CCTY Bearing Company v EUIPO - CCVI International (CCTY) (EU trade mark - Judgment) [2022] EUECJ T-176/21 (13 July 2022)

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(EU trade mark – Invalidity proceedings – EU word mark CCTY – Earlier EU figurative mark CCVI – 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) – Misuse of rights – Article 71 of Regulation 2017/1001)

CCTY Bearing Company, established in Zhenjiang (China), represented by L. Genz and C. Stadler, lawyers,

European Union Intellectual Property Office (EUIPO), represented by M. Capostagno and V. Ruzek, acting as Agents,

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

CCVI International Srl, established in Vicenza (Italy), represented by D. Demarinis, R. Covelli and M. Theisen, lawyers,

composed of D. Spielmann (Rapporteur), President, U. Öberg and M. Brkan, Judges,

1 By its action under Article 263 TFEU, the applicant, CCTY Bearing Company, formerly CCVI Bearing Company, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 February 2021 (Case R 779/2020‑4).

2 On 19 July 2016, the intervener, CCVI International SpA, filed an application for a declaration of invalidity in respect of the EU trade mark that had been registered following an application filed on 23 January 2013 for the word sign CCTY. The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 7 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 corresponded to the following description: ‘Ball bearings; bearings [parts of machines]; bearings for transmission shafts; self-oiling bearings; roller bearings; anti-friction bearings for machines; bearing brackets for machines.’

3 The application for a declaration of invalidity was based on the figurative mark for goods in Class 7, namely ‘Ball and roller bearings; bracket bearings; bushings’. On 23 January 2013, the applicant filed an application for registration of an EU trade mark with 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)).

4 The grounds relied on in support of the application for a declaration of invalidity were those set out, first, in Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001) and, second, 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).

5 On 6 March 2020, the Cancellation Division upheld the application for a declaration of invalidity and declared the contested mark invalid in respect of all the registered goods referred to in paragraph 2 above.

6 On 28 April 2020, 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.

7 By decision of 3 February 2021 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it found, first, that the relevant public was the English-speaking public consisting of consumers in Ireland and Malta, on account of the presence of English words in the earlier mark, and that the goods in Class 7, as specified, were intended for industrial or technical use and were aimed, in the main, at professionals in the relevant sector. Second, it found the goods at issue to be identical or highly similar. Third, it found that the marks at issue were visually similar to an average degree, were phonetically similar to an above-average degree and were not comparable conceptually, since they did not convey any meaning. Fourth, it found that the earlier mark was inherently distinctive to a normal degree. Accordingly, for the purposes of its overall assessment, the Board of Appeal concluded that the Cancellation Division had been correct in finding that there was a likelihood of confusion on the part of the English-speaking part of the relevant public in respect of all the goods covered by the contested mark. Lastly, the Board of Appeal rejected the applicant’s argument that the application for a declaration of invalidity had been vitiated by the submission of misleading evidence, which constituted an abuse of rights within the meaning of EU law.

– order the intervener to pay the costs, including those incurred before the Board of Appeal and the Cancellation Division.

11 In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 71 of Regulation 2017/1001 and of Article 27 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), in that the Board of Appeal erred in law by failing to penalise the intervener’s submission before the Cancellation Division of misleading evidence in support of an absolute ground for refusal based on the applicant’s bad faith when filing the trade mark application, and, second, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, in that the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public in respect of the trade marks at issue.

12 Given the date on which the application for registration at issue was filed, namely 23 January 2013, which is decisive 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, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). The references made to the articles of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the parties in their written pleadings must therefore be understood as referring to the articles of Regulation No 207/2009, which are identical in content. Furthermore, in so far as, according to settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001 and of Delegated Regulation 2018/625 relied on by the applicant.

The first plea, alleging infringement of Article 71 of Regulation 2017/1001 and Article 27 of Delegated Regulation 2018/625

13 The applicant claims that the Board of Appeal failed to penalise, by rejecting the application for a declaration of invalidity, the abuse of rights committed by the intervener before the Cancellation Division on account of the submission of misleading evidence (‘the evidence at issue’) in support of one of the two pleas relied on in that application.

14 In particular, the applicant submits that the intervener lied about the business reports and relationships that existed, prior to the filing of the application for registration of the contested mark, between the intervener and a Chinese shareholder company, with the aim of hiding from the Cancellation Division the objective and justified reasons which had motivated the applicant to register the sign CCTY, in order to demonstrate the applicant’s bad faith within the meaning of Article 59(1)(b) of Regulation 2017/1001. According to the applicant, that misleading submission constitutes an abuse of rights within the meaning of EU law which should have been penalised by the Board of Appeal by rejecting the application for a declaration of invalidity, since the intervener’s interest in seeking a declaration of invalidity in respect of the contested mark on the basis of an earlier right was no longer worthy of protection. In short, the applicant submits that the Board of Appeal should have examined and penalised the submission of the evidence at issue by the intervener in support of the absolute ground for invalidity which was not examined by the Cancellation Division.

16 It should be noted, as a preliminary point, that the applicant, by its arguments, submits, in essence, that the submission of the evidence at issue before the Cancellation Division vitiated the entire application for a declaration of invalidity. The applicant claims that, by reason of the devolutive effect of the appeal proceedings, the Board of Appeal should have re-examined the entirety of the dispute and the pleas put forward in support of the application for a declaration of invalidity and should have found that there was an abuse of rights.

17 In that regard, it is settled case-law that there is, in EU law, a general legal principle that EU law cannot be relied on for abusive or fraudulent ends. Proof of an abusive practice requires, first, a combination of objective circumstances in which, despite formal observance of the conditions laid down by the EU rules, the purpose of those rules has not been achieved and, second, a subjective element consisting in the intention to obtain an advantage from the EU rules by artificially creating the conditions laid down for obtaining it (see judgment of 20 June 2019, Nonnemacher v EUIPO – Ingram (WKU), T‑389/18, not published, EU:T:2019:438, paragraph 20 and the case-law cited).

18 It should also be noted that, by virtue of the devolutive effect of the appeal proceedings, the review undertaken by the Boards of Appeal requires a reappraisal of the dispute as a whole, since the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time (judgment of 8 September 2021, Qx World v EUIPO – Mandelay (SCIO), T‑86/20, not published, EU:T:2021:557, paragraph 26).

19 At the same time, it must be borne in mind that EUIPO is not required to base the rejection of the trade mark application on all the grounds for refusal of registration put forward in support of the opposition, on the basis of which a trade mark application could be rejected (judgment of 16 May 2019, KID-Systeme v EUIPO – Sky (SKYFi), T‑354/18, not published, EU:T:2019:333, paragraph 33; see also, to that effect, order of 11 May 2006, TeleTech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL), T‑194/05, EU:T:2006:124, paragraph 27 and the case-law cited). That case-law may be applied by analogy in invalidity proceedings, as in the present case. Neither Article 71 of Regulation 2017/1001 nor Article 27 of Delegated Regulation 2018/625 imposes any such obligation on the Board of Appeal.

20 Moreover, it should be noted in that regard, by way of illustration, that the same principle is derived from the case-law in relation to the proceedings before the Court. In particular, according to settled case-law, where one of the grounds adopted by the Court is sufficient to sustain the operative part of its judgment, any defects that might vitiate other grounds given in the judgment concerned in any event have no bearing on that operative part and, accordingly, the ground of appeal relying on such defects is ineffective and must be dismissed (see order of 31 January 2017, Universal Protein Supplements v EUIPO, C‑485/16 P, not published, EU:C:2017:72, paragraph 21 and the case-law cited).

21 In the present case, the application for a declaration of invalidity was made on the basis of two distinct and independent grounds for invalidity, namely, first, a relative ground for invalidity, based on the existence of a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009 and, second, an absolute ground for invalidity, based on the applicant’s bad faith when filing the application for registration of the contested mark within the meaning of Article 52(1)(b) of that regulation. The Cancellation Division in no way relied on that absolute ground for invalidity, put forward before it by the intervener, in order to declare the contested mark invalid, but merely based its decision on the existence of a relative ground for invalidity based on the likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009, which was sufficient to declare the contested mark invalid.

22 Consequently, when the Board of Appeal re-examined the dispute by virtue of the devolutive effect, it was entitled, contrary to what is claimed by the applicant, not to re-examine all the grounds and arguments put forward in support of the application for a declaration of invalidity that were capable of justifying its decision, given that it had found, on the same basis as the Cancellation Division, the existence of a relative ground for invalidity which was sufficient to confirm the invalidity decision.

23 Accordingly, the first plea, alleging an abuse of rights, is ineffective in so far as the submission of the evidence at issue allegedly vitiated the assessment of a ground for invalidity other than that on which the contested decision was exclusively based.

24 Furthermore, in so far as, by the present plea, the applicant also disputes the Board of Appeal’s assessment of the relative ground for invalidity on which the contested decision is based, it must be noted, as EUIPO submits, that the applicant has failed to establish that the evidence at issue had had any effect on the assessment of the existence of the relative ground for invalidity based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, on which the contested decision is exclusively based.

25 Lastly, to the extent that, by that plea, having regard in particular to the arguments put forward at the hearing, the applicant disputes the intervener’s interest in seeking a declaration of invalidity in respect of the contested mark in so far as the submission of allegedly false evidence before the Cancellation Division would, by itself, have vitiated that application in its entirety, it must be noted that, even assuming that the intervener’s interest in bringing proceedings is required in the present case in order to make that application, relying both on the absolute ground and on the relative ground raised by the intervener before EUIPO, and, moreover, that an abuse of the right to bring an action could remove that interest in bringing proceedings, the applicant has failed to establish that the application for a declaration of invalidity made by the intervener constituted an abuse of rights.

26 In the present case, in the light of what has been stated in paragraph 17 above, proof of an abusive practice has not been established. Even if the intervener had submitted misleading evidence during the proceedings before the adjudicating bodies of EUIPO, the applicant has not shown that, when the application for a declaration of invalidity was filed, the intervener intended to pursue aims other than those for which the invalidity proceedings were instituted. In that regard, it should be noted that the case-law cited in the application on the abuse of rights before the adjudicating bodies of EUIPO does not call that finding into question. In particular, the applicant did not establish, either in the application or at the hearing, that the intervener had filed that application for the sole purpose of preventing the applicant from using the contested mark and of adversely affecting the applicant’s financial interests (see, to that effect, judgment of 20 June 2019, WKU, T‑389/18, not published, EU:T:2019:438, paragraph 21). Furthermore, the applicant has also failed to show that the intervener had registered the earlier mark with the fraudulent intention of not using it, in order to prevent other economic operators from registering certain trade marks (see, to that effect, judgment of 5 October 2012, Lancôme v OHIM – Focus Magazin Verlag (COLOR FOCUS), T‑204/10, not published, EU:T:2012:523, paragraph 61).

27 Consequently, the applicant has not established the existence of objective circumstances consisting in the fact that, despite formal observance of the conditions laid down by the EU rules, the purpose of those rules had not been achieved.

28 In the light of the foregoing, the first plea, alleging an abuse of rights, must be rejected as ineffective, in so far as the applicant claims that the evidence at issue served to demonstrate the existence of an absolute ground for invalidity on which the contested decision is not based, and unfounded, in view of the fact that the applicant has established neither that that evidence had affected the relative ground for invalidity on which the contested decision is based nor that the intervener had no interest in bringing proceedings as a result of its abuse of its right to bring an action before EUIPO.

The second plea, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation

29 The applicant claims that the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public in respect of the marks at issue and that such finding amounts to an infringement of Article 53(1)(a) of Regulation No 207/2009, providing for a relative ground for invalidity of an EU trade mark, read in conjunction with Article 8(1)(b) of that regulation. According to the applicant, there is no likelihood of confusion on the part of that public in respect of the goods covered by the marks at issue.

31 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

32 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. 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).

33 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).

34 It is in the light of the foregoing considerations that the Court must examine whether the Board of Appeal was entitled to find that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 53(1)(a) of that regulation.

35 As regards the determination of the relevant public and its level of attention, the Board of Appeal found that that public consisted of the English-speaking public of the European Union, namely at least the public in Ireland and Malta, on account of the presence of English words in the earlier mark. Next, it found that the goods covered by the contested mark were intended for industrial or technical use and were aimed, in the main, at professionals in the relevant sector who had a high level of attention.

36 Since those findings have not been disputed by the applicant, they are not to be called into question.

37 Furthermore, as regards the comparison of the goods at issue, the Board of Appeal found, first, that the ‘ball bearings; roller bearings’ covered by the contested mark appeared identically in both lists of goods in Class 7, second, that the ‘bearings [parts of machines]’ covered by the contested mark were included in the broader category of the cancellation applicant’s ‘ball and roller bearings’, a category which could not be broken down ex officio and therefore those goods had to be regarded as identical to the goods covered by the earlier mark, third, that the ‘bearings for transmission shafts; self-oiling bearings; anti-friction bearings for machines’ covered by the contested mark were also included in, or at least overlapped with, the ‘ball bearings’ covered by the earlier mark and were, therefore, identical and, fourth, that the ‘bearing brackets for machines’ covered by the contested mark were highly similar to the ‘bracket bearings’ covered by the earlier mark.

38 Since those findings have also not been disputed by the applicant, there is no need to call them into question.

39 It should be recalled 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).

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

41 The greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited). The descriptive, non-distinctive or weakly distinctive elements of a composite mark generally have less weight in the analysis of the similarity between the signs than elements of greater distinctiveness, which are also more able to dominate the overall impression created by that mark (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).

42 That being so, a distinction must be drawn between, on the one hand, the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark and must be taken into account in the context of the global assessment of the likelihood of confusion, and, on the other, the notion of the distinctive character which an element of a composite mark possesses, which determines its ability to dominate the overall impression created by that mark and must be examined at the stage of assessing the similarity of the signs in order to determine any dominant element of the sign (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 25 March 2010, Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65).

43 In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, the Court must examine the Board of Appeal’s assessment of the distinctive and dominant elements of the earlier mark.

44 In paragraphs 31 to 33 of the contested decision, the Board of Appeal found, first, that the figurative element of the earlier mark, made up of a black background, was purely decorative and that the striated sphere and the expression ‘bearing industries’ were small descriptive elements that were devoid of distinctive character in respect of the goods at issue. Second, it found that the element ‘ccvi’ written in capital letters was, on account of its size, its position in the sign and the fact that it was not descriptive of the goods protected, the dominant element which conferred distinctive character on the earlier mark.

45 The applicant disputes that assessment and submits that most of the elements of the earlier mark are descriptive, that all the elements are devoid of distinctive character and that no element dominates the sign, so that they should have been taken into consideration as a whole by the Board of Appeal when comparing the signs.

46 First of all, when assessing the dominant character of one or more given components of a composite 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 composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).

47 Furthermore, for the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark or element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).

48 Lastly, where a trade mark is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).

49 In the present case, in the light, first, of the central position in the sign, the size and the contrasting effect between the white colour of the capital letters making up the element ‘ccvi’ and the black colour of the band on which they are positioned, that element will be immediately perceived by the consumer and will dominate the overall impression of the sign. Second, in view of the size, position and descriptive or ancillary character of the other elements of which the earlier mark consists, namely, the sphere representing a striated ball bearing, to the right of the element ‘ccvi’, the words ‘bearing industries’, of smaller size and situated below the element ‘ccvi’, and the black band on which the element ‘ccvi’ is displayed, the Board of Appeal was right to consider that those elements were either purely decorative or descriptive and that they did not dominate the consumer’s overall impression of the sign. Consequently, the Board of Appeal did not err in finding that the element ‘ccvi’ was the dominant and distinctive element of the earlier mark for the purposes of the comparison of the signs.

50 The Board of Appeal found that the contested mark and the dominant element of the earlier mark were both structured in four letters which would be perceived by the relevant public as distinctive acronyms of the undertakings selling the goods at issue. It added that the signs in question coincided in their first two letters ‘cc’ and differed in their other two letters, namely ‘ty’ and ‘vi’ respectively. Lastly, it found that those signs differed in the additional elements of the earlier mark, which were devoid of distinctive character and, consequently, had no impact on the visual comparison of those signs. It therefore concluded that the signs at issue were visually similar to an average degree.

51 The applicant submits that, taken as a whole, the marks at issue are in no way visually similar. The applicant claims, at the outset, that, having regard to the nature of the goods at issue, the degree of visual similarity between the signs in question will play a major role in the assessment of the likelihood of confusion. According to the applicant, those signs must therefore be assessed as a whole and their graphic differences are sufficiently significant for them to be considered not to be visually similar. It submits that, in view of the fact that the earlier mark is a figurative mark and not a word mark or composite mark, the Board of Appeal should have taken into consideration, to a greater extent, the figurative elements of which it is composed, and not confined itself to a mere comparison of the letters in those signs when assessing their visual similarity.

52 Thus, according to the applicant, the similarity of the signs at issue is limited solely to the letters that they have in common. According to the applicant, the additional words ‘bearing industries’, the stylised ball of the graphic design of the background and the overall contrast between the basic colours, are significant points of differentiation which do not appear in the contested mark. The applicant adds that the letters ‘vi’ and ‘ty’ are different in shape and arrangement.

53 In the present case, it is, first, common ground that the distinctive and dominant element of the earlier mark and the word element comprising the contested mark contain the same number of letters. Second, they share the same first two letters. In that regard, it should be borne in mind that, in principle, even in the case of short marks, the consumer normally attaches more importance to the first part of words (see, to that effect, judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 110). Third, while the combinations of letters ‘ty’ and ‘vi’ are not identical, they do have, contrary to what is argued by the applicant, some visual similarity in the shape of the letters concerned, especially the capital letters ‘Y’ and ‘V’. Fourth, as stated in paragraph 49 above, the differences caused by the other figurative elements and word elements comprising the earlier mark will not play an important role in the visual comparison on account of their secondary position in the sign and their descriptive or weakly distinctive character.

54 Accordingly, the Board of Appeal’s assessment that the signs at issue are visually similar to an average degree must be upheld.

55 As regards the phonetic comparison, the Board of Appeal first of all noted that the pronunciation of the signs at issue by the relevant public coincided in their first two letters and, in part, in the sound of their last letter, namely ‘i’ and ‘y’ respectively. Next, it found that their pronunciation by that public differed on account of their third letters, namely ‘t’ and ‘v’ respectively. Lastly, the Board of Appeal noted that it was unlikely that the additional word elements of the earlier mark would be pronounced due to their small size and their secondary position in the sign. Therefore, it found that, because those signs will be pronounced as a four-letter acronym, they were phonetically similar to an above-average degree.

56 The applicant disputes that assessment and submits that the signs at issue are not phonetically similar. It adds that, in any event, their phonetic aspects are of negligible importance in relation to their visual aspects, since verbal references to products and trade marks are very rare and the choice of products is generally made by the consumer visually.

57 In the present case, the signs at issue consist of an identical number of syllables. In addition, as the intervener submits, the phonetic elements of those signs will be pronounced by the relevant public as follows: ‘si-si-vi-aI’ in the case of the earlier mark and ‘si-si-ti-waI’ in the case of the contested mark. It is apparent from that phonetic comparison that the first half of the pronunciation of those signs is identical and, as regards the second half, the pronunciation of those signs will differ in part at the level of their third syllable, namely ‘vi’ and ‘ti’ respectively, and in particular at the level of their fourth syllable, namely ‘aI’ and ‘waI’ respectively.

58 Accordingly, in the light of the identical number of syllables in the signs at issue, the coinciding aspects and similarities and the slight differences found, the Court finds that, from a phonetic standpoint, the coinciding aspects and similarities greatly outweigh the slight differences between those signs. Consequently, it must be held that the Board of Appeal did not err in finding that those signs had a high degree of similarity.

59 As regards, lastly, the conceptual comparison, the Board of Appeal found that the signs at issue did not convey any meaning and could not, consequently, be compared. It also found that the stylised sphere in the earlier mark would be perceived as representing a ball bearing which was descriptive of the goods at issue and that the other elements comprising the earlier mark had a meaning, but were devoid of distinctive character, so that any conceptual differences that they might have with the contested mark had no impact for the purposes of the conceptual comparison.

60 Since those assessments have not been disputed by the applicant, there is no need to call them into question.

61 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, 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).

62 Furthermore, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the marks at issue are marketed. If the goods covered by the marks in question are usually sold in self-service stores where the consumers choose the good themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 80).

63 In paragraphs 41 to 44 of the contested decision, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public, notwithstanding the high level of attention paid by that public, in view of the fact, first, that the goods were identical or highly similar, second, that the signs at issue were phonetically similar to an above-average degree and visually similar to an average degree, and, third, that the earlier mark was inherently distinctive to a normal degree. Lastly, it found that the applicant had not established the coexistence of the marks at issue. In that regard, it noted that a claim of such coexistence must first demonstrate that that public had encountered both the contested mark and the earlier mark on the market, which was not the case here.

64 The applicant disputes the existence of a likelihood of confusion and submits that, since verbal references to products and trade marks are very rare and the choice of products is generally made by the consumer visually, the degree of visual similarity between the signs at issue will play a greater role for the purposes of assessing the likelihood of confusion than the degrees of similarity in other respects. It also submits that the inherent distinctiveness of the earlier mark is below average, given that that mark is essentially composed of elements that are descriptive of the goods in question and devoid of distinctive character. Next, it repeats its statements that those signs are not similar to each other, having regard, in particular, to the limited scope of protection enjoyed by the earlier mark which, on account of its figurative nature, prevents a simple comparison of the element ‘ccvi’ with the contested mark. Lastly, the applicant emphasises the high level of attention of the relevant public, which will prevent that public from assuming that the goods come from the same undertaking.

66 In the present case, the applicant’s argument that the degree of phonetic similarity between the signs at issue will have little or no bearing on the assessment of the likelihood of confusion with regard to the goods at issue must first be addressed. Although, in the light of the conditions under which the goods at issue are marketed, the visual aspect of those signs will be of greater importance than the phonetic and conceptual aspects, it cannot entirely be ruled out that, owing to the nature of those goods, the phonetic aspect of those signs may, in certain circumstances, be of at least moderate importance for the purposes of identifying the commercial origin of the goods covered. Accordingly, it cannot be held that the degree of phonetic similarity of the signs in question must be entirely disregarded for the purposes of assessing a likelihood of confusion.

67 Next, the Board of Appeal’s finding that the earlier mark was inherently distinctive to a normal degree on account of the distinctive and non-descriptive character of its dominant element ‘ccvi’ must be upheld.

68 Lastly, given that the goods at issue are identical or highly similar to each other, that the signs at issue are visually similar to an average degree, are phonetically similar to a high degree and cannot be compared conceptually, so that that aspect is irrelevant, and that the earlier mark is inherently distinctive to a normal degree, the Board of Appeal did not err in finding that there was a likelihood of confusion between the marks at issue on the part of the relevant public in respect of the goods at issue, despite the high degree of attention that the relevant public might pay. Moreover, in the light of all the foregoing considerations, the applicant’s line of argument relating to the major influence of the visual aspect of the signs at issue is not sufficient, on its own, to call into question the findings of the Board of Appeal in that regard.

69 Consequently, the second plea put forward by the applicant must be rejected and, accordingly, the action must be dismissed in its entirety.

70 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.

71 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> CCTY Bearing Company v EUIPO - CCVI International (CCTY) (EU trade mark - Judgment) [2022] EUECJ T-176/21 (13 July 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T17621.html Cite as: [2022] EUECJ T-176/21, ECLI:EU:T:2022:449, EU:T:2022:449

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