PIK-KO v EUIPO - Haribo Ricqles Zan (P.I.C. Co.) (EU trade mark - Judgment) [2021] EUECJ T-73/21 (10 November 2021)

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(EU trade mark – Invalidity proceedings – EU figurative mark P.I.C. Co. – Earlier national figurative mark PIK – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) – Declaration of partial invalidity)

PIK-KO AD, established in Kazichene (Bulgaria), represented by A. Ivanova, lawyer,

European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, acting as Agent,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 27 November 2020 (Case R 1847/2019-5), relating to invalidity proceedings between Haribo Ricqles Zan and PIK-KO,

composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,

having regard to the application lodged at the Court Registry on 4 February 2021,

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,

1 On 3 May 2016, the applicant, PIK-KO AD, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).

2 Registration as a mark, which is contested in the present case, was sought for the following figurative sign:

3 The goods and services in respect of which registration was sought and which are relevant in the present case are in Classes 30 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, and correspond, for each of those classes, to the following description:

– Class 30: ‘Bread; Vol-au-vents; Sweetmeats; Ice cream; Chocolate; Artificial chocolate; preparations made from cereals, bread, pastry and confectionery, edible ices; Pasta shells; Hushpuppies [breads]; Foodstuffs made from maize; Foodstuffs made from cereals; Food preparations based on grains; Foodstuffs made of rice; Cereal-based snack food; goods made of processed grains, starches; ice creams, frozen yogurts and sorbets’;

– Class 35: ‘Retail services relating to food; Wholesale services in relation to foodstuffs; Retail services in relation to foodstuffs; Retail, via catalogue, of foodstuffs; Retail via global computer networks of foodstuffs; Mail order retail of foodstuffs; Retail services relating to food; Wholesale services in relation to beer; Retail services in relation to foodstuffs; Retail services in relation to meats; Retail services in relation to beer; Wholesale services in relation to cocoa; Wholesale services in relation to teas; Wholesale services in relation to desserts; Wholesale services in relation to foodstuffs; Wholesale services in relation to chocolate; Wholesale services in relation to ice creams; Wholesale services in relation to coffee; Wholesale services in relation to confectionery; Wholesale services in relation to dairy products; Retail services in relation to seafood; Wholesale services in relation to fragrancing preparations’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2016/131 of 15 July 2016. The contested mark was registered on 25 May 2018.

5 On 27 June 2018, the other party to the proceedings before the Board of Appeal, Haribo Ricqles Zan, filed an application with EUIPO for a declaration that the contested mark was invalid in respect of all the goods and services referred to in paragraph 3 above.

6 The application for a declaration of invalidity was based on the earlier French figurative mark Image not found

, filed on 3 January 2014 and registered on 25 April 2014 under the number 4058246, covering goods and services in Classes 30 and 35 and corresponding, for each of those classes, to the following description:

– Class 35: ‘Retailing, wholesaling and sale via mail order of confectionery’.

7 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 31 July 2019, the Cancellation Division upheld the application for a declaration of invalidity and declared the contested mark invalid in respect of all the goods and services referred to in paragraph 3 above.

9 On 19 August 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division in so far as it had declared the contested mark invalid in respect of the goods and services at issue.

10 By decision of 27 November 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal in part. It upheld the Cancellation Division’s decision in respect of all the goods and services except ‘Pasta shells; Hushpuppies [breads]’ in Class 30. It found that the relevant territory in the present case was France and that the level of attention of the relevant public, comprising the general public and professionals, varied from average to higher than average according to the goods and services concerned. It went on to confirm the findings of the Cancellation Division that the goods and services were identical or similar, with the exception of ‘Pasta shells; Hushpuppies [breads]’ in Class 30, which the Board of Appeal found to be different from the goods covered by the earlier mark. In addition, it found that the signs at issue had a low degree of visual similarity and that they were highly similar, if not identical, phonetically. As regards the conceptual comparison, the Board of Appeal stated that the only difference between the signs was confined to the secondary and non-distinctive element ‘co.’ of the contested mark. Lastly, the Board of Appeal concluded, in essence, that given the overall impression created by the signs, the identity and similarity of some of the goods and services, the concept of imperfect recollection and the interdependence of the various factors to be taken into account, there was a likelihood of confusion on the part of the relevant public, despite the low degree of visual similarity, in respect of all the goods and services referred to in paragraph 3 above, with the exception of ‘Pasta shells; Hushpuppies [breads]’ in Class 30.

13 As a preliminary point, it should be observed that given the date on which the application for registration at issue was filed, namely 3 May 2016, which is determinative for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

14 Consequently, as far as the substantive rules in the present case are concerned, the references to Article 60(1)(a) and Article 8(1)(b) of Regulation 2017/1001 made by the Board of Appeal in the contested decision, and by the applicant in its arguments, must be understood as referring to Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical to those corresponding articles of Regulation 2017/1001.

15 The applicant relies on a single plea in law in support of the action, alleging the infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.

16 The applicant submits that the Board of Appeal was wrong to conclude that there was a likelihood of confusion. It submits that the Board of Appeal erred as regards the assessment of the similarity of the signs and in the global assessment of the likelihood of confusion.

18 Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, provides that on application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory on which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

19 According to settled case-law, 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. According to the same case-law, 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 at issue 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).

20 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).

21 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

22 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was right to find in the present case that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

23 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

24 In paragraphs 21 to 25 of the contested decision, the Board of Appeal found, in essence, that the relevant territory for analysing the likelihood of confusion is France and that, depending on the goods and services concerned, the level of attention of the relevant public, consisting in the general public and professionals, varies from average to higher than average. There is no need to call into question that assessment, which, moreover, is not disputed by the parties.

25 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or 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 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

26 In the present case, the Board of Appeal concluded, in paragraphs 30 to 38 of the contested decision, that all the goods and services referred to in paragraph 3 above, in Classes 30 and 35, were identical or similar, with the exception of ‘Pasta shells; Hushpuppies [breads]’ in Class 30. There is no need to call into question that assessment, which, moreover, is not disputed by the parties.

27 It is apparent from the case-law that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

28 In a case involving a composite mark, the assessment of the similarity between two marks at issue 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). 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).

29 In the present case, after examining the distinctive and dominant elements of the signs at issue, in paragraphs 43 to 48 of the contested decision, the Board of Appeal found, in paragraphs 50 to 53 of that decision, that the signs at issue had a low degree of visual similarity and were very similar phonetically, if not identical. As regards the conceptual comparison, the Board of Appeal stated that the only difference between the signs was confined to the secondary and non-distinctive element ‘co.’ of the contested mark.

30 It should be borne in mind that where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods or services at issue by citing the name of the mark than by describing its figurative element (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 39; see, also, judgment of 25 May 2016, Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (ocean ibiza), T‑6/15, not published, EU:T:2016:310, paragraph 45 and the case-law cited).

31 As regards the earlier mark, it must be observed that it consists in the capital letters ‘P’ and ‘K’ written in a standard typeface. An inverted letter ‘i’ is placed between those two letters, which is the same size and typeface as the letters ‘P’ and ‘K’. The Board of Appeal found that although the inverted ‘i’ may resemble an exclamation mark, it was highly unlikely that consumers would perceive it as such rather than as the letter ‘i’. In addition, the Board of Appeal found, in paragraph 44 of the contested decision, first, that the sign would be perceived by at least a majority of the relevant public as PIK, with the inverted letter ‘i’ as a central element, and, secondly, that it had no meaning for the relevant goods and services, with the result that it had a normal degree of distinctiveness with respect to those goods and services.

32 As regards the contested mark, it is composed of the elements ‘p.i.c.’ and ‘co.’ written in slightly stylised letters and depicted in the middle of a white rectangular background and a label comprising two wavy lines which will be regarded by the relevant public as being purely decorative figurative elements with no distinctiveness. In essence, the Board of Appeal found that although the element ‘p.i.c.’ resembles the French word meaning ‘peak’ and that for ease of reference it could be pronounced as such, it was unlikely that it conveyed that meaning. In the Board of Appeal’s view, that element will rather be perceived by the relevant public as an unknown acronym, thus giving it a normal degree of distinctiveness. As regards the element ‘co.’, which is clearly removed from the element ‘p.i.c.’, the Board of Appeal found that it would be perceived by that public as referring to the word ‘company’ since it is the abbreviation of the English word ‘company’, widely used at the end of trade and company names to designate the legal form of an entity. According to the Board of Appeal, that element ‘co.’, which has no distinctive character, will thus attract only a very low level of attention on the part of the relevant public.

33 It is in the light of those considerations that the signs must be compared visually, phonetically and conceptually.

34 The Board of Appeal found, in essence, in paragraphs 50 and 51 of the contested decision, that, despite the differences between the signs at issue and the fact that the earlier mark is a short sign, those signs did have a low degree of visual similarity since they had the first two capital letters, ‘P’ and ‘I’, in common.

35 The applicant submits that the Board of Appeal ought to have concluded that the signs were visually different on the ground that they only have the capital letter ‘P’ in common and that all the other letters are different, including in terms of their graphic and structural features.

37 It should be noted that while it is true that, visually, the signs differ in relation to their graphic representations, to the non-distinctive, second word element ‘co.’ of the contested mark and to the non-distinctive, figurative and decorative elements of that mark, the applicant cannot properly claim that the signs at issue only have the first capital letter ‘P’ in common. As stated in paragraph 31 above, although the inverted letter ‘i’ of the earlier mark may resemble an exclamation mark, it is highly unlikely that consumers will perceive it as such rather than as the letter ‘i’, which is why the sign will be perceived by at least a majority of the relevant public as being PIK, with the inverted letter ‘i’ as the central element.

38 Contrary to what the applicant claims, and as the Board of Appeal and EUIPO contend, it must, therefore, be found that the signs at issue share the same initial capital letters ‘P’ and ‘I’, even though the letter ‘I’ is represented differently, which means that those signs have some degree of visual similarity. That is particularly true given that the elements of similarity are present in the initial parts, which attract the consumer’s attention more than the following parts, and that, in the present case, from a visual point of view, the relevant public will pay far more attention to the element ‘p.i.c.’ in the contested mark than to the rest of the elements. However, as the Board of Appeal correctly found in paragraph 51 of the contested decision, that similarity is low in view of the differences caused by the way the marks are represented graphically, by the contested mark’s second word element ‘co.’ and by that mark’s non-distinctive, figurative and purely decorative elements.

39 In paragraph 52 of the contested decision, the Board of Appeal found that since the contested mark’s element ‘p.i.c.’ and the single element that makes up the earlier mark would be pronounced identically by a significant part of the relevant public, the signs at issue were, phonetically, highly similar for the part of the relevant public which would pronounce the element ‘co.’ of the contested mark and identical for the part of that public which would not pronounce it.

40 The applicant argues that the Board of Appeal ought to have concluded that the signs at issue were phonetically dissimilar on the ground that there is a difference in length and sound which creates a different overall impression between those signs. It submits in particular that since the element ‘p.i.c.’ is an abbreviation, each letter of the contested mark will be pronounced separately, as is the case for well-known brands such as M&M’s or H&M.

42 As regards the pronunciation of the element ‘p.i.c.’, it must be found that, contrary to the applicant’s claims, it is unlikely that the relevant public would pronounce each letter separately.

43 First, as the Board of Appeal pointed out in paragraph 46 of the contested decision, even if the relevant public will perceive that element as an acronym, the fact remains that, for ease of reference, it will most often pronounce it as the word ‘pic’ in French. In view of the fact that, in daily purchases, consumers generally tend to choose the easiest and fastest way to identify the goods and services they seek, it would seem artificial to pronounce the contested mark in the way suggested by the applicant, as EUIPO notes, moreover, in paragraph 19 of the response.

44 Secondly, the applicant’s argument based on the pronunciation of well-known brands such as M&M’s and H&M must be rejected. It must be held, as the Board of Appeal found in paragraph 46 of the contested decision, that a situation where letters are separated by full stops is in no way comparable to one where letters are separated by an ampersand which is pronounced as ‘and’, as is the case of the examples put forward by the applicant. In any event, it has to be pointed out that the applicant does not advance any specific argument which enables the Board of Appeal’s finding on that point to be called into question, nor does it adduce any evidence to demonstrate that the way of pronouncing the element ‘p.i.c.’, accepted by the Board of Appeal in the phonetic comparison of the signs, is excluded.

45 In those circumstances, it must be held that the earlier mark and the element ‘p.i.c.’ of the contested mark will be pronounced identically by a significant part of the relevant public.

46 As regards the pronunciation of the element ‘co.’, since that element is clearly removed from the element ‘p.i.c.’, has no distinctive character and will attract only a low level of attention on the part of the relevant public, as is apparent from paragraph 32 above, it cannot be excluded that it will not be pronounced, as the Board of Appeal noted in paragraph 47 of the contested decision.

47 In the light of the foregoing considerations, it must, therefore, be held that, so far as concerns the phonetic aspect, the Board of Appeal did not err in paragraph 52 of the contested decision in finding that the signs at issue were identical for the part of the relevant public which would not pronounce the element ‘co.’ and very similar for the part of that public which would pronounce it. The pronunciation of the element ‘co.’ would have only a limited effect and, while it is true that it would bring about a difference in length and sound phonetically, such a difference would in no way suffice to create a different overall impression between the two signs at issue from the phonetic point of view as the applicant claims. That is particularly true since the earlier mark and the first element of the contested mark, which are phonetically identical, are located in the initial parts of the signs at issue, which attract the consumer’s attention more than the following parts.

48 The Board of Appeal stated, in paragraph 53 of the contested decision, in essence, that the only conceptual difference between the signs was confined to the secondary and non-distinctive element ‘co.’ of the contested mark, which, however, had only a limited impact, if any.

49 It should be observed that the applicant does not dispute the Board of Appeal’s assessment. It merely states that the words and acronyms do not have any meaning.

50 In that regard, it must indeed be noted that the single element of the earlier mark has no meaning and does not convey any concept, as the applicant also asserts. Likewise, even though the element ‘p.i.c.’ in the contested mark resembles the French word meaning ‘peak’, it is unlikely that it conveys that meaning (see paragraph 32 above). The Board of Appeal was, therefore, right to find that the only conceptual difference between the signs was confined to ‘company’, which is intrinsic to the secondary and non-distinctive element ‘co.’ of the contested mark.

51 Consequently, the signs at issue are conceptually different, since, in the present case, the contested mark is capable of having a meaning for part of the relevant public, whereas the earlier mark has no meaning (see, to that effect and by analogy, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).

52 Having regard to the foregoing, it must be concluded that there is no conceptual similarity between the marks at issue (see, to that effect, judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 53).

53 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

54 In the present case, the Board of Appeal found that, in view of the overall impression created by the signs, the identity and similarity of some of the goods and services, the concept of imperfect recollection and the interdependence of the various factors to be taken into account, there was a likelihood of confusion on the part of the relevant public, despite the low degree of visual similarity, for all the goods and services referred to in paragraph 3 above, with the exception of ‘Pasta shells; Hushpuppies [breads]’ in Class 30.

55 The applicant disputes that assessment and submits, in essence, that, in view of the interaction of all the relevant factors, the way in which the goods at issue are marketed, the lack of visual similarity and the fact that the signs at issue are short, any likelihood of confusion was ruled out in the present case.

57 In that regard, it must be borne in mind that, according to the case-law cited in paragraph 19 above, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods and services in question and taking into account all factors relevant to the circumstances of the case.

58 In the present case, first, it should be found that the applicant is wrong to assert, in essence, that the lack of visual similarity should prevail given the way in which the goods and services are marketed. As follows from the considerations set out in paragraphs 34 to 38 above, the Board of Appeal’s comparison of the signs, according to which the signs have a low degree of visual similarity, is not vitiated by errors. If the applicant seeks to claim by that assertion that the visual comparison of the signs was of greater importance in the assessment of the likelihood of confusion than the phonetic comparison, it must be pointed out that the Board of Appeal took that factor into account, as is clear from paragraphs 62 and 63 of the contested decision.

59 Secondly, the applicant’s assertion that account should be taken of the fact that the marks being compared are short signs must be rejected.

60 It should be observed at the outset that such an assertion has no factual basis. As is apparent from paragraph 63 of the contested decision, the Board of Appeal found that although the earlier mark and the sole distinctive element of the contested mark are short, the overall impression conveyed by the earlier mark cannot be regarded as sufficiently different from that conveyed by the contested mark.

61 In any event, contrary to what the applicant implies in paragraph 26 of its application, relying in particular on the judgment of 23 May 2007, Henkel v OHIM – SERCA (COR) (T‑342/05, not published, EU:T:2007:152), the mere fact that the signs at issue are short is not sufficient to consider that they were different and that a likelihood of confusion was excluded. It is true that the shorter a sign, the more easily the public is able to perceive its various elements. Nevertheless, it also follows, first, that each case must be judged on its own merits, having regard to all the relevant factors and, secondly, that where the signs at issue are three-letter signs, a difference of one letter is not sufficient to exclude similarity, especially if that letter is phonetically similar (judgment of 20 June 2019, Nonnemacher v EUIPO – Ingram (WKU), T‑389/18, not published, EU:T:2019:438, paragraph 56).

62 Similarly, no general rule relating to the treatment of three-letter signs can be inferred from the case-law. Admittedly, the Court held in the judgment of 23 May 2007, COR (T‑342/05, not published, EU:T:2007:152), cited by the applicant, that the difference between the first letter of the word sign COR and the first letter of the word element ‘dor’ making up the earlier figurative sign was sufficient to enable them to be distinguished visually. The fact remains nonetheless that there are several examples in the case-law where the Court has held that a difference of one letter between two three-letter signs was not such as to divert consumers’ attention away from their similarities. That is, inter alia, the case of the visual comparison of the word signs ran and R.U.N. (judgment of 17 December 2009, Notartel v OHIM – SAT.1 (R.U.N.), T‑490/07, not published, EU:T:2009:522, paragraph 55); of the word sign ELS and the figurative mark ILS (judgment of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraphs 66 to 68); of the word signs FVB and FVD (judgment of 17 September 2008, FVB v OHIM – FVD (FVB), T‑10/07, not published, EU:T:2008:380, paragraph 47); of the word sign ENI and the figurative mark EMI (judgment of 21 May 2014, Eni v OHIM – Emi (IP) (ENI), T‑599/11, not published, EU:T:2014:269, paragraph 63); of the word sign BTS and the figurative mark TBS (judgment of 12 March 2014, El Corte Inglés v OHIM – Technisynthese (BTS), T‑592/10, not published, EU:T:2014:117, paragraph 49); and of the word signs 101 and 501 (judgment of 3 June 2015, Levi Strauss v OHIM – L&O Hunting Group (101), T‑604/13, not published, EU:T:2015:351, paragraph 40).

63 It must, therefore, be held that while it is true that, when faced with short signs, the relevant public is likely to perceive more clearly what differentiates them, the fact remains that it is necessary to determine in each case, by a specific assessment, whether such differences lead to different overall impressions of the signs at issue and whether those differences are, therefore, sufficient to rule out any similarity between those signs, which is not the case here.

64 It must be concluded that having regard to the visual and phonetic similarity of the signs at issue, the identity and similarity of the goods and services in question, the normal degree of distinctiveness of the signs and the average to higher-than-average level of attention of the relevant public, the Board of Appeal did not err in finding that the differences observed between the signs at issue were not sufficient to rule out the risk that the relevant public may believe that the goods and services concerned came from the same undertaking or from economically linked undertakings.

65 It should further be pointed out that the fact that the level of attention of the relevant public varies from average to higher than average, since that public consists in part of professionals (see paragraph 24 above), is not sufficient to rule out the possibility that it may believe that the services it will use come from the same undertaking or, as the case may be, from economically linked undertakings. The fact that goods or services are intended for professionals does not thereby remove the likelihood of confusion. The mere fact that experts pay a high degree of attention when choosing goods does not mean that they do not also take into account the fact that the two marks have the same origin owing to similarities between them commercially. Accordingly, the fact that the public is composed of professionals is not sufficient to rule out the possibility that it may think that the goods come from the same undertaking or, as the case may be, from economically linked undertakings (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 100, and of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 62).

66 The Board of Appeal was, therefore, fully entitled to find that there was a likelihood of confusion in the present case.

67 Accordingly, the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

68 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

69 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> PIK-KO v EUIPO - Haribo Ricqles Zan (P.I.C. Co.) (EU trade mark - Judgment) [2021] EUECJ T-73/21 (10 November 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T7321.html Cite as: ECLI:EU:T:2021:777, EU:T:2021:777, [2021] EUECJ T-73/21

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