JUDGMENT OF THE GENERAL COURT (Third Chamber)
22 January 2025 (*)
( EU trade mark - Opposition proceedings - Application for EU figurative mark NOVARESINE INNOVATION GOES GREEN - Earlier EU word mark Novares - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Alteration )
In Case T‑1188/23,
Rain Carbon Germany GmbH, established in Castrop-Rauxel (Germany), represented by R. Fischer and T. Moll, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Novaresine Srl, established in Lazise (Italy), represented by A. Rizzoli and F. Ghini, lawyers,
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl, President, I. Nõmm and G. Steinfatt (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 its action under Article 263 TFEU, the applicant, Rain Carbon Germany GmbH, seeks the annulment and the alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 October 2023 (Case R 2005/2022-1) (‘the contested decision’).
I. Background to the dispute
2 On 24 January 2020, the intervener, Novaresine Srl, filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods in, following the restriction made in the course of the proceedings before EUIPO on 18 November 2021, Class 1 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: ‘Alkyd resins; Alkyd resins (short, medium or long oil); Unsaturated polyester resins; Saturated polyester resins’.
4 On 12 May 2020, the predecessor in law of the applicant, Rütgers Germany GmbH, 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 the earlier EU word mark Novares, filed on 19 December 1996 and registered on 17 November 1998 under No 444 141, designating goods in Class 1 corresponding to the following description: ‘Unprocessed artificial resins, in particular thermoplastic xylol or resin mixtures’.
6 The ground relied on in support of the opposition was that 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 Following the request made by the intervener on 9 March 2021, EUIPO invited the applicant to furnish proof of genuine use of the earlier mark on which the opposition was based. The applicant complied with that request within the prescribed time limit.
8 On 5 September 2022, the Opposition Division upheld the opposition in respect of all the goods in question on the basis of Article 8(1)(b) of Regulation 2017/1001 and refused the EU trade mark application in its entirety. It held, inter alia, that there was no need to determine whether the earlier mark had acquired an enhanced degree of distinctiveness as a consequence of the use which had been made of it, as a likelihood of confusion already existed on the basis of the mark’s average inherent distinctiveness.
9 On 14 October 2022, 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 in its entirety, on the ground that there was no likelihood of confusion on the part of the relevant public on the basis of the inherent distinctiveness of the earlier mark, and remitted the case to the Opposition Division for it to determine whether the earlier mark has acquired enhanced distinctiveness as a consequence of the use which has been made of that mark.
II. Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– uphold the opposition and refuse the application for registration of the mark applied for;
– order EUIPO to pay the costs.
12 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.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
14 In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, infringement of the first sentence of Article 94(1) of that regulation.
A. First head of claim, seeking the annulment of the contested decision, and first plea in law, alleging an infringement of Article 8(1)(b) of Regulation 2017/1001
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 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.
(a) Admissibility of the first plea in law
16 The applicant bases its first plea in law, alleging an infringement of Article 8(1)(b) of Regulation 2017/1001, on the complaint that the Board of Appeal incorrectly came to the conclusion that a likelihood of confusion could be affirmed, as the case may be, only on the basis of the enhanced distinctiveness of the earlier mark.
17 EUIPO argues that the Board of Appeal did not adopt a final position on the merits of the opposition but limited its assessment to the reasons why the decision of the Opposition Division had to be annulled and the case remitted to that department. EUIPO thus maintains that, in the absence of a full examination of the opposition, the first plea in law is admissible only to the extent that it can be reinterpreted to the effect that the applicant does not claim an infringement of Article 8(1)(b) of Regulation 2017/1001, but claims an infringement of Article 71(1) of that regulation by alleging that, in fact, the Board of Appeal exercised its discretion incorrectly by remitting the case to the Opposition Division. On the basis of that reinterpretation, EUIPO contends that the applicant’s first plea in law should be rejected as unfounded.
18 However, first, in the application the applicant unequivocally claims an infringement of Article 8(1)(b) of Regulation 2017/1001. This is confirmed by the fact that it does not direct any of its arguments against the exercise by the Board of Appeal of its discretion and in particular, as EUIPO rightly observes, against the specific grounds relied on by the Board of Appeal in order to remit the case to the Opposition Division.
19 Second, EUIPO is incorrect to argue that the first plea in law is inadmissible in the absence of reinterpretation.
20 Indeed, in the contested decision, the Board of Appeal adopted a definitive position on the similarity of the goods, the similarity of the signs and the likelihood of confusion on the basis of the average inherent distinctiveness of the earlier mark. In this regard, it is clear from Article 71(2) of Regulation 2017/1001 that, where the Board of Appeal remits the case to the Opposition Division, the latter is bound by the ratio decidendi of the former, in so far as the facts are the same. Accordingly, an applicant must be able to challenge the Board of Appeal’s conclusions, without having to wait for proceedings to continue before the Opposition Division so that it can then bring an appeal before the Board of Appeal and, if necessary, subsequently bring an action before the General Court against the new decision (see, to that effect, judgment of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS), T‑421/18, EU:T:2020:433, paragraph 45 and the case-law cited).
21 It follows that EUIPO’s argument that the Board of Appeal did not adopt a definitive position in the contested decision cannot constitute grounds for finding that the present plea in law, as raised by the applicant, is inadmissible, with the result that there is no need to reinterpret that plea.
(b) Merits of the first plea in law
(1) The relevant public
22 In paragraphs 19 and 20 of the contested decision, the Board of Appeal endorsed the Opposition Division’s assessment, finding that the relevant public was the professional public made up of professionals in the chemical industry, whose level of attention is high given that cautious treatment or higher safety standards are usually involved. The Board of Appeal further held that the relevant territory was the European Union.
23 There is no reason to call into question those assessments, which, moreover, are not disputed by the applicant.
(2) Comparison of the goods in question
24 According to settled case-law, in assessing the similarity of the goods or services covered by the marks at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraph 44 and the case-law cited).
25 In the present case, the Board of Appeal held, in paragraph 60 of the contested decision, that the goods covered by the mark applied for and the goods covered by the earlier mark in respect of which genuine use was proven, namely ‘thermoplastic resin mixtures’, displayed at least a low degree of similarity. Those goods had the same nature, all being thermoplastic resins, and could have a similar or identical intended purpose, namely chemical components used in the manufacture of coatings and varnishes. Those goods also targeted the same consumers, the same professionals or the same manufacturers of, among other goods, coatings.
26 In the first place, the applicant complains that the Board of Appeal concluded that the goods in question displayed at least a low degree of similarity, but left it open as to whether they could display a higher degree of similarity, even though it correctly confirmed the Opposition Division’s conclusions concerning the nature, intended purpose and consumers of the goods in question. It argues that the goods covered by the marks at issue are identical or display at least a high degree of similarity.
27 In the second place, the applicant complains that the Board of Appeal left it open as to whether the goods covered by the earlier mark are ‘hydrocarbon resins’ or whether they fall within the broader category of ‘thermoplastic resin mixtures’, whereas identity of goods covered by the marks at issue can also be proven where the goods covered by one of the marks fall within a broader category than that of the goods covered by the other mark.
28 In the third place, the applicant submits that the Board of Appeal found genuine use of the earlier mark for ‘thermoplastic resin mixtures’, but left it open as to whether there was genuine use of that mark for the broader category of ‘unprocessed synthetic resins’. Given that the Board of Appeal found that the goods in question were all thermoplastic resins, it would already have had to come to the conclusion that those goods were identical if genuine use of the earlier mark had been proven for ‘thermoplastic resin mixtures’.
29 The intervener argues that the Board of Appeal was correct to consider the goods in question as being similar only at a very low level. According to the intervener, the differences between ‘thermosetting resins’ and ‘thermoplastic resins’, which are well known to the relevant public, give them different properties and applications, with the result that those goods belong to different families. Because of those differences, the resins differ in their range of applications and therefore cannot be interchangeable.
30 In the first place, if those goods have the same nature and if they can have a similar or identical intended purpose, as the Board of Appeal found in paragraph 59 of the contested decision, they are in direct competition on the market. Their degree of similarity must therefore be regarded as high (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 86). It follows that the Board of Appeal should have concluded that the goods in question were similar to a high degree.
31 In the second place, even though, strictly speaking, the similarity of ‘at least a low’ degree accepted by the Board of Appeal can encompass an average degree of similarity, the Board of Appeal could not simply find ‘at least a low’ degree of similarity in the present case, given that it concluded that there was no likelihood of confusion. In this regard, the applicant rightly submits that if the goods were to be regarded as identical, such identity would have an impact on the global assessment of the likelihood of confusion.
(3) The comparison of the signs at issue
32 As regards the comparison of the signs at issue, the Board of Appeal found, in paragraphs 40, 42 and 44 of the contested decision, that the signs displayed a low degree of visual similarity and an average degree of phonetic similarity and that they were not comparable from a conceptual point of view.
33 According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. As is apparent from the case-law, the visual, phonetic and conceptual aspects are relevant (see judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
34 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 signs 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, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41).
(i) The dominant and distinctive elements of the signs at issue
35 According to settled case-law, the greater or lesser degree of distinctiveness of the elements common to a mark which has been applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs. The descriptive, non-distinctive or weakly distinctive elements of a complex trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by the mark (see judgment of 17 January 2024, Ona Investigación v EUIPO – Formdiet (BIOPÔLE), T‑61/23, not published, EU:T:2024:10, paragraph 39 and the case-law cited).
36 In the first place, with regard to the word ‘novares’ which makes up the earlier mark and the word element ‘novaresine’ in the mark applied for, the Board of Appeal considered that those terms were, as a whole, invented terms and that they would be perceived as such by the relevant professional public. It also held that the initial common component ‘nova’ would be singled out in both marks and associated with the meaning of ‘new’ and ‘novelty’ by the professional public in the European Union. Consequently, it held that that component displayed at best reduced distinctiveness and was thus less likely to give rise to similarity.
37 The applicant submits that the meaning of the term ‘nova’ is not obvious, for example, for the German-speaking public, a relevant part of which will perceive the term as having no obvious descriptive meaning. It complains that the Board of Appeal referred only to the public in Bulgaria, the Czech Republic, Spain, Croatia, Poland, Portugal, Slovenia and Slovakia. Even assuming that the meaning of the term ‘nova’ was known to the relevant public, it would see ‘Novares’ and ‘Novaresine’ as a conceptual unit, given that they consist of a single term and not two words. Therefore, from the relevant public’s perspective, the common element ‘novares’ in the two signs cannot be attributed any meaning as such.
38 The intervener disputes the applicant’s arguments. It contends, first, that the Board of Appeal does not refer only to certain languages, but takes them merely as an example, especially given that it does not refer to any such limitation of the relevant public in its conclusions. The Board of Appeal also refers to languages derived from Latin, such as Spanish, French and Italian, which are familiar to a substantial part of the public of the European Union and thus allow the assessment of the similarity of the signs to be based on the meaning of the term ‘nova’ in one of those languages. Second, the English-speaking public will recognise in the term ‘nova’ the word ‘novelty’, which is derived from the Latin ‘novus’. The German public, which is ‘one of the greatest connoisseurs of the English language’, will make the same connection.
39 According to settled case-law, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, that consumer will break it down into word elements which, for him or her, have a concrete meaning or which resemble words known to him or her (see judgment of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO), T‑350/13, EU:T:2017:633, paragraph 35 and the case-law cited).
40 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 and services in question in that territory. However, 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 judgment of 12 July 2019, Fashion Energy v EUIPO – Retail Royalty (1 st AMERICAN), T‑54/18, not published, EU:T:2019:518, paragraph 48 and the case-law cited).
41 Therefore, a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 7 June 2023, Brooks England v EUIPO – Brooks Sports (BROOKS ENGLAND), T‑63/22, not published, EU:T:2023:312, paragraph 76 and the case-law cited).
42 Consequently, what matters is the perception of the part of the relevant public for which the marks at issue are most similar, that is to say, in the present case, the part for which the term ‘nova’ has no meaning. For that part of the relevant public, the common element ‘nova’ displays average distinctiveness and thus contributes to the similarity of the signs at issue.
43 The Opposition Division had found it appropriate to focus its analysis on the German- or Lithuanian-speaking parts of the relevant public, for which the element ‘nova’ has no meaning and therefore displays average distinctiveness. By contrast, the Board of Appeal, after examining the perception of the part of the relevant public with knowledge of Bulgarian, Czech, Spanish, Croatian, Polish, Portuguese, Slovenian or Slovak, held that that element could be associated with the meaning ‘new’ because ‘nova’ is a prefix originating from Latin and it therefore displayed at best reduced distinctiveness. In doing so, either it implicitly considered, contrary to the Opposition Division, that the German- or Lithuanian-speaking professional public in the chemical industry had knowledge of Latin – and would thus make a connection between the element ‘nova’ and the concept of novelty – or it failed to take account of the perception of the German- or Lithuanian-speaking part of the relevant public. In any event, the Board of Appeal did not take account of the part of the relevant public with no knowledge of any of the languages on which it based its analysis.
44 Consequently, the Board of Appeal erred in law by restricting its examination of the perception of the element ‘nova’ to that of a part of the relevant public of the European Union, in so far as, for that part of the relevant public, the signs at issue display a lower degree of similarity than for other parts of the relevant public.
45 In the second place, according to the Board of Appeal, the visually eye-catching word element ‘novaresine’ in the mark applied for was preceded by an element which was not negligible in terms of its size and position and which was likely to be perceived by a part of the relevant public as the highly stylised group of letters ‘nr’ in black and green, following the same colours and the same depiction as the letters ‘n’ and ‘r’ within the term ‘novaresine’. It held that that figurative element and the term ‘novaresine’ were both visually co-dominant elements of the contested sign, whereas the sequence ‘innovation goes green’ was clearly secondary in the overall impression created by the mark.
46 The applicant disputes that the word element ‘novaresine’ and the figurative element in the form of the stylised letters ‘n’ and ‘r’ are co-dominant elements of the mark applied for. It argues that consumers are used to signs consisting of acronyms or abbreviations followed by the word element(s) to which they refer. In order for graphic elements to be attributed a dominant character, the figurative element must have an independent significance for the public as an indication of origin, while the slight stylisation of the typeface and the figurative element of the mark applied for are of a purely decorative nature. Lastly, the applicant states that, when comparing a word mark with a figurative mark comprising word elements, the distinctive element of the figurative mark is typically the word element.
47 The intervener disputes the applicant’s arguments. It maintains that it is not incorrect to define the figurative element which appears at the beginning of the mark applied for as a co-dominant element. That assessment by the Board of Appeal is consistent with EUIPO’s practice based on its Guidelines, according to which a ‘visually outstanding’ element is dominant and the dominant character of a component of a sign is mainly determined by its position, size, dimensions or use of colours.
48 With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35, and of 15 February 2023, Topcart v EUIPO – Carl International (TC CARL), T‑8/22, not published, EU:T:2023:70, paragraph 38).
49 In the present case, the figurative element preceding the word element ‘novaresine’ and taking the form of the stylised letters ‘n’ and ‘r’ has only limited importance, as it is clear at first glance that that figurative element refers to the word element by reproducing two of its letters. As the applicant rightly submits, consumers are used to signs consisting of acronyms or abbreviations followed by the word element(s) to which they refer. The fact that the stylised letters ‘n’ and ‘r’ reproduce identically the typeface and colour used for their respective counterparts contained in the word element makes this reference even more obvious. The word element ‘novaresine’ and the group of letters ‘nr’ are thus intended to clarify each other and to draw attention to the fact that they are linked (see, to that effect, judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 32).
50 Furthermore, the Board of Appeal was incorrect to hold that the figurative element of the mark applied for was ‘highly’ stylised. The letters ‘n’ and ‘r’ are indeed represented in a very purist typeface which is not a standard font, but the letters nevertheless remain clearly recognisable.
51 The figurative element is also not visually eye-catching on account of its size. Indeed, it is only slightly taller than the word element ‘novaresine’ which it accompanies.
52 It follows that the Board of Appeal made an error of assessment in taking the view that the group of stylised letters ‘nr’ preceding the word element ‘novaresine’ constituted an element which was as dominant as the word element of the mark applied for.
53 In the light of the foregoing, it must therefore be held, first, that for a part of the relevant public the common word element ‘nova’ has no meaning and therefore displays average distinctiveness. For another part of the relevant public, that element will – as was found by the Board of Appeal – be associated with the meaning of ‘new’ or ‘novelty’, with the result that it will display weak distinctiveness. Next, the group of stylised letters ‘nr’ in the mark applied for has only limited importance in relation to the word element ‘novaresine’, which is the dominant element of that mark. Lastly, the sequence ‘innovation goes green’ in the mark applied for plays – as was stated by the Board of Appeal – only a secondary role in the overall impression created by that mark, which, moreover, is not disputed by the applicant.
(ii) Visual similarity
54 By contrast with the Opposition Division, the Board of Appeal held, in paragraph 40 of the contested decision, that the signs at issue displayed only a low degree of visual similarity. It found that the marks differed in the number of letters and in their structure, the earlier mark being a word mark of seven letters, whereas the mark applied for was a figurative mark made up of several elements, which, given their visual significance, added further distance between the marks, irrespective of their inherent distinctiveness.
55 The applicant asserts that the signs are visually highly similar. The mark applied for reproduces the earlier mark, namely the term ‘novares’, in its entirety. The signs coincide in the first seven letters and differ only in the addition of the group of letters ‘ine’ in the mark applied for. The beginning of a sign generally has a significant impact on the overall impression created by the mark. Furthermore, ‘novares’ may be perceived as an abbreviated form of ‘novaresine’.
56 According to the intervener, the mark applied for and the earlier mark are not similar. The word ‘novares’ is not contained in the mark applied for as an autonomous and independent element. It is irrelevant if a word element is recognised only with the help of the other mark, as the consumer normally does not have the opportunity to compare signs side by side. The mark applied for will be perceived as being composed of two words – ‘nova’ and ‘resine’ – and the consumer will not therefore see the NOVARES mark reproduced in the initial part of the mark applied for.
57 According to settled case-law, where a figurative mark containing word elements is visually compared with a word mark, the marks are considered to be visually similar if they have in common a significant number of letters in the same position and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different type fonts, in italics or bold, in lower case or upper case, or in colour (see judgment of 11 October 2023, Dr. Rudolf Liebe Nachfolger v EUIPO – Bit Beauty (ayuna LESS IS BEAUTY), T‑490/22, not published, EU:T:2023:616, paragraph 51 and the case-law cited).
58 In the present case, the signs at issue have in common seven consecutive letters in the same position and the dominant element of the mark applied for is only slightly stylised. Furthermore, the earlier mark is included in its entirety in the dominant element of the mark applied for, which reinforces the similarity of the signs. In this regard, the applicant is correct to argue that the term ‘novares’ could be perceived as an abbreviated form of ‘novaresine’.
59 It follows that the Board of Appeal was incorrect to find that the signs at issue displayed a low degree of visual similarity. For the part of the relevant public which will single out the common element ‘nova’ in the two marks and associate it with the meaning of ‘new’ and ‘novelty’, it is true that there is a low degree of visual similarity because, for that part of the relevant public, the common element ‘nova’ displays only weak distinctiveness. However, for the part of the relevant public for which ‘nova’ has no meaning and displays average distinctiveness, the visual similarity is average.
(iii) Phonetic similarity
60 Regarding the phonetic comparison, the Board of Appeal held that the marks displayed an average degree of similarity, as the signs coincided in the sound of the syllables ‘no’, ‘va’ and ‘re(s)’, whereas they differed in the pronunciation of the additional syllables ‘si’ and ‘ne’ of the mark applied for. The initial coincidence in the sound ‘no’ and ‘va’ would not produce a lasting aural impression owing to its at best reduced distinctiveness.
61 The applicant complains that the Board of Appeal did not find a high degree of phonetic similarity for the reasons set out in paragraph 55 above.
62 The intervener disputes the applicant’s arguments. First, although the beginning of the signs is identical, the word ‘novaresine’ is most likely to be pronounced in two words, the first ‘no-va’ consisting of two syllables, while the second ‘re-si-ne’ consists of three syllables. The word ‘novares’ will be pronounced as one word of three syllables. Second, further aspects reinforce the phonetic differences, such as the last letter ‘s’ of ‘novares’, the different number and sounds of the vowels, the break between ‘nova’ and ‘resine’ in the mark applied for, which is likely to be audible, and the differences concerning vowel placement. The vowels dominate the overall phonetic impression of a word as they are more audible than a consonant. Third, the word element ‘innovation goes green’ further contributes to the signs’ different aural impression.
63 In that regard, it should be borne in mind that the element ‘nova’ displays weak distinctiveness only for the part of the relevant public for which the term ‘nova’ has a meaning. The Board of Appeal thus made an error of assessment in holding that the identity of the first two syllables has only low relevance for the overall impression of the signs at issue for the entire relevant public.
64 As was correctly noted by the Board of Appeal, the sequence ‘innovation goes green’ will not be pronounced because, according to case-law, a consumer will tend not to pronounce the secondary word elements in the signs at issue, simply to economise on words, particularly if those word elements take quite a long time to pronounce and are easily separable when the trade mark is pronounced (see judgment of 20 October 2021, Yadex International v EUIPO – Sütas Süt Ürünleri (PINAR Tam kivaminda Süzme Peynir Yumusacik ve Leziz), T‑560/20, not published, EU:T:2021:714, paragraph 76 and the case-law cited). Consequently, account should be taken only of the elements ‘novares’ and ‘novaresine’ in the phonetic comparison. The first three of the five syllables making up the dominant word element of the mark applied for are identical or almost identical to the three syllables making up the earlier mark, which is included in its entirety in the mark applied for.
65 It follows that the Board of Appeal was incorrect to hold that the marks at issue were phonetically similar only to an average degree. Indeed, for the part of the relevant public for which the common element ‘nova’ has no meaning, there is a high degree of phonetic similarity.
(iv) Conceptual similarity
66 Regarding the conceptual similarity, the Board of Appeal held, first, that, as the common element ‘nova’ could be meaningful at least for a part of the relevant public, there was a semantic connection between the marks at issue. That common reference to the concept of novelty was, however, in itself unlikely to create any relevant degree of similarity between the signs, given the at best reduced distinctiveness of that element. According to the Board of Appeal, apart from the reference to the concept of ‘novelty’, the signs at issue were not comparable from a conceptual point of view. Second, according to the Board of Appeal, that finding could not be altered by the assumption made by the Opposition Division that a part of the public would single out the term ‘resine’ at the end of the earlier mark, as this was not capable of introducing any conceptual importance on account of its descriptive character with regard to the goods themselves. The conceptual comparison thus remained neutral.
67 The applicant argues that, as the Board of Appeal held that the relevant public would perceive the term ‘nova’ as a reference to the term ‘novelty’, its finding that that reference would not give rise to a relevant degree of similarity between the signs from a conceptual point of view is not plausible. Consequently, it must be assumed either that the terms ‘novares’ and ‘novaresine’ are fanciful and therefore conceptually neutral or that there is a high degree of similarity between the signs from a conceptual point of view due to the identical meanings.
68 The intervener disputes the applicant’s arguments. Like the Board of Appeal, the intervener states that the common concept conveyed by the marks cannot be given much weight in the global assessment of the likelihood of confusion because of its at best weak distinctiveness. The same is true as regards the element ‘res’ included in the earlier mark and the element ‘resine’ in the mark applied for, as from the point of view of the relevant public made up of professionals whose level of attention is high, those terms simply evoke the goods in Class 1 covered by the marks.
69 First of all, the element ‘resine’ may, in some languages, such as French, represent an allusion to the goods covered by the marks at issue. However, that concept is not present in the element ‘res’ taken in isolation.
70 Next, as was correctly stated by the Board of Appeal, the terms ‘novares’ and ‘novaresine’ will be perceived as being invented terms.
71 For the part of the relevant public which understands the element ‘nova’ as referring to the concept of novelty, however, there is a similarity from a conceptual point of view. Given that the common element ‘nova’ displays only weak distinctiveness for this part of the relevant public, the resulting conceptual similarity is also low.
72 On the other hand, for the part of the relevant public which does not perceive a meaning in the common element ‘nova’, the signs at issue do not convey a concept, with the result that the conceptual comparison remains neutral.
73 Consequently, the Board of Appeal made an error of assessment in holding that the conceptual comparison remained neutral even for the part of the relevant public which attributes a meaning to the common element ‘nova’, as for that part of the relevant public there is a low degree of similarity from a conceptual point of view.
(4) The distinctiveness of the earlier mark
74 Like the Opposition Division which, for reasons of procedural economy, did not examine enhanced distinctiveness resulting from intensive use of the earlier mark, the Board of Appeal relied, in paragraphs 61, 62 and 67 of the contested decision, on the ‘normal’ inherent distinctiveness of the earlier mark, which must be understood, according to the case-law, as corresponding to an average degree of distinctiveness (see, to that effect, judgment of 5 June 2024, Enterprise Holdings v EUIPO – Qommute (COMMUTE WITH ENTERPRISE), T‑499/23, not published, EU:T:2024:350, paragraph 58 and the case-law cited).
75 There is no reason to call into question that assessment of inherent distinctiveness, which, moreover, is not disputed by the applicant.
(5) Global assessment of the likelihood of confusion
76 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).
77 For the purpose 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).
78 The global assessment 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 (see judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19 and the case-law cited).
79 In paragraphs 68 and 69 of the contested decision, the Board of Appeal concluded that there was neither a likelihood of confusion nor a likelihood of association on the part of the relevant professional public with a high level of attention, on the basis of the average inherent distinctiveness of the earlier mark, taking into account the relevant factors and their interdependence.
80 The applicant raises, in the first place, an inconsistency in the reasoning of the contested decision, given that the global assessment of the likelihood of confusion carried out by the Board of Appeal was based on the assumption that overall the signs display an average degree of visual similarity and a high degree of phonetic similarity, although, in the comparison of the marks, it found a low degree of visual similarity and an average degree of phonetic similarity.
81 The applicant maintains, in the second place, that the Board of Appeal did not correctly consider the degree of similarity of the goods, which should have been regarded as at least high. The applicant complains in particular that the Board of Appeal left the assessment of the degree of similarity of the goods in question open, even though that degree of similarity could have had an impact on the global assessment of the likelihood of confusion.
82 In the third place, the high level of attention of the public does not automatically lead to the conclusion that there is no likelihood of confusion, even where the earlier trade mark displays weak distinctiveness. The Board of Appeal attached too much importance to the level of attention of the public, although this is only one interdependent factor and all other factors support a high likelihood of confusion. The applicant asserts that the visual and phonetic similarities between the two signs are far greater than the differences. Those differences are not sufficient to distinguish the signs with certainty when the consumer encounters them on identical or highly similar goods. The fact that the relevant public will pay more attention to the goods in question does not mean that that public will scrutinise the marks before it down to the smallest detail.
83 Accordingly, the Board of Appeal was incorrect to find that a likelihood of confusion can be established only on the basis of enhanced distinctiveness of the earlier trade mark.
84 The intervener disputes the applicant’s arguments. It maintains that, despite the contradiction raised by the applicant between the degree of similarity of the signs found by the Board of Appeal in the comparison of those signs and the degree of similarity relied on by the Board of Appeal in the global assessment, the conclusion reached by the Board of Appeal at the end of that comparison is correct, as the signs display a low degree of visual similarity and an average degree of phonetic similarity.
85 The Board of Appeal also correctly affirmed that, from a conceptual point of view, the common element ‘nova’, which has weak distinctiveness, does not have much weight in the comparison of the signs at issue.
86 The intervener further argues that the Board of Appeal clearly stated that the goods were similar to at least a low degree and therefore gave a ruling on the similarity of those goods.
87 Lastly, the Board of Appeal did not automatically exclude the likelihood of confusion solely on the basis of the high level of attention of the relevant public or on the basis of a single element, but excluded that likelihood on the basis of a detailed analysis of all factors that must be taken into consideration in the global assessment.
88 In paragraph 66 of the contested decision, the Board of Appeal held that overall the signs at issue had been found to be visually similar to an average degree and phonetically similar to a high degree, whereas the common concept conveyed by those signs could not be given much weight in the global assessment because of its at best weak distinctiveness, and that the goods were similar to at least a low degree. In paragraph 67 of the contested decision, the Board of Appeal concluded from this that the differences between the signs would allow the relevant consumers with a high level of attention to distinguish safely between the marks at issue.
89 In the first place, the applicant is right to highlight the contradiction between the degrees of similarity determined in paragraphs 40 and 42 of the contested decision, on the one hand, and those accepted by the Board of Appeal in paragraph 66 of that decision, on the other. In paragraph 40 of the contested decision, the Board of Appeal found that the marks displayed a low degree of visual similarity. In paragraph 42 of the contested decision, it found an average degree of phonetic similarity. However, in paragraph 66 of the contested decision, it held that overall the signs had been found to be visually similar to an average degree and phonetically similar to a high degree.
90 This inconsistency cannot be explained, contrary to EUIPO’s assertions, by a simple clerical error which may have slipped into paragraph 66 of the contested decision. Indeed, the summary of the factors to be taken into account in the assessment of the likelihood of confusion at the beginning of the section concerning that likelihood is intended precisely to make very clear the degrees of similarity being weighed in applying the principle of interdependence. It must therefore be assumed that the Board of Appeal took into account the degrees of similarity referred to in in paragraph 66 of the contested decision in its global assessment of the likelihood of confusion.
91 In the second place, having regard to the case-law cited in paragraph 78 above, the applicant is right to criticise the fact that the Board of Appeal did not determine the degree of similarity of the goods covered by the marks at issue more precisely. Given that the Board of Appeal found that there was no likelihood of confusion, while accepting an average degree of visual similarity and a high degree of phonetic similarity, it was not sufficient for it to state that the goods were similar ‘to at least a low degree’, but rather it was required to determine precisely the degree of similarity of those goods. Even if the contested decision should be understood to the effect that the Board of Appeal accepted a low degree of visual similarity and an average degree of phonetic similarity, which is not entirely clear on account of the flagrant contradiction between paragraphs 40 and 42 of that decision, on the one hand, and paragraph 66 thereof, on the other, the outcome of its assessment of the existence of a likelihood of confusion could, by virtue of the principle of interdependence, very well be different if the goods are found to be similar to an average or high degree, rather than to a low degree.
92 Accordingly, the Board of Appeal made an error of assessment in concluding in its global assessment that there was no likelihood of confusion without determining the degree of similarity of the goods in question more precisely.
93 For the part of the relevant public which will single out the initial common element ‘nova’ in the two marks and associate it with the meaning of ‘new’ and ‘novelty’, the visual similarity is low, the phonetic similarity is average and the conceptual similarity is low. In view of the average inherent distinctiveness of the earlier mark and the high degree of similarity of the goods, even a high level of attention on the part of the relevant public cannot rule out a likelihood of confusion.
94 For the part of the relevant public for which ‘nova’ has no meaning, the visual similarity is average and the phonetic similarity is high, but the conceptual comparison remains neutral. In view of the average inherent distinctiveness of the earlier mark and the high degree of similarity of the goods, it cannot be ruled out that the relevant public, notwithstanding its high level of attention, may believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.
95 It follows that there is a likelihood of confusion both for the part of the relevant public for which the term ‘nova’ has a meaning and for the part for which it has no meaning.
96 Therefore, the first plea in law and, accordingly, the first head of claim must be upheld, without it being necessary to rule on the second plea in law, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001.
B. Second head of claim
97 By its second head of claim, the applicant claims that the Court should uphold the opposition filed against all the goods designated in the EU trade mark application at issue and refuse the application for registration of the mark applied for in its entirety.
98 EUIPO contends that that head of claim is unfounded.
99 In so far as the second head of claim seeks to have the opposition upheld and the application for registration of the mark applied for refused, the applicant is asking the Court, in essence, to adopt the decision which, according to the applicant, should have been taken by EUIPO, that is to say, a decision finding that the conditions for upholding the opposition brought by the applicant are satisfied. Consequently, the applicant is asking the Court to exercise its power to alter decisions, as provided for in Article 72(3) of Regulation 2017/1001 (judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 84).
100 In that regard, it should be borne in mind that, although the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position, it must be exercised in situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
101 In the present case, the conditions for the exercise of the Court’s power to alter decisions are satisfied. The Board of Appeal adopted a position, in the contested decision, on the likelihood of confusion on the part of the relevant public on the basis of an average inherent distinctiveness of the earlier mark, with the result that the Court has the power to alter that decision on that basis.
102 As is apparent from paragraph 95 above, the Board of Appeal was required to hold, like the Opposition Division, that, even on the basis of an average inherent distinctiveness of the earlier mark, there is a likelihood of confusion.
103 In those circumstances, the appeal filed with the Board of Appeal by the intervener against the decision of the Opposition Division of 5 September 2022, by which that department upheld the opposition for all the goods in question and refused the trade mark application filed by the intervener, must, by way of alteration of the contested decision, be dismissed.
C. Costs
104 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.
105 Since EUIPO and the intervener have been unsuccessful, first, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter, and, second, the intervener must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Alters the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 October 2023 (Case R 2005/2022-1) such that the appeal filed with EUIPO by Novaresine Srl against the decision of the Opposition Division of 5 September 2022 concerning Opposition No B 3 119 195 is dismissed;
2. Orders EUIPO to bear its own costs and to pay those incurred by Rain Carbon Germany GmbH;
3. Orders Novaresine Srl to bear its own costs.
Škvařilová-Pelzl | Nõmm | Steinfatt |
Delivered in open court in Luxembourg on 22 January 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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