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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

6 November 2024 (*)

( EU trade mark - Opposition proceedings - Application for EU figurative mark ENERGY DRINK - Earlier EU figurative mark X Energy Drink - Relative ground for refusal - Likelihood of confusion - Similarity of signs - Article 8(1)(b) of Regulation (EU) 2017/1001 - Obligation to state reasons - Article 94(1) of Regulation 2017/1001 )

In Case T‑507/23,

ZB, represented by P. Korolko, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

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

Siyabend Goran Muhsinoglu, residing in Troisdorf (Germany), represented by C. Weil, lawyer,

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, J. Schwarcz and V. Tomljenović (Rapporteur), 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 his action under Article 263 TFEU, the applicant, ZB, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 June 2023 (Case R 221/2023‑4) (‘the contested decision’).

 Background to the dispute

2        On 15 March 2021, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) in respect of the following figurative sign:

3        The mark applied for covered goods in Classes 32 and 33 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 corresponding, for each of those classes, to the following description:

–        Class 32: ‘Soft drinks; Energy drinks; Cider, non-alcoholic; Alcohol free wine; Juices; Non-alcoholic sparkling fruit juice drinks; Smoothies; Beer’;

–        Class 33: ‘Alcoholic beverages (except beer); Cider; Grape wine; Fruit wine; Wine-based drinks; Beverages containing wine [spritzers]’.

4        On 30 June 2021, the intervener, Siyabend Goran Muhsinoglu, filed a notice of opposition to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

5        The opposition was based on the EU figurative mark filed on 6 July 2015 and registered on 3 September 2016 under the number 14 333 405, reproduced below:

6        The goods in respect of which the earlier mark was registered fall within Class 32 and correspond to the following description: ‘Isotonic beverages; energy drinks; energy drinks [not for medical purposes]; flavoured carbonated beverages; non-carbonated soft drinks; carbonated non-alcoholic drinks; cola drinks; cola’.

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

8        By decision of 29 November 2022, the Opposition Division upheld the opposition in its entirety, finding that there was a likelihood of confusion.

9        On 27 January 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

10      By the contested decision, the Board of Appeal dismissed the applicant’s appeal on the basis of Article 8(1)(b) of Regulation 2017/1001, finding that there was a likelihood of confusion in the present case.

11      In essence, the Board of Appeal found that, in so far as the earlier mark has a normal degree of distinctiveness, that the goods at issue are partly identical or partly similar to at least a low degree, that the signs at issue are visually and phonetically similar to an average degree and conceptually similar to at least a low degree, there was a likelihood of confusion for the relevant public with an average degree of attention, within the meaning of Article 8(1)(b) of Regulation 2017/1001.

 Forms of order sought

12      The applicant claims that the Court should:

–        alter the contested decision and reject the opposition in its entirety;

–        register the mark applied for;

–        order EUIPO and the intervener to pay the costs, including those incurred in the proceedings before EUIPO.

13      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.

14      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to bear his own costs and to pay those incurred by the intervener, including those incurred in the proceedings before EUIPO.

 Law

15      As a preliminary point, it must be held that, although the first of the applicant’s heads of claim formally relates to the alteration of the contested decision and the rejection of the opposition in its entirety, it is clear from the content of the application that, by the present action, the applicant seeks, essentially, the annulment of the contested decision on the ground that the Board of Appeal wrongly held that there was a likelihood of confusion (see judgment of 26 October 2011, Intermark v OHIM – Natex International (NATY’S), T‑72/10, not published, EU:T:2011:635, paragraph 14 and the case-law cited).

16      Moreover, by his second head of claim, the applicant claims that the Court should register the mark applied for. In particular, in proceedings brought against a decision of the examiner, a Board of Appeal does not have the power to take cognisance of an application requesting that it register an EU trade mark. In those circumstances, nor is it for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (see judgment of 13 December 2018, Knauf v EUIPO (upgrade your personality), T‑102/18, EU:T:2018:932, paragraphs 13 and 14 and the case-law cited). Accordingly, the second head of claim must be rejected as inadmissible since the Court does not have jurisdiction to hear it.

17      In the present case, in support of his action, the applicant puts forward two pleas in law. The second plea in law, which it is appropriate to examine first, alleges a failure to state reasons, contrary to Article 94(1) of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights of the European Union. The first plea in law, which will be dealt with subsequently, alleges infringement of Article 8(1)(b) of Regulation 2017/1001.

 The plea in law alleging failure to state reasons in the contested decision

18      The applicant complains, in essence, that the Board of Appeal did not give sufficient reasons for its findings concerning the identity and similarity of the goods covered by the marks at issue, the determination of the relevant public and the overall assessment of the likelihood of confusion in the present case.

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

20      According to Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent EU Court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and of 13 February 2020, Repsol v EUIPO (INVENTEMOS EL FUTURO), T‑8/19, not published, EU:T:2020:66, paragraph 34).

21      Moreover, according to Article 41(2) of the Charter of Fundamental Rights, the right to good administration includes, inter alia, the obligation of the administration to give reasons for its decisions.

22      Lastly, the obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will affect the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 19 September 2018, Volkswagen v EUIPO – Paalupaikka (MAIN AUTO WHEELS), T‑623/16, not published, EU:T:2018:561, paragraph 71 and the case-law cited).

23      In the first place, as regards the complaint that the Board of Appeal did not give sufficient reasons for its assessment concerning the determination of the relevant public, it is apparent from paragraph 18 of the contested decision that the Board of Appeal repeated the findings of the Opposition Division, finding that they were free from errors, namely that the relevant goods in Classes 32 and 33 were aimed at the public at large who is likely to display an average degree of attention and, in that regard, the Board of Appeal also referred to two judgments of the Court.

24      In the second place, as regards the complaints calling into question the adequacy of the reasoning of the Board of Appeal’s assessments regarding the similarity and identity of the goods at issue and the existence of a likelihood of confusion, it is apparent from paragraphs 25 to 28 of the contested decision that the Board of Appeal assessed and explained the similarity for each of the goods in Class 32 covered by the marks at issue and concluded that those goods were identical or at least similar to an average degree as regards the similarity of beer (goods covered by the mark applied for) and carbonated non-alcoholic drinks (covered by the earlier mark). Furthermore, it is apparent from paragraphs 29 to 35 of the contested decision that the Board of Appeal also assessed the similarity of the goods in Class 33 covered by the mark applied for with the goods in Class 32 covered by the earlier mark and, in that regard, it explained the factors taken into account in order to conclude that they were similar at least to a low degree.

25      In the third place, the Board of Appeal gave reasons, in paragraphs 50 to 55 of the contested decision, for the overall assessment of the existence of a likelihood of confusion by taking into account the similarity or identity of the goods to be compared, but also the degrees of visual, phonetic and conceptual similarity of the marks at issue and the distinctive character of the earlier mark.

26      It follows that the Board of Appeal gave sufficient reasons for its analysis relating to the determination of the relevant public, the assessment of the similarity of the goods concerned and the overall assessment of the likelihood of confusion and thus enables, first, the applicant to ascertain the reasons for the contested decision in those respects in order to defend his rights and, secondly, the Court, hearing the present case, to exercise its power to review the legality of those aspects of the contested decision. The applicant cannot therefore criticise the Board of Appeal for failing to state the reasons for the contested decision on those points.

27      Accordingly, those complaints must be rejected as unfounded.

28      In the fourth place, although by his second plea the applicant disputes the lack of reasoning in the contested decision, it should be noted that the complaints raised in support of that plea also seek to challenge the merits of the reasoning of the contested decision relating to the determination of the relevant public, the assessment of the similarity of the goods at issue and the overall assessment of the existence of a likelihood of confusion. In those circumstances, the applicant’s arguments intended to establish that the contested decision is not well founded are irrelevant in the context of a plea in law alleging an insufficient statement of reasons or a lack of such a statement.

29      In the light of the foregoing, the second plea in law, alleging failure to state reasons, must be rejected as, in part, unfounded and, in part, ineffective.

 The plea alleging incorrect assessment of the existence of a likelihood of confusion

30      The applicant complains, in essence, that the Board of Appeal erred in its overall assessment of the likelihood of confusion. He submits, first, that the Board of Appeal erred in finding that the goods at issue were similar or identical, secondly, that it wrongly concluded that the signs at issue were similar and, thirdly, that it erred in its overall assessment of the likelihood of confusion in finding that there was a likelihood of confusion in the present case.

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

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

33      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).

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

 The relevant public

35      The Board of Appeal found, in paragraph 18 of the contested decision, that the goods mentioned in paragraphs 3 and 6 above were aimed at the public at large who is likely to display an average degree of attention. Furthermore, it found, as did the Opposition Division, that the assessment of the likelihood of confusion, in the present case, would be carried out in the light of the perception of the English-speaking public.

36      Although the applicant disputes in general terms the merits of the determination of the relevant public in the context of his plea alleging failure to state reasons for the contested decision, he does not put forward, in support of his claim, any argument capable of calling into question the merits of the Board of Appeal’s finding.

37      Moreover, in the context of the plea alleging that there is no likelihood of confusion, the applicant does not dispute the Board of Appeal’s assessments as regards the relevant public, its level of attention and the relevant territory. Consequently, in so far as there is nothing in the file capable of calling into question the Board of Appeal’s assessments regarding the determination of the relevant public, its level of attention and the relevant territory, there is no need to do so.

 The comparison of the goods in question

38      As regards the goods to be compared in Class 32 covered by the marks at issue, the Board of Appeal found that they were partly identical and partly similar to an average degree. As regards the goods in Class 33 covered by the mark applied for and the goods in Class 32 covered by the earlier mark, the Board of Appeal found that they were similar at least to a low degree.

39      The applicant disputes the Board of Appeal’s findings, claiming that the goods in Class 32 covered by the earlier mark and the goods in Class 33 covered by the mark applied for are dissimilar. In essence, he submits that they do not have the same intended purpose, nature and method of use and are not directed at the same public. They are different by dint of the presence, or absence, of alcohol in their composition. In that regard, the applicant relies on a decision of the Fourth Board of Appeal of EUIPO. In addition, the applicant adds that there is no close link between the goods at issue in Class 32 (for the earlier mark) and Class 33 (for the mark applied for) to support the conclusion that they are complementary.

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

41      As a preliminary point, as regards the previous decision of EUIPO relied on by the applicant, it should be borne in mind that, in the context of its review of legality, neither the Boards of Appeal nor the Court is bound by EUIPO’s decision-making practice (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 26 April 2023, Volkswagen v EUIPO – XTG (XTG), T‑154/22, not published, EU:T:2023:218, paragraph 29).

42      In the first place, it is common ground that the goods in Class 32 covered by the marks at issue are partly identical and partly similar to an average degree. There is nothing in the case file that makes it possible to call into question those assessments of the Board of Appeal, assessments which are not, moreover, disputed by the applicant.

43      In the second place, as regards the assessment of the similarity between the goods in Class 32 covered by the earlier mark and the goods in Class 33 covered by the mark applied for, according to the case-law, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

44      In the present case, the goods compared for the purposes of assessing their similarity are, on the one hand, wine, cider and wine-based drinks and, in general, alcoholic beverages (except beer) covered by the mark applied for and, on the other hand, different types of non-alcoholic beverages, in particular energy drinks, carbonated beverages and non-carbonated soft drinks, covered by the earlier mark.

45      First, it must be pointed out, as the applicant submits, that the nature of all the goods covered by the earlier mark, in the light of the absence of alcohol in their composition, is different from those covered by the mark applied for. It has already been held that the presence or absence of alcohol in a beverage is perceived as a significant difference as regards the nature of the beverages in question, by the general public of the European Union as a whole. Members of the general public of the European Union are observant, and differentiate between alcoholic and non-alcoholic beverages even when they choose a beverage on impulse (judgment of 12 December 2019, Super bock group v EUIPO – Agus (Crystal), T‑648/18, not published, EU:T:2019:857, paragraph 32).

46      However, it must be borne in mind that it is not clear from the case-law cited in paragraph 43 above that the factor relating to the nature of the goods at issue has a general pre-eminence over the other factors for assessing similarity. Thus, the approach of limiting the comparison of the similarity of the specific goods at issue to the general categories of alcoholic beverages and non-alcoholic beverages amounts, in essence, to establishing a general presumption relating to the lack of similarity between all the beverages belonging to each of those categories respectively on account of the sole characteristic associated with the presence or absence of alcohol in their composition (judgment of 24 May 2023, Granini France v EUIPO – Pichler (Joro), T‑68/22, not published, EU:T:2023:287, paragraph 25). In those circumstances, contrary to what the applicant claims, it cannot be concluded that the goods concerned are dissimilar solely on the basis of their composition relating to the presence or absence of alcohol.

47      Secondly, it is common ground that the goods covered by the signs at issue fall within the general category of beverages. However, it must be pointed out, as the applicant submits and as the Board of Appeal held in the contested decision, that wine or wine-based alcoholic beverages are generally intended to be savoured and are not designed to quench thirst, whereas the beverages covered by the earlier mark, such as carbonated non-alcoholic drinks or even non-carbonated soft drinks or flavoured beverages, may be intended to quench thirst. However, as the Board of Appeal correctly stated, non-alcoholic wine and non-alcoholic cider, which are included in the goods covered by the earlier mark, also exist and are intended to be consumed in the same circumstances as alcoholic wine or cider by consumers who cannot, or choose not to, consume alcohol. Consequently, it must be held that, in the present case, all the goods covered by the marks at issue may be consumed in the same circumstances.

48      Thirdly, the Board of Appeal correctly found that the goods concerned were normally marketed in the same retail outlets, such as supermarkets or specialist shops, but also in the same areas of supermarkets, or in restaurants and bars.

49      Furthermore, the Board of Appeal correctly pointed out, in paragraph 31 of the contested decision, that competition arises between those goods in so far as the offer made to the general public is increasingly broad and the latter is given the opportunity to choose between goods which are either alcoholic or non-alcoholic, but which nevertheless share the same characteristics and flavour. In that regard, the Board of Appeal also correctly found that the same manufacturers may sell both non-alcoholic and alcoholic versions of their products. Thus, contrary to what the applicant claims, there is no general rule that producers of alcoholic beverages and non-alcoholic beverages are different.

50      Furthermore, any difference in flavour between the goods covered by the mark applied for, such as wine or cider, and the beverages covered by the earlier mark, is not sufficient to conclude that the goods concerned are dissimilar. In the present case, and as the Board of Appeal correctly found, the goods covered by the earlier mark may include, inter alia, non-alcoholic wine and non-alcoholic cider, which may have a common purpose and use with wine and cider covered by the mark applied for.

51      Fourthly, although, at first sight, as the applicant claims, the goods concerned are not complementary, since the purchase of alcoholic beverages is not indispensable or important for the use of non-alcoholic beverages, it must be held that it is not an absolute rule in that field. Thus, the case of cocktails, which combine a non-alcoholic beverage with an alcoholic beverage, may be taken as an example. Furthermore, the lack of complementarity, in the present case, does not rule out all similarity between the goods concerned. It must be borne in mind that complementarity is only one factor among others in assessing the similarity between goods in accordance with the case-law cited in paragraph 43 above.

52      In the light of all the foregoing, the Board of Appeal was entitled, without making an error of assessment, to find, first, that the goods in Class 32 covered by the marks at issue were partly identical and partly similar to an average degree and, secondly, that the goods in Class 33 covered by the mark applied for and the goods in Class 32 covered by the earlier mark were at least similar to a low degree.

 The comparison of the signs at issue

53      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

54      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

55      In the present case, the signs to be compared are, first, the mark applied for, which is a figurative sign composed of the word elements ‘x’, ‘energy’ and ‘drink’, placed on a black rectangular background, with the letter ‘x’ represented in a large stylised font in yellow and the word elements ‘energy’ and ‘drink’ represented in white upper-case letters, which appear in the lower part of the mark applied for and, secondly, the earlier mark, which is a figurative sign composed of the word elements ‘energy’, ‘x’ and ‘drink’, represented in red upper-case letters, with the letter ‘x’ being large and occupying a central position.

–       The distinctive and dominant elements of the signs at issue

56      In paragraphs 42 to 44 of the contested decision, the Board of Appeal found, first of all, that the word element ‘x’, common to the signs at issue, had no meaning for the relevant public and was therefore distinctive. Next, the Board of Appeal confirmed the findings of the Opposition Division relating to the common word elements ‘energy’ and ‘drink’, which will be perceived as a type of drink containing stimulating compounds and concluded that those word elements were non-distinctive for some of the goods in Class 32 covered by the marks at issue, but that they were distinctive for the other goods, namely ‘cider, non-alcoholic; alcohol free wine; beer’, referred to in Class 32 and for the goods in Class 33. Furthermore, it found, first, that the figurative elements of the earlier mark were merely decorative and, secondly, that the figurative elements of the mark applied for, even though they were more elaborate than those of the earlier mark, would not distract the relevant public’s attention away from the word elements of that mark. Lastly, it found that the letter ‘x’, common to the signs at issue, was co-dominant with the other word elements in those signs.

57      Moreover, in the present case, since there is nothing in the file capable of calling into question the Board of Appeal’s assessments set out in paragraph 56 above, it is therefore necessary to accept them.

–       The visual comparison

58      The Board of Appeal held, in paragraph 45 of the contested decision, that the signs at issue were visually similar to an average degree. In that regard, it found that those signs have all their word elements in common, namely ‘x’, ‘energy’ and ‘drink’. However, it also found that those signs differed in their figurative elements, which were, nevertheless, merely decorative.

59      The applicant disputes the findings of the Board of Appeal. He submits that, even though the signs at issue coincide in the word elements ‘x’, ‘energy’ and ‘drink’, which are of limited distinctiveness and are descriptive, that fact alone cannot lead to the conclusion that there is a likelihood of confusion in the present case. He states that the signs at issue differ sufficiently due to their figurative elements, which are clearly perceptible for the relevant public.

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

61      It is common ground that the signs at issue, as the Board of Appeal correctly found, coincide in all of their word elements, namely ‘x’, ‘energy’ and ‘drink’.

62      It should also be noted that, as the Board of Appeal pointed out (see paragraph 56 above), which the applicant does not dispute, the figurative elements of the signs at issue are merely decorative.

63      Furthermore, although the applicant considers that the figurative elements of the signs at issue are clearly perceptible and enable those signs to be distinguished, it must be held that those figurative elements consist, first, for the earlier mark, in the representation in red of the letters of the word elements and in the larger size of the letter ‘x’ on a white background and, secondly, for the mark applied for, of the representation of the letter ‘x’ in a large stylised font in yellow with a grey shadow and in the white colour of the word elements ‘energy’ and ‘drink’. The mere difference in the colour of the background on which the word elements of the signs at issue form part and in the colour and stylisation with which those word elements are represented does not permit the inference that those signs are visually dissimilar, especially since, in their representation, they coincide in the predominant size and central positioning of the word element ‘x’ in relation to the word elements ‘energy’ and ‘drink’ that surround it, all those elements being, moreover, in upper-case letters in both signs.

64      It follows that it may be concluded that the signs at issue are visually similar to an average degree. Consequently, the Board of Appeal did not err in its assessment of the visual similarity of the signs at issue in concluding that there was an average degree of visual similarity.

–       The phonetic comparison

65      The Board of Appeal found, in paragraph 46 of the contested decision, that the signs at issue were phonetically identical. There is nothing in the case file that makes it possible to call into question that assessment of the Board of Appeal, which is not, moreover, disputed by the applicant.

–       The conceptual comparison

66      The Board of Appeal found, in paragraph 47 of the contested decision, that, in view of the semantic content conveyed by the word elements ‘energy’ and ‘drink’ of the signs at issue, which are non-distinctive for some of the goods concerned, in particular ‘cider, non-alcoholic; alcohol free wine; beer’ in Class 32 and the goods in Class 33, those signs were conceptually similar at least to a low degree.

67      The applicant does not dispute that assessment of the Board of Appeal as such.

68      However, it has been held that, where it is called upon to assess the legality of a decision of the Board of Appeal of EUIPO, the Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being challenged before the Court (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48).

69      In the present case, since the applicant claimed that the contested decision should be annulled and based his first plea in law on an infringement of Article 8(1)(b) of Regulation 2017/1001, the assessment of the conceptual similarity between the signs at issue forms part of the findings the legality of which is being disputed before the Court.

70      In the first place, as regards the common word element ‘x’ of the signs at issue, it must be stated that it refers to the letter ‘x’ of the alphabet.

71      In the second place, it is not disputed that the word elements ‘energy’ and ‘drink’, words in the English language, common to both signs, are capable of referring to the concepts of energy and drink respectively, and, together, to the concept of stimulating beverages or energising drinks, for the relevant English-speaking public.

72      In those circumstances, it must be held that the signs at issue are conceptually identical because the word elements as a whole are identical. The fact, referred to by the Board of Appeal in paragraph 47 of the contested decision, that the expression ‘energy drink’ is non-distinctive for some of the goods concerned cannot lead to a different conclusion, since the signs at issue coincide conceptually in those word elements and do not contain any other element having a conceptual meaning.

73      In the light of the foregoing, and contrary to what the Board of Appeal incorrectly found in paragraph 47 of the contested decision, the signs at issue are conceptually identical.

 The distinctiveness of the earlier mark

74      The Board of Appeal found, in paragraph 50 of the contested decision, that the earlier mark had a normal degree of distinctiveness.

75      There is nothing in the case file that makes it possible to call into question that assessment of the Board of Appeal, which is not, moreover, disputed by the applicant.

 The overall assessment of the likelihood of confusion

76      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

77      The Board of Appeal found that, in so far as the earlier mark has a normal degree of distinctiveness, that the goods at issue are partly identical or partly similar to at least a low degree, that the signs at issue are visually similar to an average degree, phonetically identical and conceptually similar to at least a low degree, a likelihood of confusion cannot be ruled out for the relevant public, which has an average level of attention with regard to the goods at issue.

78      The applicant disputes the Board of Appeal’s finding. He submits that the signs at issue are visually different and that the mere fact that those signs coincide in the common word elements does not lead to the conclusion that there is a likelihood of confusion, taking into account the limited degree of distinctiveness and therefore the descriptive character of those common word elements. He concludes that the signs at issue are not aimed at the same public.

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

80      It is important to note that it is clear from the case-law that, where the elements of similarity between two signs arise from the fact that they share a component that has a weak distinctive character, the impact of such elements of similarity on the overall assessment of the likelihood of confusion is low (see judgment of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited).

81      First, it should be recalled that the relevant public consists of the public at large with an average degree of attention (see paragraphs 35 and 37 above).

82      Secondly, it has been concluded, in paragraph 52 above, that the goods in Class 32 covered by the marks at issue were partly identical and partly similar to an average degree and, secondly, that the goods in Class 33 covered by the mark applied for and the goods in Class 32 covered by the earlier mark were at least similar to a low degree.

83      Thirdly, as has been found in paragraphs 56 and 57 above, it must be borne in mind that the letter ‘x’, common to the signs at issue, has distinctive character and that the word elements ‘energy’ and ‘drink’, common to the signs at issue, have a weak distinctive character and are descriptive of some of the goods in Class 32 covered by the signs at issue. Furthermore, it must also be borne in mind that the figurative elements of those signs are decorative or that, at the very least, they do not distract the relevant public’s attention away from the word elements and are therefore of less importance.

84      Fourthly, it has been concluded, in paragraphs 64 and 65 above, as did the Board of Appeal, that the signs at issue were visually similar to an average degree and phonetically identical. Furthermore, contrary to what the applicant claims in relation to the impact of the visual differences between the signs at issue, it should be noted, in a case such as the present one, where alcoholic or non-alcoholic beverages are concerned, that when the goods are ordered orally, the phonetic similarity between the signs at issue is particularly important (see, to that effect, judgment of 20 April 2018, Mitrakos v EUIPO – Belasco Baquedano (YAMAS), T‑15/17, not published, EU:T:2018:198, paragraph 62).

85      Furthermore, contrary to what the Board of Appeal found, it has been held in paragraph 73 above that the signs at issue are conceptually identical. However, in the context of the assessment of the likelihood of confusion, that finding relating to conceptual similarity must be viewed in the light of the fact that the common elements ‘energy’ and ‘drink’ have a weak distinctive character, or are even descriptive of some of the goods concerned. It follows that the conceptual similarity plays a limited role and is of less importance in the assessment of the likelihood of confusion (see, to that effect, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 92 and the case-law cited).

86      Fifthly, it must also be borne in mind that the earlier mark has an average degree of distinctiveness (see paragraphs 74 and 75 above).

87      It follows from the foregoing that, despite the Board of Appeal’s incorrect assessment of the conceptual similarity of the signs at issue, noted in paragraphs 70 to 73 above, and the finding made in paragraph 85 above, on the limited impact of the conceptual identity of the signs at issue, the Board of Appeal did not, in the present case, make an error of assessment in the overall assessment of the likelihood of confusion and, correctly, concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 between the signs at issue for the relevant public displaying an average level of attention with regard to the goods concerned.

88      Accordingly, the first plea in law must be rejected as unfounded.

89      In the light of all the foregoing considerations, the claim for annulment and, consequently, the claim for alteration must be rejected and the action must therefore be dismissed in its entirety.

 Costs

90      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter.

91      As regards the intervener’s request that the applicant be ordered to pay the costs relating to the proceedings before EUIPO, first, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are regarded as recoverable costs. Therefore, the intervener’s form of order concerning the costs relating to the opposition proceedings, which are not recoverable costs, is inadmissible. Secondly, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, point 2 of the operative part of that decision continues to govern the costs incurred in the opposition proceedings and in the appeal proceedings before EUIPO (see judgment of 14 July 2021, Cole Haan v EUIPO – Samsøe & Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 64 and the case-law cited).

92      By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, it must, since no hearing has been organised, be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders ZB, in addition to bearing his own costs, to pay those incurred by Siyabend Goran Muhsinoglu before the General Court;

3.      Declares that the European Union Intellectual Property Office (EUIPO) shall bear its own costs.

Delivered in open court in Luxembourg on 6 November 2024.

*      Language of the case: English.

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