On 27 May 2020, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.

10      By the contested decision, the Board of Appeal annulled the decision of the Opposition Division and, on the basis of Article 8(1)(b) of Regulation 2017/1001, ruled out the existence of a likelihood of confusion on the part of the relevant public.

11      In essence, the Board of Appeal found that the services at issue were aimed at the non-English-speaking general public in the European Union, whose level of attention varied from average to above average. Next, it found that the services at issue were in part identical and in part similar to varying degrees. As regards the comparison of the signs at issue, the Board of Appeal concluded that there was a low degree of visual similarity, an average degree of phonetic similarity and ‘partial’ similarity from a conceptual perspective.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and, as the case may be, the intervener to pay the costs incurred before the Court and in the proceedings before EUIPO.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

14      The intervener claims the Court should:

–        dismiss the action;

–        uphold the contested decision;

–        order the applicant to pay all the costs, including the costs incurred in the appeal and opposition proceedings.

 Law

15      In support of its action, the applicant relies on two pleas, alleging, first, infringement of Article 95(1) of Regulation 2017/1001 and, second, infringement of Article 8(1)(b) of that regulation.

 The first plea in law, alleging infringement of Article 95(1) of Regulation 2017/1001

16      The applicant complains that the Board of Appeal infringed Article 95(1) of Regulation 2017/1001 by basing the absence of a likelihood of confusion on a fact which had not been put forward by the parties, namely explanations relating to the word ‘alliance’ in paragraph 56 of the contested decision, which were based on the consideration that the relevant public would not perceive that word as an indication of the commercial origin of the services at issue. It submits in that regard that, in proceedings relating to relative grounds for refusal of registration such as those in the present case, the Board of Appeal must confine itself to examining the facts, evidence and arguments provided by the parties and the relief sought.

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

18      Under Article 95(1) of Regulation 2017/1001 ‘EUIPO shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’.

19      Indeed, under Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, so that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties. The fact remains that the Board of Appeal is required to decide on all issues which, in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of that regulation and in respect of which it has all the information required in order to be able to take a decision, even if no element of law related to those issues has been relied on by the parties before it (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41).

20      In paragraph 56 of the contested decision, the Board of Appeal found that, given the limited distinctiveness of the common elements of the marks at issue and considering that in the field of yoga there was a multiplicity of associations, foundations, federations and clubs all over the world, any number of which might have formed alliances with one another, the reference to the word ‘alliance’ was not such as to mislead the relevant public as to the commercial origin of the services at issue. It found, first, that that public would attempt to identify the marks forming part of such an alliance and, second, that the differentiating elements between the marks at issue made it possible to rule out any likelihood of confusion.

21      In the present case, it must be stated that the Board of Appeal’s assessments in paragraph 56 of the contested decision constitute the logical continuation of the findings previously adopted by it in paragraphs 38, 39 and 40 of the contested decision in the context of the examination of the distinctive character of the common word elements of the marks at issue and the level of understanding of those elements, and, in particular, of the word ‘alliance’ by the relevant public. Thus, the Board of Appeal found, first of all, that that word could easily be understood by the relevant public because of its linguistic proximity to equivalent words in several languages of the relevant territory and its commonplace nature as a basic English word. Accordingly, it then found that the relevant public in the field of yoga would not be misled by the reference to an alliance, but would try to obtain information about the undertakings forming part of it. It follows that the Board of Appeal merely envisaged the reaction of consumers when the relevant public would be faced with the word elements ‘yoga alliance’ on the market, with the aim of ensuring the correct application of Regulation 2017/1001, in accordance with paragraph 19 above.

22      Furthermore, at the hearing, the applicant disputed the argument put forward by EUIPO in its written pleadings that the findings in paragraph 56 of the contested decision could not be regarded as well-known facts, within the meaning of the case-law, in order to avoid the application of Article 95(1) of Regulation 2017/1001. The applicant argued, in particular, that the Board of Appeal’s assertion that it was likely to be known to anyone that there was a multiplicity of associations in the field of yoga could not be regarded as a well-known fact, since that consideration was not available from generally accessible sources, in accordance with settled case-law.

23      First, without it being necessary to examine whether the contested assessment must be regarded as a well-known fact, in other words, whether the relevant public knew of the existence of other alliances in the field of yoga, it is sufficient to note that, in so far as it has been established that the relevant public was able to understand the meaning of the word ‘alliance’ and, given that an alliance is made up of two or more different operators, that public will not perceive the word elements ‘yoga alliance’ as an indication of origin, but as referring to the set of operators forming that alliance. Accordingly, in explaining that that public would be inclined to obtain information about the entities that were part of such an alliance, the Board of Appeal merely drew logical inferences from the findings it had previously made on the basis of the evidence and arguments in the file, as mentioned in paragraph 21 above.

24      Furthermore, it must be stated that the existence of associations, foundations or federations bringing together different undertakings or clubs belonging to the same sector of activity is a reality which can be envisaged in many fields and, in particular, in sporting disciplines, in the dancing sector or activities related to physical well-being, which includes the practice of yoga. Therefore, the Board of Appeal was right to find that there was such a possibility in the present case when assessing the likelihood of confusion.

25      Second, even if the contested assessment of the Board of Appeal were to be regarded as falling within the category of well-known facts, it should be recalled that, according to settled case-law, the bodies of EUIPO may base their decisions on well-known facts which have not been relied on before it, without having to establish their accuracy (see judgment of 10 September 2019, Oakley v EUIPO – Xuebo Ye (Representation of a discontinuous ellipse), T‑744/18, not published, EU:T:2019:568, paragraphs 57 and 58 and the case-law cited). It is also clear from the case-law that, in order to challenge a well-known fact and thus oblige EUIPO to provide evidence in response to that challenge, the applicant must do so in a detailed manner (see, to that effect, judgment of 10 September 2019, Representation of a discontinuous ellipse, T‑744/18, not published, EU:T:2019:568, paragraph 63).

26      In that regard, it should be noted that the applicant merely expressed its conflicting opinion and denied that the assessment contained in paragraph 56 of the contested decision is a well-known fact, without providing any evidence to demonstrate the truth of its claims, in accordance with the case-law cited in paragraph 25 above.

27      Therefore, it must be held that the assessment in paragraph 56 of the contested decision does not fall within the scope of Article 95(1) of Regulation 2017/1001, in accordance with the case-law cited in paragraphs 19 and 25 above.

28      Consequently, the first plea must be rejected.

 The second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

29      In the context of the second plea, the applicant raises three complaints with regard to the contested decision, alleging, in essence, first, an incorrect assessment of the level of attention of the relevant public, second, an error in the assessment of the degree of similarity of the signs at issue, in particular with regard to the non-English-speaking part of the relevant public, and, third, an incorrect assessment of the factors relevant to the analysis of the overall likelihood of confusion.

30      EUIPO and the intervener confirm the Board of Appeal’s analysis and submit that the latter correctly found that no likelihood of confusion existed in respect of the services at issue in the present case.

31      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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 that regulation, ‘earlier trade marks’ means, inter alia, 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.

32      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).

33      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).

34      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).

35      The present plea in law must be examined in the light of the abovementioned principles.

 The relevant public and its level of attention

36      In the present case, in paragraphs 20 and 21 of the contested decision, the Board of Appeal extended the definition of the relevant public adopted by the Opposition Division beyond Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers and found that that public consisted, in respect of the services at issue in Class 41, of the non-English-speaking general public throughout the European Union. Since that assessment, which the applicant, moreover, does not dispute, is not vitiated by errors, it must be confirmed.

37      Next, the Board of Appeal found that the level of attention of the average consumer with regard to the ‘educational’ and ‘training’ services in Class 41 of the mark applied for was above average, since potential customers were likely to explore both the nature and the standard of service that is being offered prior to purchase, in order to ensure that those services satisfy their requirements. By contrast, it found that their level of attention with regard to ‘entertainment’ and ‘sporting and cultural activities’ was only average, since those services covered a wide range of activities that may oscillate between high-price international events and rather low-key activities in a very local setting.

38      The applicant disputes the level of attention of the relevant public adopted by the Board of Appeal as regards the ‘educational’ and ‘training’ services. It claims that the level of attention of that public must be regarded as being merely average. In that regard, it submits, in particular, that there is a close connection between ‘sporting and cultural activities’ and ‘educational’ or ‘training’ services and that there is therefore nothing to suggest that the level of attention of consumers would vary considerably between those services. The applicant also submits that ‘educational services’ do not necessarily involve expensive expenditure and that they may even constitute low-key activities in a very local setting, similar to what was observed by the Board of Appeal in relation to ‘entertainment’ services and ‘sporting and cultural activities’.

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

40      According to settled 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).

41      In the present case, it is necessary, first of all, to uphold the Board of Appeal’s finding that both ‘entertainment’ services and ‘sporting and cultural activities’ may be aimed at a fairly general non-specialised public, which, moreover, has not been disputed by the applicant.

42      Next, it must be held that the Board of Appeal was right to find that the level of attention of the relevant public for ‘training’ services, disputed by the applicant, was above average.

43      ‘Training’ services in the field of yoga refer to the training of future teachers or instructors in that field. By their very nature, those services are aimed at the general public with at least an above average level of attention, given that they are not everyday consumer services and involve a certain long-term commitment, which means that their purchase is preceded by a process of considerable reflection on the part of the consumer, having regard, precisely, to the size of the investment to be made in terms of money and time.

44      In that regard, as EUIPO correctly submits, the ‘training’ services at issue are aimed at expanding knowledge and developing skills, usually through a commitment in terms of time and resources on the part of the relevant public. They are services that do not satisfy a current or recurring need, but a personal or leisure interest. In principle, the public at large will use them to acquire knowledge and skills for the purpose of professional and functional retraining or to develop specific technical expertise. Professionals will consider them for the purpose of further training in order to acquire, maintain or expand knowledge and skills related to their area of work (see, by analogy, judgment of 9 December 2020, Man and Machine v EUIPO – Bim Freelance (bim ready), T‑819/19, not published, EU:T:2020:596, paragraph 35).

45      Nevertheless, as regards the level of attention of consumers of ‘educational’ services, it should be noted that this varies from average to above average.

46      In that regard, it is necessary to make a distinction between the category of ‘training’ services and that of ‘educational’ services and make clear that although, admittedly, they share the same nature, both being intended for education and teaching of the practice of yoga, those services nevertheless differ in terms of their use, their recipients and their cost.

47      ‘Educational’ services refer to the teaching of the practice of yoga through courses which are aimed at the general public displaying an average level of attention and which may be costly, but may also be offered for a lower price.

48      Thus, it must be held that the level of attention of the relevant public for ‘training’ services is above average, whereas the level of attention for ‘educational’ services varies from average to above average.

49      Accordingly, it is therefore necessary to take into consideration, in order to define the relevant public with regard to the services at issue, the non-English-speaking general public in the European Union with a level of attention that is either average or above average, depending on the services at issue, in accordance with the case-law cited in paragraph 40 above.

50      It follows that the Board of Appeal made an error of assessment when it found the level of attention of the relevant public with regard to ‘educational’ services to be above average. However, such an error of assessment would justify the annulment of the contested decision only in so far as it affects the outcome of the proceedings. Thus, the assessment of the impact of that error will be examined in the assessment of the overall likelihood of confusion.

51      In the light of the foregoing, in so far as the Board of Appeal erred as regards the level of attention of the relevant public in relation to ‘educational’ services, the first complaint of the second plea must be upheld in part.

 The comparison of the services at issue

52      The Board of Appeal found that the ‘educational services, namely, providing classes, conferences, workshops, and seminars in the field of yoga’, covered by the earlier mark, overlapped with and included the category of ‘training services’ covered by the mark applied for, and that the two categories of services were therefore identical.

53      Furthermore, the Board of Appeal found that the ‘entertainment’ services covered by the mark applied for were similar to a certain degree to the ‘educational services’ covered by the earlier mark, since those services could also be complementary to each other and distributed through the same channels, with the result that the relevant public could think that they were provided by the same undertaking.

54      Furthermore, the Board of Appeal found that the ‘educational services’ covered by the earlier mark were similar to an average degree to the ‘sporting activities’ and the ‘cultural activities’ covered by the mark applied for.

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

 The comparison of the signs at issue

56      The applicant complains, in essence, that the Board of Appeal erred in its assessments of the distinctive character of the word elements ‘yoga alliance’ and of the visual, phonetic and conceptual similarity of the signs at issue.

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

58      According to the case-law, 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).

59      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 at issue 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. 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).

60      In the present case, the signs to be compared are the following:

61      The earlier mark consists of three black elements against a white background with no outline. It has, first, a large figurative element made up of four intertwining leaves or petals of a flower and represented by means of stylised lines of noticeable thickness. Second, it contains the word element ‘yoga’ to the right of the figurative element, written in lower-case characters in bold of the same line thickness and stylisation as the figurative element mentioned above. Third, the sign contains the word element ‘alliance’, written in upper case and placed below the word element ‘yoga’, but smaller in size than that element.

62      The mark applied for is structured in three levels in successive order. It contains, first, a figurative element in the shape of the globe, which is surrounded by a wreath of leaves against a white background. Those elements are in a light blue colour, except for the outline of the continents on the globe, which forms part of the white background of the sign. Second, it contains the word elements ‘yoga alliance’ represented in light blue upper-case letters. Third, the word elements ‘india international’ appear in the lower part of the sign and are represented in white upper-case letters, which are slightly smaller in size and framed by a rectangle with a light blue background.

63      In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the findings relating to the distinctive character of the word elements ‘yoga alliance’ made by the Board of Appeal and those relating to the distinctive and dominant character of the components of the signs at issue.

–       The distinctive character of the word elements ‘yoga alliance’

64      The Board of Appeal found, in paragraphs 37 to 40 of the contested decision, that the word elements ‘yoga alliance’ in the earlier mark had very weak distinctive character, if any, in relation to the services at issue in Class 41, all of which can be for the purpose of yoga. More specifically, it found that the word ‘yoga’ could be easily understood throughout the European Union, particularly as there were close equivalents in several languages, including, inter alia, in Czech and Hungarian ‘jóga’, in Greek ‘γιόγκα’ (giogka) and in Croatian and Polish ‘joga’.

65      It also found that the word ‘alliance’ was a fairly basic English word, to which the general public in the European Union was frequently exposed in various fields of everyday life, such as air transport, banking, insurance and health. It added that that word was identical in French and had close equivalents in most of the languages of the European Union, namely ‘alianza’ in Spanish, ‘aliance’ in Czech, ‘Allianz’ in German, ‘alleanza’ in Italian, ‘alianse’ in Latvian, ‘aljansas’ in Lithuanian, ‘aliança’ in Portuguese or ‘alianţă’ in Romanian. Lastly, the Board of Appeal found that that word simply referred to an association formed between entities with the aim of mutual or common interests and that, therefore, it was not distinctive, since it did not contain any specific information as to the commercial origin of the provider of the services at issue.

66      The applicant disputes the Board of Appeal’s reasoning and submits that, for the non-English-speaking part of the public, in particular the Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking part, the word elements ‘yoga alliance’ in the earlier mark were distinctive to an average degree. It claims, in particular, first, that it is not possible to conclude that the word ‘yoga’ would be understood by the relevant public despite the existence of very similar words in the non-English-speaking regions concerned, because knowledge of a foreign language cannot, in general, be assumed. Second, the applicant adds that the word ‘alliance’ has no similar equivalents in Greek, Croatian, Hungarian or Polish, as established by the Opposition Division and without any challenge either by the intervener or by the Board of Appeal. Therefore, it submits that there is nothing to support the conclusion that that part of the non-English-speaking public would understand the meaning of that word.

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

68      As a preliminary point, it should be recalled that, according to the case-law, for the purpose of assessing 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 at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 12 July 2012, Winzer Pharma v OHIM – Alcon (BAÑOFTAL), T‑346/09, not published, EU:T:2012:368, paragraph 78).

69      Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. 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. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 10 March 2021, Kerry Luxembourg v EUIPO – Ornua (KERRYMAID), T‑693/19, not published, EU:T:2021:124, paragraph 55 and the case-law cited).

70      Next, the mere linguistic distinction is not sufficient to exclude the possibility that the word elements at issue will be understood by the relevant public. The fact remains that such a distinction, in so far as it requires translation on the part of the consumer, is capable – depending, inter alia, on the linguistic knowledge of the relevant public, the degree of closeness of the languages concerned and the actual words used by the signs in question – of preventing the relevant public, to a greater or lesser extent, from making an immediate conceptual comparison (see judgment of 12 December 2014, Groupe Canal + v OHIM – Euronews (News+), T‑591/13, not published, EU:T:2014:1074, paragraph 41 and the case-law cited).

71      Lastly, according to the case-law, the relevant public, when faced with a word sign, breaks it down into word elements which, for it, suggest a specific meaning or which resemble words known to it (see judgment of 3 December 2015, TrekStor v OHIM – Scanlab (iDrive), T‑105/14, not published, EU:T:2015:924, paragraph 72 and the case-law cited).

72      In the present case, first of all, it must be stated that, as is apparent from the summary of the findings of the Board of Appeal in paragraphs 64 and 65 above, both the word ‘yoga’ and the word ‘alliance’ are very similar, if not identical in certain cases, to the equivalent words in the languages of most non-English-speaking countries of the European Union.

73      As regards, first, the relevant public’s understanding of the word ‘yoga’, it must be stated, as observed by EUIPO, that consumers of the services at issue are generally open-minded and ‘internationally-oriented’. Therefore, it is possible to take the view that the consumers concerned have necessarily already been exposed to the content and practices of yoga beforehand and will therefore, most probably, know the international word ‘yoga’. It can therefore be concluded that it is very likely that average consumers will know the word ‘yoga’, especially since it is well known that the practice of yoga is a worldwide phenomenon of great popularity.

74      Second, as regards the ability of the relevant public to understand the word ‘alliance’, it should be noted that there are very similar equivalents to that word in most non-English-speaking countries of the European Union. However, irrespective of whether or not that word is part of basic English vocabulary, it must be held, in accordance with the case-law cited in paragraphs 70 and 71 above, that the linguistic distinction between the word elements of the signs at issue relied on by the applicant will not prevent the relevant public from understanding the semantic content of the word elements of the earlier mark.

75      Therefore, as the Board of Appeal rightly found, although it is true that there are no close equivalents of that word in Greek, Croatian, Hungarian or Polish, as the applicant has pointed out, the fact remains that that word is commonly used within the European Union in various fields of everyday life, such as air transport, banking, insurance and health. That finding, which, moreover, is not disputed by the applicant, must be upheld. Accordingly, it may be concluded that, irrespective of the absence of close equivalents in certain languages spoken in the relevant territory, the word ‘alliance’ is likely to be understood by the average consumer of the services at issue.

76      Consequently, the Board of Appeal was right to find, in paragraph 40 of the contested decision, that the word elements of the earlier mark had very weak, distinctive character, if any, for the relevant public, given that the services at issue can all be for the purpose of yoga.

–       The dominant and distinctive elements of the signs at issue

77      The Board of Appeal found that the figurative element of the earlier mark in the shape of a flower was co-dominant with the word element ‘yoga’ on account of their size and line thickness, which contributed to their greater prominence. As regards the word ‘alliance’, the Board of Appeal found that it was of secondary importance because of its smaller size and its position. As regards the mark applied for, the Board of Appeal found that there was no dominant element, since the figurative elements of the sign, although larger in size, did not eclipse its word elements because of their capitalisation and their contrasting colouring.

78      The applicant disputes the Board of Appeal’s assessment and submits, first, that the word elements ‘yoga alliance’, common to the signs at issue, have greater weight in the visual comparison of those signs, given the stronger impact of the word elements in composite figurative marks, in accordance with the case-law, and, second, that the figurative elements are essentially decorative and, at most, weakly distinctive. Consequently, it claims that the signs at issue are visually similar to an average degree.

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

80      First of all, for the purposes of assessing the visual similarity of the signs, account must be taken of the distinctive and dominant character of their components, in accordance with the case-law cited in paragraph 58 above.

81      Thus, in the first place, as regards the earlier mark, the Board of Appeal’s assessment that the figurative element in the shape of a flower is co-dominant with the word element ‘yoga’ must be upheld. The co-dominance of those elements visually is justified by characteristics such as their similar stylisation, size and their identical line thickness, which help to separate them from the word element ‘alliance’. For its part, the word ‘alliance’ plays a secondary role in that sign, since it is represented in smaller characters and with a much thinner line than the other elements. In addition, that word occupies a secondary position in the lower part of the earlier mark, below the word ‘yoga’.

82      The word elements ‘yoga alliance’ have very weak distinctive character, if any, as is apparent from the analysis carried out in paragraphs 72 to 75 above. As regards the distinctive character of the figurative element in the shape of a flower, it should be noted that, as the intervener submitted in his written pleadings, the four intertwining petals are likely to evoke the image of a lotus flower in the mind of the average consumer, which is a widely known symbol for yoga, thus having a certain allusive character with regard to the services at issue.

83      In the second place, as regards the dominant character of the components of the mark applied for, as the Board of Appeal found in paragraph 46 of the contested decision, although the figurative element in the shape of the globe surrounded by a wreath of leaves is larger than the word elements of which it is composed, the latter are just as eye-catching as the figurative element because of their capitalisation and the contrast between their colours. Therefore, the Board of Appeal was entitled to conclude that the mark applied for did not contain dominant elements.

84      Furthermore, the Board of Appeal’s assessment of the lack of inherent distinctive character of the elements of that mark must be upheld. Beyond the descriptive character of the word elements ‘yoga alliance’, the globe merely reinforces the concept of the word element ‘international’ contained in the lower part of the mark, and it does not fulfil the trade mark’s function of indicating the commercial origin of the mark either. Furthermore, the wreath is a typical decorative element representing triumph or success. Lastly, the word ‘india’ merely refers to the geographical location in which the company is established.

85      In that regard, it should be noted that, contrary to what the applicant claims, although it is true that, in general, the word elements of a composite figurative mark are supposed to have a greater impact on the average consumer because the consumer will more easily refer to the services at issue by citing the name of that mark than by describing the figurative elements, the fact remains that, in accordance with the case-law cited in paragraph 69 above, that case-law criterion does not have an absolute character, in particular where some of the elements of a trade mark are descriptive in nature, since they are less likely to influence the public’s perception and to be remembered by it.

–        Visual similarity

86      The Board of Appeal found that the coincidence in the signs at issue of the word elements ‘yoga alliance’ was qualified by the presence of the rest of the figurative elements which differed and therefore it concluded that there was a low degree of visual similarity.

87      In the present case, the signs at issue coincide, visually, in the word elements ‘yoga alliance’, which are descriptive of the services at issue, whereas they differ in the word elements ‘india international’, the abovementioned figurative elements and the colour in which they are represented. Thus, it must be held that, despite the identical presence of those word elements, the signs at issue display, in the eyes of the relevant public, clear aesthetic differences in the respective overall impression they create.

88      It follows that, in accordance with the findings made in paragraphs 80 to 85 above and taking into account both the limited impact of the single common element of the marks at issue when comparing the signs and the notable visual differences in their figurative elements, the Board of Appeal was entitled to find that the signs at issue were visually similar to a low degree.

–       Phonetic similarity

89      The Board of Appeal found that there was an average degree of phonetic similarity between the signs at issue because, first, their decorative elements would not be pronounced, second, the overlap between the word elements ‘yoga alliance’ was qualified due to its lack of distinctive character and, third, the impact of the different word elements ‘india’ and ‘international’ would be reduced because they were also weakly distinctive.

90      The applicant submits that, since the word elements ‘yoga alliance’ have average distinctive character, contrary to the assessment of the Board of Appeal, the phonetic overlap between those elements in the signs at issue makes them highly similar phonetically.

91      EUIPO disputes the applicant’s arguments.

92      In the present case, the signs at issue coincide in the pronunciation of the common word elements ‘yoga alliance’ and differ in relation to the pronunciation of the word elements ‘india international’, which are present in the mark applied for, as the figurative elements have no impact phonetically.

93      In that regard, while it is true that the phonetic similarity could be high because of the identical pronunciation of the word elements ‘yoga alliance’, account must nevertheless be taken of the limited impact that those elements are likely to have on consumers, given their weak distinctive character, as found in paragraph 85 above. That fact therefore contributes to reducing the phonetic similarity of the marks at issue.

94      Consequently, the Board of Appeal’s assessment that the signs at issue are phonetically similar to an average degree must also be upheld.

–       Conceptual similarity

95      The Board of Appeal found that there was a ‘partial’ similarity from a conceptual perspective between the marks at issue because, on the one hand, the two signs refer to an alliance for yoga, but, on the other hand, they differ in the sense that the alliance of the mark applied for is linked to India.

96      At the hearing on 14 September 2022, following a question put by the Court seeking clarification of the Board of Appeal’s assessment of the conceptual similarity of the signs at issue as being ‘partial’, EUIPO argued that that assessment should be understood as referring to a certain degree of similarity between them. In the interests of clarity, the assessment of the conceptual similarity carried out by the Board of Appeal must therefore be interpreted as meaning ‘average’.

97      The applicant submits that none of the marks has any discernible meaning for the Greek-, Croatian-, Hungarian- and Polish-speaking public and that, therefore, no assessment of conceptual similarity can be carried out.

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

99      In the present case, it should be noted, first of all, that, contrary to what the applicant claims, the meaning of the word elements in the marks at issue is likely to be understood by all consumers of the non-English-speaking public concerned, as has been stated in paragraphs 72 to 75 above. There is therefore some conceptual similarity in so far as the two signs refer to an alliance for yoga, although the impact of that common word element is limited on account of its descriptive character.

100    The signs at issue also contain other word and figurative elements which convey concepts likely to be understood by the relevant public and which may help to alter the perception of the signs by that public.

101    Thus, as regards the mark applied for, the concept conveyed by the differing word elements ‘india international’ is reinforced by the presence of the globe, whereas the wreath of leaves surrounding the globe refers to the idea of a frequently used honorary award and symbolising, according to the case-law, aspects such as glory, success or high quality (see, to that effect, judgment of 25 June 2020, Pavel v EUIPO – bugatti (B), T‑114/19, not published, EU:T:2020:286, paragraph 84). Consequently, it is plausible that the mark applied for could refer to the concept of an internationally oriented yoga alliance established in India and enjoying considerable prestige.

102    As regards the earlier mark, as the intervener has pointed out, the presence of the figurative element consisting of four intertwining leaves or petals in the shape of a flower is likely to evoke in the minds of consumers the concept of a lotus flower. That element is commonly represented in the discipline of yoga and symbolises purity, enlightenment and spiritual elevation. Therefore, the earlier mark could be perceived as a yoga alliance or partnership embodying those values and attributes represented by the lotus flower.

103    It follows that, in view of the similarities and differences between the signs, the Board of Appeal was entitled to find, without making an error of assessment, that the marks at issue were conceptually similar to an average degree.

104    Consequently, the second complaint of the second plea must be rejected as unfounded.

–       The distinctiveness of the earlier mark

105    The Board of Appeal found, in paragraph 53 of the contested decision, that the distinctive character of the earlier mark stemmed mainly from its figurative element in the shape of a leaf and, to a lesser extent, from the stylisation of its word element ‘yoga’.

106    The applicant submits, in essence, that, since the components of the earlier mark are distinctive with regard to the relevant public, the earlier mark has normal inherent distinctiveness.

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

108    As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the earlier trade mark on the market in question. The more distinctive the earlier trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20) Therefore, the distinctiveness of the earlier mark is one of the factors to be taken into account in the assessment of likelihood of confusion.

109    In that context, it is necessary to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a composite mark possesses, which determines its ability to dominate the overall impression created by the mark (order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 9 April 2014, MHCS v OHIM – Ambra (DORATO), T‑249/13, not published, EU:T:2014:193, paragraph 47).

110    In that regard, it is apparent from paragraph 82 above that the distinctive character of the components of the earlier mark is weak in relation to the services at issue since there is, in the eyes of the target public, a sufficiently direct and specific relationship between that mark and the goods and services in respect of which registration is sought (see judgment of 10 October 2019, Kalypso Media Group v EUIPO – Wizards of the Coast (DUNGEONS), T‑700/18, not published, EU:T:2019:739, paragraph 47 and the case-law cited).

111    In the present case, in accordance with the case-law cited in paragraph 109 above, first, the ability of the word elements of the earlier mark to dominate the overall impression created in the mind of the consumer is limited, on account of their weak distinctive character, and, second, in view of the minimal distinctiveness of the earlier mark considered as a whole, the scope of the protection of that mark is also limited.

112    Therefore, as the Board of Appeal found in paragraph 53 of the contested decision, the earlier mark has the minimum degree of distinctiveness required, which results mainly from the figurative element in the shape of a leaf and, to a lesser extent, from the stylisation of the word ‘yoga’.

113    Consequently, the distinctive character of the earlier mark must be considered to be weak in relation to the services at issue and the relevant public in the present case.

 Global assessment of the likelihood of confusion

114    The Board of Appeal concluded that there was no likelihood of confusion between the marks at issue. It found that, in view of the limited distinctive character of the elements common to the marks at issue, the relevant public would not be misled as to the commercial origin of the services at issue. Furthermore, it found that, in the relevant sector of activity in the field of yoga, there was a multiplicity of operators, any number of which might have formed alliances with one another. Accordingly, it found that the relevant public would look to the overall scheme of the marks to determine commercial origin. Furthermore, the Board of Appeal found that the differentiating elements of those marks would also allow the relevant public to rule out any likelihood of confusion, even for identical or highly similar services. The Board of Appeal also noted that the level of attention of the relevant public would vary from average to high and that, before acquiring the services at issue, it was highly likely that the relevant public would carry out its own research and seek information about the provider of the services.

115    The applicant disputes the Board of Appeal’s assessment and submits that the existence of a likelihood of confusion between the marks at issue cannot be ruled out on the part of the non-English-speaking Greek-, Croatian-, Hungarian- and Polish-speaking public. It claims that, in accordance with the principle of imperfect recollection, consumers only rarely have the chance to compare marks directly and are more likely to remember similarities while reducing their differences, even assuming that the relevant public displays a high level of attention.

116    In the present case, it has been established that the public to be taken into account for the purposes of examining the likelihood of confusion is the average non-English-speaking consumer in the European Union with a level of attention which varies from average to ‘above average’, depending on the category of services under consideration. That public is able to understand the meaning of the common word elements of the marks at issue. Furthermore, the services at issue in Class 41 covered by the mark applied for have been considered to be in part identical and in part similar to the services covered by the earlier mark in the same class. Furthermore, the signs at issue have been found to be visually similar to a low degree and phonetically and conceptually similar to an average degree. Lastly, it is apparent from the analysis carried out in paragraphs 110 to 113 above that the inherent distinctive character of the earlier mark is weak.

117    As a preliminary point, in accordance with the principle of the interdependence between the factors to be taken into consideration when examining the likelihood of confusion, it must be noted, as EUIPO rightly pointed out, that the ratio legis of trade mark law is to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other (see, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 41).

118    It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trade mark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.

119    It should be remembered that the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market (see judgment of 26 June 2008, SHS Polar Sistemas Informáticos v OHIM – Polaris Software Lab (POLARIS), T‑79/07, not published, EU:T:2008:230, paragraph 49 and the case-law cited).

120    Thus, in accordance with the case-law cited in paragraph 119 above, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion.

121    In that regard, it should be borne in mind that, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53 and the case-law cited).

122    In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion.

123    It follows from all the foregoing considerations that the Board of Appeal correctly concluded that there was no likelihood of confusion on the part of the relevant public as regards the fact that the services at issue may come from the same undertaking or, as the case may be, from economically linked undertakings.

124    Accordingly, the third complaint of the second plea must also be rejected as unfounded.

125    Consequently, the second plea must be rejected as unfounded and, therefore, the action must be dismissed in its entirety.

 Costs

126    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.

127    Since the applicant has been unsuccessful, it must be ordered to pay the costs relating to the present proceedings before the Court, in accordance with the forms of order sought by EUIPO and the intervener.

128    Furthermore, the intervener also claimed that the applicant should be ordered to pay the costs incurred during the appeal and opposition proceedings. In that regard, first, it must be recalled that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred in respect of the proceedings before the Opposition Division cannot be regarded as recoverable costs. Therefore, the intervener’s form of order must be rejected in so far as it seeks to have the applicant bear the costs incurred before the Opposition Division.

129    Second, as regards the intervener’s claim concerning the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraphs 193 and 194 and the case-law cited).

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders YAplus DBA Yoga Alliance to pay the costs.

Delivered in open court in Luxembourg on 18 January 2023.

*      Language of the case: English.

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