JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
4 June 2025 (*)
( EU trade mark - Opposition proceedings - Application for EU figurative mark ALWAYS RUN 4PRESIDENT - Earlier EU figurative mark PRESIDENT's - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Enhanced distinctiveness of the earlier mark acquired through use )
In Case T‑76/24,
Sven Benschop, residing in Montfoort (Netherlands), represented by T. Berendsen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova‑Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Seven Bell Group, established in Campi Bisenzio (Italy), represented by M. De Vietro, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg (Rapporteur) and P. Zilgalvis, 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, Mr Sven Benschop, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2023 (Case R 1341/2023-2) ('the contested decision').
Background to the dispute
2 On 21 April 2020, applicant filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 18, 25 and 35 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.
4 On 15 October 2020, the intervener, Seven Bell Group, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on the earlier EU figurative mark No 11 476 04 registered on 7 June 2013 reproduced below:
6 The earlier mark is registered in respect of goods in Classes 18 and 25 of the Nice Agreement.
7 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), relating to the likelihood of confusion between the marks at issue.
8 By decision of 13 December 2021, the Opposition Division upheld in part the opposition, on the basis of Article 8(1)(b) of Regulation 2017/1001, in respect of some of the goods and services in Classes 18, 25 and 35 ('the first decision of the Opposition Division'). The Opposition Division found in particular that, based on the similarity of the marks at issue resulting from the distinctive element 'president' and the fact that the similarities between the signs could not be offset by their differences, a likelihood of confusion could not be ruled out and took the view that it was not necessary to assess the enhanced distinctiveness claimed by the intervener.
9 On 5 January 2022, the applicant filed a notice of appeal with EUIPO against the first decision of the Opposition Division.
10 By decision of 28 June 2022 ('the first decision of the Board of Appeal'), the Board of Appeal annulled the first decision of the Opposition Division. If found that, in view of the importance of the visual perception of the marks at issue and the earlier mark's lack of enhanced distinctiveness, the low degree of visual similarity between those marks was not sufficient to establish a likelihood of confusion even in respect of identical goods and services. It remitted the case to the Opposition Division for the purpose of assessing the evidence submitted by the intervener to demonstrate the enhanced distinctiveness of the earlier mark since the latter is crucially important for concluding that there was a likelihood of confusion.
11 By decision of 4 May 2023 ('the second decision of the Opposition Division'), the Opposition Division found that there was a likelihood of confusion between the marks at issue. It found that the evidence submitted by the intervener indicated that the earlier mark had acquired enhanced distinctiveness through its use on the market for clothing and it repeated the assessment concerning the similarities between the signs which it had carried out in its first decision. Consequently, it upheld in part the opposition in respect of certain goods and services in Classes 18, 25 and 35.
12 On 26 June 2023, the intervener filed a notice of appeal with EUIPO against the second decision of the Opposition Division.
13 By the contested decision, the Board of Appeal dismissed the appeal.
14 It confirmed, first, the findings of the Opposition Division relating to the fact that the level of attention of the general public in respect of the goods and services at issue was average and that the wholesale services included in the services in Class 35 targeted a specialised public with a higher level of attention, that the goods and services at issue were identical or similar and that the marks at issue were visually similar to a low degree, phonetically similar to a below-average degree and conceptually similar to a below-average degree for the relevant English-speaking public. It took the view that the marks at issue were not conceptually similar for the part of the public that will recognise only the concepts of the tortoise and the number 4 in the sign applied for and it indicated that the earlier mark enjoyed normal inherent distinctiveness in respect of all of the goods and services it covered.
15 The Board of Appeal confirmed, secondly, the Opposition Division's finding that the earlier mark enjoyed enhanced distinctiveness acquired through its use in respect of menswear, at least in Italy, and found that that distinctiveness was sufficient to offset the low degree of visual similarity between the marks at issue.
16 It accordingly upheld the second decision of the Opposition Division and dismissed the appeal.
Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition in its entirety;
– order EUIPO and the intervener to pay the costs.
18 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
19 The intervener contends that the Court should:
– dismiss the action and uphold the contested decision;
– order the applicant to pay the costs.
Law
Admissibility of evidence submitted for the first time before the Court
20 EUIPO claims that Annexes A.6 and A.7 are inadmissible since the applicant submitted them for the first time before the Court.
21 Annex A.6 corresponds to a report relating to 'EUIPO Statistics for European Union Trade Marks' for the period from January 1996 to December 2023. Annex A.7 contains a presentation from the Centrum tot Bevordering van de Import uit ontwikkelingslanden (CBI, Centre for the Promotion of Imports from developing countries, Netherlands) from the Dutch Ministry of Foreign Affairs, entitled 'What is the demand for apparel on the European Market?'.
22 According to the case-law, it follows from Article 72(3) of Regulation 2017/1001, that the Court may annul or alter the subject matter of the action if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration, set out in Article 72(2). Accordingly, although the judicial review exercised by the Court cannot consist of a mere repetition of a review previously carried out by the Board of Appeal, it should be borne in mind that it is not the Court's function to review the facts in the light of documents submitted for the first time before it. To allow such evidence would be contrary to Article 188 of the Rules of Procedure of the Court, according to which the parties' submissions may not change the subject matter of the proceedings before the Board of Appeal (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraphs 52 to 55 and the case-law cited, and of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
23 Annexes A.6 and A.7 to the application are intended to demonstrate the significance of the size of the clothing market in the EU. However, they are not part of EUIPO's administrative file and were therefore submitted for the first time before the Court. Accordingly, they must be rejected as inadmissible.
The claim for annulment
24 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 due to the incorrect assessment of the likelihood of confusion.
25 That plea is divided into two parts.
26 By the first part, the applicant claims that the Board of Appeal incorrectly found that the evidence submitted by the intervener demonstrated that the earlier trademark had acquired enhanced distinctiveness through use.
27 By the second part, the applicant submits that the Board of Appeal was incorrect to find that the alleged enhanced distinctiveness of the earlier mark was sufficient to offset the low degree of visual similarity and thus create a likelihood of confusion between the marks at issue.
28 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two 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.
29 According to established case-law, the risk that the relevant public might believe that the goods or services covered by the marks at issue come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 17). The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, and the distinctive character of the earlier mark is one of those relevant factors (see judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 55 and the case-law cited).
30 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).
31 It is in the light of the above considerations that it is necessary to examine whether the Board of Appeal was right to find, as regards the marks at issue, that there was a likelihood of confusion on the part of the relevant public. Accordingly, it is appropriate to deal, in the first place, with the second part of the applicant's single plea in law.
32 As a preliminary point, as regards the relevant public and its level of attention, the Board of Appeal found that the goods and services at issue targeted the public at large (so far as concerns all the goods and services in Classes 18, 25 and 35 covered by the contested mark) and business consumers (so far as concerns the services in Class 35). In its view, first, the level of attention of the general public was average in respect of goods in Class 18 and services in Class 35 and were not above average in respect of goods in Class 25 and, secondly, the level of attention of business consumers was higher for the wholesale services included in Class 35.
33 As regards the comparison of the goods and services, the Board of Appeal found, as did the Opposition Division, that the goods and services in Classes 18, 25 and 35 covered by the contested mark were identical or similar to varying degrees to the goods in Class 25 covered by the earlier mark.
34 There is no need to call those findings, which are not, moreover, disputed by the applicant, into question.
35 As regards the meaning of the various terms which make up the marks at issue, it should be borne in mind, first of all, that, when the Board of Appeal confirms a lower-level decision of EUIPO in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal's decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal's assessment was well founded (see judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraphs 48 and 49 and the case-law cited).
36 In that regard, it is apparent from paragraphs 33, 37, 56 and 63 of the contested decision that the Board of Appeal adopted the grounds of the second decision of the Opposition Division which therefore form an integral part of the reasoning of the contested decision.
37 Therefore, the contested decision must be read in the light of the second decision of the Opposition Division. Accordingly, on page 8 of that decision, the Opposition Division found, first of all, that the English word 'president' means '[the] leader of a republic or an organisation' and that, on account of the existence of similar terms in other languages, it would be understood in many EU countries, except, possibly, Greece. The Opposition Division also acknowledged that, since the term 'president' has no meaning in relation to the goods and services at issue, it was distinctive both for the part of the relevant public which understood the meaning of that word and for the rest of that public. Next, the Opposition Division noted that the relevant non-English-speaking public will perceive the number '4' as such and not as the English preposition 'for' and found that that element was distinctive. Lastly, it stated that the expression 'always run 4president' was meaningless for the non-English-speaking public and that that expression was distinctive for the whole of the relevant public since it had no meaning in relation to the goods and services concerned.
38 Those assessments have not been disputed by the applicant. Nevertheless, the fact that the party which claims that a decision of a Board of Appeal should be annulled does not dispute certain factors that are essential to the analysis of the likelihood of confusion does not mean that the Court may not or must not review the merits of those factors, since those factors constitute an essential stage of the reasoning in which the Court is required to engage in order to carry out the review of the lawfulness of that decision. Where it is called upon to assess the legality of a decision of a Board of Appeal of EUIPO, the Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal since that assessment is part of the findings whose legality is being disputed before it (see, to that effect, judgment of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 19 and the case-law cited).
39 In the present case, it must be observed that, contrary to what the Opposition Division found, the term 'president' will be understood by the whole of the relevant public. Indeed, as is stated in the second decision of the Opposition Division, very close equivalents to that term exist in many EU languages (for example, 'Präsident' in German; 'président' in French; 'præsident' in Danish; 'president' in Swedish; 'presidente' in Italian, Spanish and Portuguese; 'prezidents' in Latvian). In addition, that word is commonly used to designate Heads of State worldwide and forms part of basic English vocabulary. Accordingly, while it is true that the expression 'always run 4president', taken as a whole, will potentially not be understood by the non-English-speaking public, that public will, by contrast, attribute meaning to the term 'president' in the marks at issue. In so far as concerns the remainder of the Opposition Division's assessments, as confirmed by the Board of Appeal, there is no need to call them into question.
40 As regards the comparison of the signs, the Board of Appeal observed, as did the Opposition Division, that the marks at issue were visually similar to a low degree and phonetically similar to a below-average degree.
41 There is no need to call into question those findings of the Board of Appeal, which, moreover, are not disputed by the applicant.
42 As regards the conceptual comparison, the Board of Appeal took the view, as did the Opposition Division, that the marks at issue were similar to a below-average degree for the part of the relevant public which understands English due to the presence of the common element 'president' and that they were not similar for the part of the relevant public which will recognise only the concepts of the tortoise and the number '4' in the contested mark. On page 9 of its second decision, the Opposition Division found that the earlier mark will be understood as meaning 'belonging to the president' and the mark applied for will be understood as 'always stand for election to be president' or in an ironic way as meaning 'always physically run to be elected president'.
43 There is no need to call into question the Board of Appeal's finding concerning the English-speaking public, which, moreover, is not disputed by the applicant, since the marks at issue do not convey the same conceptual connotation, one referring to something belonging to a president and the other to the action of always standing for election to be president. By contrast, non-English-speaking consumers will understand the meaning of the term 'president', contrary to what the Opposition Division claims, but not necessarily that of the expression 'always run'. However, even in those circumstances, the conceptual similarity is below-average since the word element 'president', which is common to the contested signs, will be perceived as an evoking or lauding the positive characteristics of the goods and services at issue, which, in the present case, may project an image of power or authority, namely that of a renowned individual who leads an assembly, a group or a State (see, by analogy, judgment of 8 December 2015, Compagnie générale des établissements Michelin v OHIM – Continental Reifen Deutschland (XKING), T‑525/14, not published, EU:T:2015:944, paragraph 32, and of 6 November 2024, House of Prince v EUIPO – Biały (AROMA KING), T‑118/23, not published, EU:T:2024:778, paragraph 38 and the case-law cited).
44 Accordingly, since the word element 'president', which is common to the signs at issue, is distinctive to a low degree and laudatory, the conceptual similarity of the signs, each taken as a whole, must be regarded as below average in respect of the non-English-speaking public (see, to that effect, judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 51).
45 As regards the global assessment of the likelihood of confusion, the applicant challenges in particular the Board of Appeal's finding, in paragraph 62 of the contested decision, that the low degree of visual similarity between the signs at issue will be offset by the enhanced distinctiveness of the earlier mark in respect of the goods found to be identical or similar to varying degrees to the clothing covered by the earlier mark. Accordingly, he criticises the Board of Appeal for endorsing the finding of the second decision of the Opposition Division that there is a likelihood of confusion between the marks at issue.
46 According to the applicant, it is not because of the possible enhanced distinctiveness of the earlier figurative mark that the relevant public will better remember the element '4president' of the contested mark, since that marks is also made up of the initial part which includes the expression 'always run'.
47 Consequently, on account of the low degree of visual similarity of the marks at issue, the significance of the visual differences between those marks, the fact that the enhanced distinctiveness of the earlier mark is not sufficient to offset those differences, and the below-average degree of phonetic similarity of those marks, the applicant claims that the relevant public will not think that the goods and services at issue come from the same undertaking.
48 The applicant submits in that regard that the Board of Appeal gave excessive and unjustified weight to the enhanced distinctiveness of the earlier mark as a factor in the global assessment of the likelihood of confusion, without clearly explaining the impact of that factor on that assessment in the present case. The finding of the earlier mark's enhanced distinctiveness, he argues, does not automatically bring about a likelihood of confusion, and it is for the Board of Appeal to analyse the likelihood of confusion in the light of the interdependence of the relevant factors.
49 EUIPO and the intervener dispute the applicant's arguments in that respect.
50 EUIPO contends that the finding in paragraph 62 of the contested decision must be read in the context of the second decision of the Opposition Division, which the Board of Appeal confirmed in full, and the statement of reasons of which forms part of the context of the contested decision and is fully subject to judicial review by the EU judicature.
51 In the present case, it argues, the distinctiveness of the earlier mark was only one of the relevant factors among others involved in the global assessment of the likelihood of confusion. Among those relevant factors are the inherent distinctiveness of the earlier mark, the more significant impact of the visual aspect, the length of the contested sign and of the common element 'president', the conceptual similarities and the weight of the verbal elements as opposed to the figurative elements.
52 In addition, according to EUIPO, the applicant disputes the assessment of the similarity of the signs even though it put forward no argument concerning an error as regards the global comparison of the signs and itself admitted that there is a low degree of visual similarity between the signs at issue. Since those signs share the common element 'president', the Board of Appeal could not rule out all visual similarity between those marks. Furthermore, since the earlier mark enjoys enhanced distinctiveness, the presence of the word 'president' in both signs allows for closer comparison of the marks at issue and the assumption that the goods and services at issue come from the same undertaking or from economically linked undertakings.
53 In paragraph 61 of the contested decision, the Board of Appeal recalled the findings of its first decision, in which it had found, based on the lack of enhanced distinctiveness acquired through use, that there was no likelihood of confusion between the signs. It had found that, in view of the particular importance of the visual perception of the marks at issue, a low degree of visual similarity between the signs at issue was not sufficient to establish a likelihood of confusion even in respect of identical goods and services. It added that that finding was further strengthened by the fact that the phonetic similarity between the signs was only below average and that, conceptually, the English-speaking part of the relevant public would view the signs as being similar to a below-average degree and the other part of the relevant public would not regard them as similar.
54 In paragraph 62 of the contested decision, the Board of Appeal found that the earlier mark enjoyed enhanced distinctiveness acquired through use in respect of clothing and that, consequently, the low degree of visual similarity was offset by the enhanced distinctiveness in respect of the goods and services which were found to be identical or similar to varying degrees to the clothing covered by the earlier mark.
55 It must be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment 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).
56 In that regard, the enhanced distinctiveness of a mark, acquired through use, must therefore be taken into account when determining whether the similarity between the signs or between the goods or services covered is sufficient to give rise to a likelihood of confusion (see judgment of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 45 and the case-law cited).
57 According to settled case-law, the more distinctive the trade mark concerned is, the greater the likelihood of confusion will be, and therefore marks which are highly distinctive, either per se or because of their recognition by the public, enjoy broader protection than less distinctive marks (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20). Accordingly, it must be observed that the enhanced distinctiveness of the earlier mark increases the likelihood of confusion between the marks at issue (judgment of 15 July 2020, Itinerant Show Room v EUIPO – Save the Duck (FAKE DUCK), T‑371/19, not published, EU:T:2020:339, paragraph 67).
58 However, it cannot be ruled out that, even where an earlier mark has acquired high distinctiveness as a result of the use which has been made of it, the relevant public may nevertheless establish with certainty a distinction between the marks at issue (see judgments of 2 March 2022, Banco de Investimento Global v EUIPO – Banco BIC Português (EUROBIC), T‑125/21, not published, EU:T:2022:102, paragraph 114 and the case-law cited, and of 15 March 2023, Novartis v EUIPO – AstraZeneca (BREZTRI), T‑175/22, not published, EU:T:2023:135, paragraph 94 and the case-law cited).
59 In the present case, the Board of Appeal adopted the grounds of the second decision of the Opposition Division relating to the global assessment of the likelihood of confusion which, therefore, form an integral part of the reasoning of the contested decision.
60 Accordingly, as EUIPO submits, paragraph 62 of the contested decision, in which the Board of Appeal found that there was a likelihood of confusion due to the fact that the enhanced distinctiveness of the earlier mark offset the low degree of visual similarity, must be read in the context of the second decision of the Opposition Division since the Board of Appeal confirmed that decision.
61 Accordingly, first, it must be found that, contrary to what the applicant alleges, the Board of Appeal did not only take into account the earlier mark's enhanced distinctiveness acquired through use, assuming that such distinctiveness had been established, in the global assessment of the likelihood of confusion, but weighed it against the other relevant factors in the present case, namely the average inherent distinctiveness of the earlier mark, the visual and conceptual similarities, the more significant impact of the visual aspect and of the common element 'president' in the marks at issue and the weight of the verbal elements as opposed to the figurative elements.
62 Secondly, as regards the error of assessment concerning the existence of a likelihood of confusion, it is clear that the degree of visual similarity is low and that the degrees of phonetic and conceptual similarity are below average for the relevant public. The Court accordingly confirms that the differences between the signs at issue, in particular the visual differences, which were made apparent by the first decision of the Board of Appeal are indeed noticeable and must be taken into account in the analysis of the likelihood of confusion.
63 It follows that the phonetic and visual differences between the signs at issue have a not insignificant impact in the global assessment of the likelihood of confusion and contribute to giving a quite different overall impression of the figurative signs at issue, even despite their common word element 'president'.
64 The arrangement of the marks is different, to the extent that, as the Opposition Division states in its second decision, the earlier figurative mark is made up of only two elements, 'president' and ' 's', written in bold black upper-case letters except for the 's' which is in lower case, whereas the mark applied for is made up of the word element 'always run', followed by a moving tortoise, and the word element '4president', presented in a very stylised way. In addition, those word elements are separated by a thick black line and are surrounded on either side by three arrows pointing towards them.
65 Moreover, it should be recalled that the possible enhanced distinctiveness is attributable to the earlier figurative mark as a whole and not solely the word element 'president', which is distinctive to a low degree, as is stated in paragraph 43 above, in so far as it conveys a laudatory message that the goods at issue are of good quality and evoke a degree of authority.
66 Accordingly, while it is true that distinctiveness acquired through some degree of significant use of a figurative mark may be taken into account when determining whether the similarity between the signs or between the goods or services covered is sufficient to give rise to a likelihood of confusion (see, to that effect, judgment of 18 December 2008, Torres v OHIM-Bodegas Peñalba López (Torre Albéniz), T‑287/06, EU:T:2008:602, paragraph 75), it does not, however, suffice in the present case to offset the differences between the marks at issue. Consequently, no likelihood of confusion can be found to exist on the part of the public.
67 In those circumstances, the Court finds that, even if the earlier figurative mark benefits from a degree of enhanced distinctiveness acquired through its use, that fact does not mean that the relevant public, even though its level of attention is average and the goods and services at issue are identical or similar to varying degrees, will perceive the differences, in particular the visual differences, between the marks at issue objectively less than the low degree of visual similarity resulting from the matching word element 'president' common to both of the figurative marks at issue.
68 Accordingly, the Board of Appeal made an error of assessment by finding that the low degree of visual similarity was offset by the enhanced distinctiveness of the earlier mark, with the result that there was a likelihood of confusion between the marks at issue.
69 Consequently, the single plea in law raised by the applicant, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, is well founded. It follows that it does not appear necessary to examine the first part of the single plea in law put forward by the applicant.
70 Hence, the contested decision should be annulled.
The claim for alteration
71 As regards the applicant's second head of claim, that the opposition be rejected in its entirety, it should be observed that this is a request for alteration of the contested decision.
72 That is not a request that the Court require EUIPO to do or to refrain from doing something, which would constitute a direction addressed to EUIPO. By contrast, the request is that the Court adopt the decision which, in the applicant's view, EUIPO should have taken, namely a decision finding that the conditions for opposition were not met. Such a decision is among the measures which may be taken by the Court in the exercise of its power to alter decisions (see, to that effect, judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 19, and of 6 December 2016, Tuum v EUIPO – Thun (TUUM), T‑635/15, not published, EU:T:2016:708, paragraph 87).
73 In the present case, the Board of Appeal defined its position, in the contested decision, on all the aspects connected with the applicant's dispute of the global assessment of the likelihood of confusion. Accordingly, it is clear that the conditions for the exercise of the Court's power to alter decisions are met.
74 In paragraph 61 of the contested decision, the Board of Appeal found that, without an enhanced degree of distinctiveness of the earlier mark, there was no likelihood of confusion between the marks at issue.
75 As is apparent from the above considerations, the Board of Appeal was required to find that there was no likelihood of confusion in the present case since the goods and services at issue are identical or similar to varying degrees, the degree of visual similarity between the signs is low, the degree of phonetic similarity is below average, the degree of conceptual similarity is below average for the relevant public and a possible enhanced distinctiveness of the earlier mark did not suffice to offset the low degree of similarity between the signs.
76 As a result, the opposition must be rejected.
Costs
77 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.
78 Since EUIPO and the intervener have been unsuccessful, they must be ordered to bear their own costs and to pay those of the applicant, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2023 (Case R 1341/2023-2);
2. Rejects the opposition brought by Seven Bell Group;
3. Orders EUIPO and Seven Bell Group to pay the costs.
Costeira | Öberg | Zilgalvis |
Delivered in open court in Luxembourg on 4 June 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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