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

JUDGMENT OF THE GENERAL COURT (First Chamber)

13 November 2024 (*)

( EU trade mark - Opposition proceedings - Application for the EU word mark PEGADOR - Earlier EU word mark PECCATORE - Relative grounds for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )

In Case T‑1124/23,

Dyadema Srl, established in San Zenone degli Ezzelini (Italy), represented by F. Celluprica, F. Fischetti and F. De Bono, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,

defendant,

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

Pegador GmbH, established in Emsdetten (Germany), represented by E. Haag and S. Krämer, lawyers,

THE GENERAL COURT (First Chamber),

composed, at the time of the deliberations, of R. Mastroianni (Rapporteur), acting as President, I. Gâlea and S.L. Kalėda, Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

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

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Dyadema Srl, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 September 2023 (R 331/2023-2) (‘the contested decision’)

 Background to the dispute

2        On 12 July 2021, the intervener, Pegador GmbH, filed with EUIPO an application for registration of an EU trade mark in respect of the word mark PEGADOR, which was published in European Union Trade Marks Bulletin No 2021/138 of 26 June 2018.

3        The mark applied for covered, inter alia, goods in Class 14 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, corresponding to the following description: ‘Jewellery; time instruments; jewellery boxes and watch boxes’.

4        On 25 October 2021, the applicant, Dyadema Srl, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5        The opposition was based on earlier EU work mark PECCATORE in respect of which the application for registration was filed on 23 October 2018 and registered on 13 February 2019 under number 17 971 893, covering goods in Class 14 corresponding to the following description: ‘Jet, unwrought or semi-wrought; amulets [jewellery]; rings [jewellery]; split rings of precious metal for keys; silver, unwrought or beaten; horological articles; bracelets; watch bands; cabochons; chalcedony; clock cases; watch cases [parts of watches]; chains [jewellery]; watch chains; jewellery rope chain for anklets; clasps for jewellery; jewel pendants; jewellery charms; jewellery; necklaces [jewellery]; rosaries; tie pins; crucifixes as jewellery; chronographs [watches]; chronometers; diadems; diamonds; wedding rings; figurines [statuettes] of precious metal; threads of precious metal [jewellery]; cuff links; gems; semi-precious stones; jades; ingots of precious metals; medals; lockets [jewellery]; precious metals; coins; works of art of precious metal; earrings; gold; watches; palladium; pearls [jewellery]; precious stones; platinum [metal]; key rings of leather; key rings, not of metal; jewellery cases [caskets or boxes]; rhodium; boxes of precious metal; emeralds; pins [jewellery]; alarm clocks; topaz; sapphires; scarf clips being jewellery; jewellery clips for adapting pierced earrings to clip-on earrings; tie clips of precious metal; jewellery findings; jewellery made of semi-precious materials; jewellery fashioned from non-precious metals’.

6        The grounds relied on in support of the opposition were those set out 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).

7        On 19 December 2022, the Opposition Division rejected the opposition in its entirety.

8        On 8 February 2023, the applicant brought an appeal before EUIPO against the decision of the Opposition Division.

9        By the contested decision, the Board of Appeal dismissed the appeal in its entirety on the ground that there was no likelihood of confusion on the part of the relevant public between the marks at issue. In the first place, it found that the relevant public consisted of both the general public, the level of attention of which ranged from average to high, and professionals in the jewellery sector, whose level of attention was high, the European Union being the relevant territory. In the second place, as regards the comparison of the goods at issue, it found that the goods in Class 14 covered by the mark applied for were identical to the ‘jewellery; boxes of precious metals; watches’ in Class 14 covered by the earlier mark. In the third place, as regards the comparison of the signs at issue it found that visually and phonetically they were similar to a lower than average degree. Conceptually, it noted that there was no similarity between those signs for the public concerned. Taking those elements into consideration in the overall assessment of the likelihood of confusion and having regard to the normal distinctive character of the earlier mark, it concluded that there was no likelihood of confusion between the marks at issue.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs, including those incurred for the purposes of proceedings before the Opposition Division.

11      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that an oral hearing is convened.

12      The intervener contends that the Court should:

–        uphold the contested decision;

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It disputes the Board of Appeal’s findings relating to (i) the similarity of the signs at issue, (ii) the degree of distinctive character of the earlier mark, and (iii) the overall assessment of the likelihood of confusion.

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

15      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, 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 trade mark.

16      The risk that the public might 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 overall, according to the relevant public’s perception of the signs and goods or services concerned, 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).

17      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).

18      It is in the light of those considerations that the Court must consider whether the Board of Appeal was correct in concluding that there was no likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.

 The relevant public

19      According to case-law, in the overall assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 (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).

20      The Board of Appeal found that the relevant public consisted both of the general public, the level of attention of which was likely to range from average to high depending on the products concerned, and professionals in the jewellery sector, the level of attention of which was high. In addition, it found that the relevant territory for assessing the likelihood of confusion was the European Union.

21      There is no reason to call into question those findings, which are moreover not disputed by the applicant.

22      In its response, the intervener, without explicitly disputing the Board of Appeal’s conclusion, alleges, on the other hand, that the average consumer must be regarded as having a high level of attention, on the ground that the products at issue are not purchased regularly and are generally purchased through a salesperson. Moreover, even products with a lower price would be carefully examined and selected by consumers since they were used to beautify the appearance of the human body.

23      In that regard, in so far as the intervener’s argument should be understood as an independent plea in law within the meaning of Article 173(3) of the Rules of Procedure of the General Court, it can only be rejected since that plea is incompatible with the form of order which is being sought (see, to that effect, judgment of 22 March 2023, Casa International v EUIPO – Interstyle (casa), T‑650/21, not published, EU:T:2023:155, paragraph 22 and the case-law cited). In its response, the intervener did not contend that the contested decision should be annulled or varied. Rather, it contended that the Court should dismiss the action.

 The comparison of the goods

24      In the present case, confirming the assessment of the Opposition Division, the Board of Appeal found that the goods at issue were identical. There is no reason to call into question that assessment, which is moreover not disputed by the parties.

 Comparison of the signs

25      The overall assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs, 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 overall 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).

26      In the present case, the Board of Appeal found that the signs at issue were visually and phonetically similar to a lower than average degree and that they were not conceptually similar for the Italian-, Portuguese- and Spanish-speaking public or for the rest of the relevant public, who would see no meaning in any of those signs.

27      The applicant disputes the Board of Appeal’s assessment as regards the similarity of the signs at issue, which, in its view, must be regarded as at least average, if not high, both visually and phonetically. Furthermore, those signs should be regarded as conceptually very similar or almost identical.

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

 The visual comparison

29      The Board of Appeal stated that the signs at issue were similar visually to a lower than average degree. It found that those signs coincided in the letter sequence ‘p’, ‘e’, ‘a’, ‘o’ and ‘r’. However, it noted first that those signs differed in length. It then found that four of the nine letters of the earlier mark were not included in the mark applied for and that there was an immediately perceptible difference between the letter group ‘cc’ and the letter ‘t’ in the earlier mark and the letters ‘g’ and ‘d’ in the mark applied for. In addition, the shared letters, although reproduced in the same order, were not in the same position. Lastly, the Board pointed out that the signs in question ended with different letters, namely the letter ‘e’ in the earlier mark and ‘r’ in the mark applied for.

30      The applicant disputes the Board of Appeal’s assessment and submits that the signs at issue are similar to an average, if not high, degree. In the applicant’s view, the Board of Appeal failed to take account of the fact that consumers generally pay more attention to the beginning of a mark than to its end and that the assessment of visual similarity must be made on an overall basis. It points out that those signs have two single words, in which five letters out of nine in the earlier mark are identical and almost in the same position as the letters in the mark applied for.

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

32      In the present case, it should be noted that the signs at issue are each composed of a single word element, namely ‘PECCATORE’ in the case of the earlier mark and ‘PEGADOR’ in the case of the mark applied for. In addition, those signs coincide in the first two letters, namely ‘p’ and ‘e’, placed in the same order at the beginning of the signs.

33      In that regard, it is true that, according to case-law, the consumer is deemed generally to pay more attention to the beginning of a mark than to its end as the first part of a mark normally has a greater impact, both visually and phonetically, than the final part (see judgment of 4 May 2022, Bodegas Beronia v EUIPO – Bodegas Carlos Serres (ALEGRA DE BERONIA), T‑298/21, not published, EU:T:2022:275, paragraph 45 and the case-law cited).

34      However, that consideration cannot apply in all cases and cannot, in any event, cast doubt on the principle that the assessment of the similarity of the signs must take into account the overall impression which they create. Likewise, there is no basis for the proposition that the average consumer who is reasonably well informed and reasonably observant and circumspect will systematically disregard the second part of the word element of a mark to the point of remembering only the first part (see judgment of 11 October 2023, Pascoe pharmazeutische Präparate v EUIPO – Novartis Pharma (PASCELMO), T‑435/22, not published, EU:T:2023:610, paragraph 45 and the case-law cited).

35      Therefore, contrary to what the applicant maintains, the Board of Appeal was not required to attribute to the first two letters of the signs at issue a greater impact than the final part.

36      Furthermore, as the Board of Appeal found, the signs at issue display several differences visually. Firstly, they differ in terms of length, since the earlier mark is composed of nine letters whereas the mark applied is composed of seven. Secondly, they do not have the same ending. Thirdly, they contain the letters ‘a’, ‘o’ and ‘r’ which are reproduced in the same order, but those letters do not occupy an identical position. Fourthly, the earlier mark contains four additional letters, ‘c’, ‘c’, ‘t’ and ‘e’, which are not included in the mark applied for, which instead contains the letters ‘g’ and ‘d’. In particular, the different letters ‘c’, ‘c’ and ‘t’, on the one hand, and ‘g’ and ‘d’, on the other, placed in the centre of those signs, have an undeniable influence on the impression created by them.

37      Thus, contrary to what the applicant maintains, the Board of Appeal’s assessment stems from consideration of the overall impression produced by the signs at issue. The fact that the first two letters ‘p’ and ‘e’ at the beginning of those signs are identical is counterbalanced by differences relating to the length of the signs, the fact that almost half the letters of the earlier mark are not included in the mark applied for, that the common letters are not reproduced in the same positions and that those signs differ in their endings.

38      In that regard, the fact that the applicant relied on a number of earlier decisions concerning signs with identical beginnings is not capable of calling that finding into question. The decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not that of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

39      Furthermore, the applicant’s argument that the letters ‘c’ and ‘g’, when followed by the vowel ‘a’, have the same guttural sound, whereas the letters ‘t’ and ‘d’ are dental consonants and are phonetically similar, has no bearing on the examination of the visual similarity between the signs at issue. That argument cannot therefore succeed.

40      It follows from the foregoing that the applicant has not established that the Board of Appeal made an error of assessment in finding that the signs at issue were similar to a lower than average degree.

 The phonetic comparison

41      The Board of Appeal found that the signs at issue were phonetically similar to a lower than average degree. First, it found that the signs coincided in the letter sequence ‘p’, ‘e’, ‘a’, ‘o’ and ‘r’. Next, it found that the earlier mark consisted of four syllables, namely ‘pe’, ‘cca’, ‘to’ and ‘re’, whereas the mark applied for was made up of three syllables, namely ‘pe’, ‘ga’ and ‘dor’. In addition, it pointed out that the letters ‘g’ and ‘d’ of the mark applied for were pronounced more softly than the letter combination ‘cc’ and ‘t’ of the earlier mark. In that regard, it considered that, even though the letters ‘c’ and ‘g’, when followed by the letter ‘a’, had a similar guttural sound and the letters ‘d’ and ‘t’ were both dental consonants, the average consumer who is reasonably observant and circumspect, would easily notice the differences between those sounds. In its view, the stronger sounds of the letter group ‘cc’ and the letter ‘t’ led to a more distinct pronunciation of the syllables of the earlier mark, whereas the mark applied for would be perceived as softer and rounder. Lastly, it noted that the signs also differed phonetically as regards their endings.

42      The applicant disputes the Board of Appeal’s findings concerning the phonetic similarity between the signs at issue and submits that they are phonetically similar to a high degree. It claims, in essence, that the Board of Appeal failed to take account of the fact that, even phonetically, consumers generally pay more attention to the beginning of a mark than to its end. In its view, the first parts of those signs, namely ‘pecca’ and ‘pega’, are pronounced very similarly, if not identically. Furthermore, it considers that the presence of the letter combination ‘cc’ in the earlier mark and the letter ‘g’ in the mark applied for are not capable of phonetically differentiating those signs or changing their intonation and rhythm. The same is true of the last part of the signs in question, namely ‘tore’ and ‘dor’. In that regard, the applicant points out, first, that the consonant ‘t’, when followed by the vowel ‘o’, is transformed into a more guttural sound, very similar to the letter ‘d’. Second, for a large part of the relevant public, the letter ‘e’ at the end of the earlier mark would be almost silent or difficult to pronounce. In any event, in its view, a single letter, in particular a vowel, placed at the end of a sign carries no weight in the assessment of similarity.

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

44      In the present case, although the signs at issue coincide in of their first syllable, namely ‘pe’, placed at their beginning, the fact remains, as the Board of Appeal found, that those signs contain differences.

45      With regard to the applicant’s argument that the average consumer would concentrate more on the beginning of the marks, which were similar in the present case, it should be recalled that it cannot, in any event, apply to all cases and call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them (see judgment of 7 October 2010, Accenture Global Services v OHIM – Silver Creek Properties (acsensa), T‑244/09, not published, EU:T:2010:430, paragraph 23 and the case-law cited).

46      Thus, contrary to what the applicant maintains, the Board of Appeal correctly assessed the phonetic similarity of the signs at issue, taking into account the overall impression produced by them.

47      In that regard, it should first be noted that the earlier mark is composed of four syllables, namely ‘pe’, ‘cca’, ‘to’ and ‘re’, whereas the mark applied for is made up of three, namely ‘pe’, ‘ga’ and ‘dor’. In addition, as the Board of Appeal rightly pointed out, although the letters ‘c’ and ‘g’, when followed by the letter ‘a’, have a similar guttural sound, and the letters ‘d’ and ‘t’ are both dental consonants, the average consumer who is reasonably well informed and reasonably observant will notice the differences between those sounds. The stronger sounds of the letter group ‘cc’ and the letter ‘t’ in the earlier mark lead to a more distinct pronunciation of the syllables of the earlier mark, whereas the mark applied for will be perceived by the relevant public as softer and rounder. Lastly, as the intervener rightly notes, the endings of the signs at issue, namely ‘re’ in the earlier mark and ‘dor’ in the mark applied for, are phonetically different. Whereas the mark applied for ends smoothly with the letter ‘r’, the last syllable of the earlier mark ‘re’ has a longer pronunciation at the end.

48      Accordingly, the differences between the signs at issue as regards the number of syllables and the accentuation of the syllables of the words at issue, in their central and final parts, have a different sound rhythm in the pronunciation of those signs. In those circumstances, they outweigh the phonetic similarities between those signs and therefore the Board of Appeal was correct to find that the signs in question were phonetically similar to a lower than average degree.

 The conceptual comparison

49      The Board of Appeal found that the signs at issue were not conceptually similar for the Italian-, Portuguese- and Spanish-speaking part of the relevant public and would have no meaning for the rest of that public. First, it found that the earlier mark meant ‘sinner’ for the Italian-speaking part of that public, whereas the mark applied for would be understood by the Portuguese- and Spanish-speaking part of that public as a reference to the name of a fish. It also noted that, although the word ‘pegador’ constituting the mark applied for could also be understood as meaning ‘puncher’, ‘hitter’ and ‘striker’ by the Spanish-speaking part of the relevant public and ‘picker’, ‘catcher’ and ‘grabber’ by the Portuguese part of the public concerned, none of those meanings referred to a common concept for the Italian-speaking part of that public, on the one hand, and for the Portuguese- and Spanish-speaking part of that public, on the other.

50      The applicant disputes the Board of Appeal’s assessment and submits that the signs at issue must be regarded as conceptually very similar or almost identical. Firstly, it argues that the meaning of the word ‘pegador’ constituting the trade mark applied for may refer to a fish, but also to a ‘person who punches’ in Spanish and to a ‘picker’ and a ‘catcher’ in Portuguese, which generally indicates a ‘playboy’ in that language. In that regard, the Italian translation of that word from Portuguese would be ‘seduttore’, which in French would mean ‘séducteur’. Accordingly, in the view of the applicant, those signs are similar conceptually since the word ‘seducer’ may have a common meaning with the word ‘sinner’. Secondly, it maintains that the mark applied for evokes, at least for Italian-speaking consumers, the word ‘pecator’, which means ‘sinner’ in Spanish, just as the earlier mark PECCATORE means ‘sinner’ in Italian. Consequently, it considers that the Board of Appeal failed to take into account, in essence, the fact that Italian-speaking consumers will understand the Spanish word ‘pegador’ as being equivalent to the Italian word ‘peccatore’ on account of the common root of the Spanish, Portuguese and Italian words.

51      EUIPO and the intervener dispute the applicant’s arguments. In particular, EUIPO contends, in essence, that the argument that Italian-speaking consumers will understand the Portuguese word ‘pegador’ as being equivalent to the Italian word ‘peccatore’ is inadmissible on the ground that it was not raised by the applicant before the Board of Appeal and cannot, moreover, be regarded as a well-known fact. In any event, the applicant had adduced no evidence and the argument was unfounded.

52      As a preliminary point, it should be recalled that, according to the case-law, conceptual similarity means that the signs at issue convey analogous semantic content (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).

53      Furthermore, it is important to recall that it suffices, in order for registration of a trade mark to be refused, that a likelihood of confusion exists only for a part of the relevant public (see, to that effect, judgment of 18 September 2012, Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 52 and the case-law cited). Consequently, since the signs at issue have a meaning only for the Italian-, Portuguese- and Spanish-speaking parts of the relevant public, which is, moreover, not disputed by the parties, the assessment of the conceptual similarity between those signs will relate only to those parts of that public.

54      In the present case, it should be noted first of all that the earlier mark consists of an Italian word, whereas the mark applied for consists of a word which has a meaning in both Spanish and Portuguese. In that respect, the Board of Appeal’s finding that the word ‘peccatore’ constituting the earlier mark will be understood by the Italian-speaking part of the relevant public as meaning ‘sinner’ must be upheld, whereas the word ‘pegador’ constituting the mark applied for can be understood by the Portuguese- and Spanish-speaking part of the relevant public as designating a fish, as well as referring to the terms ‘puncher’, ‘hitter’ and ‘striker’ in Spanish and ‘picker’, ‘catcher’ and ‘grabber’ in Portuguese.

55      In that regard, even if it were to be assumed that the Italian translation of the word ‘pegador’ from Portuguese is ‘seduttore’, that cannot call into question the Board of Appeal’s finding that the different meanings of the signs at issue do not refer to the same concept for the Italian- and Portuguese-speaking parts of the relevant public. The term ‘seduttore’ designates a person who seduces, whilst the term ‘peccatore’ designates person who commits, or has committed, sins, which clearly does not refer to the same concept.

56      As regards the applicant’s claim that the Italian-speaking part of the relevant public will understand the word ‘pegador’ and attribute to it a meaning equivalent to the Italian word ‘peccatore’, it is sufficient to point out that, in any event, that claim is not supported by any evidence.

57      In the light of the foregoing, the Board of Appeal’s finding that the signs at issue are not conceptually similar must be upheld.

 The likelihood of confusion

58      The Board of Appeal found that, having regard to the normal distinctive character of the earlier mark and the differences found between the signs at issue, there was no likelihood of confusion.

59      The applicant disputes the Board of Appeal’s finding concerning the degree of distinctiveness of the earlier mark. It argues that, since the word ‘peccatore’ constituting that mark does not describe the qualities of the goods covered and is not a term customarily used on the market, the distinctive character of that mark must be regarded as high. It submits that, in any event, on account of the principle of interdependence, the identity of the goods at issue compensates for the below-average similarity of the signs at issue and therefore there is a likelihood of confusion on the part of the relevant public.

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

61      As regards the distinctive character of the earlier trade mark, it should be recalled that there is no rule establishing that the absence of a conceptual link between the mark and the goods or services covered by it automatically confers on that mark such strong inherent distinctive character as to afford it greater protection (order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraph 71). Moreover, the fact that, in the present case, the word ‘peccatore’ constituting that trade mark is not a term customarily used on the market cannot alter that conclusion.

62      Therefore, the applicant has not established that the Board of Appeal erred in finding that the distinctive character of the earlier mark was normal.

63      As regards the applicant’s claim that, in essence, the Board of Appeal failed to take account of the identity of the goods at issue, it is true, according to settled case-law, that an overall assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frames and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

64      However, the principle of interdependence is not intended to be applied mechanically. Thus, whilst it is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between signs at issue, conversely there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods are involved and there is a weak degree of similarity between the signs (see judgment of 6 December 2023, Vi.ni.ca. v EUIPO – Venica & Venica (agricolavinica. Le Colline di Ripa), T‑627/22, not published, EU:T:2023:782 paragraph 111 and the case-law cited).

65      In the present case, it follows from the foregoing considerations that the Board of Appeal was correct to find (i) that the consumer was likely to display an average to high level of attention (see paragraph 20 above), (ii) that the signs at issue had a below-average degree of visual and phonetic similarity (see paragraphs 40 and 48 above) and (iii) that they were not similar conceptually (see paragraph 57 above).

66      Consequently, even if the goods at issue were considered to be identical, it must be noted that, following a global assessment, the Board of Appeal was correct to find that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the part of the relevant public.

67      In the light of the foregoing, the single plea in law raised by the applicant must be rejected and, accordingly, the action must be dismissed.

 Costs

68      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 pleading.

69      As the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the forms of order sought by the intervener. On the other hand, as EUIPO has applied for costs only in the event that an oral hearing is convened, it must be held, in the absence of such a hearing, that EUIPO must bear its own costs.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Dyadema Srl to bear its own costs and those incurred by Pegador GmbH;

3.      Orders the European Intellectual Property Office (EUIPO) to bear its own costs.

Delivered in open court in Luxembourg on 13 November 2024.

*      Language of the case: English.

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