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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Enedo v EUIPO - Enedis (ENEDO) (EU trade mark - Judgment) [2025] EUECJ T-1142/23 (15 January 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T114223.html Cite as: [2025] EUECJ T-1142/23, ECLI:EU:T:2025:11, EU:T:2025:11 |
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JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
15 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU word mark ENEDO – Earlier EU word mark ENEDIS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Restriction of the goods and services covered in the trade mark application )
In Case T‑1142/23,
Enedo Oyj, established in Vantaa (Finland), represented by H.‑M. Elo and E. Hodge, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Enedis, established in Paris (France), represented by C. Verneret and J.‑B. Micard, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, I. Dimitrakopoulos and B. Ricziová (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Enedo Oyj, seeks the annulment and the alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 September 2023 (Case R 190/2023-4) (‘the contested decision’).
Background to the dispute
2 On 29 November 2019, the predecessor in law to the applicant, Efore Oyj, filed an application for registration of an EU trade mark with EUIPO for the word sign ENEDO.
3 The mark applied for covered goods and services in Classes 9, 37, 40 and 42 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, which correspond, for each of those classes, to the following description:
– Class 9: ‘Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for controlling electricity; Electric and electronic components; Measuring, detecting and monitoring instruments, indicators and controllers’;
– Class 37: ‘Maintenance, repair and installation of apparatus and equipment for electricity charging and storage, electricity control devices and equipment, electrical and electronic components, measuring devices, monitoring and surveillance devices, sensors and controls; Charging of electric vehicles’;
– Class 40: ‘Sub-assembly of components; Custom assembling of materials for others’;
– Class 42: ‘Science and technology services; Technological research; Scientific services and design relating thereto; Technological services and design relating thereto; Scientific research; Software design and development; Design and development of computer hardware; Industrial analysis and research services’.
4 On 10 March 2020, the intervener, Enedis, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
5 The opposition was based on the earlier EU word mark No 15300536, ENEDIS, filed on 4 April 2016 and registered on 12 August 2019, covering goods and services in, inter alia, Classes 9, 12, 37, 40 and 42, relating, in particular, to the field of energy and electricity.
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 9 December 2022, the Opposition Division upheld the opposition.
8 On 24 January 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion for a non-negligible part of the relevant public.
Forms of order sought
10 The applicant claims that the General Court should:
– annul the contested decision and reject the opposition in its entirety;
– order EUIPO to pay the costs incurred by the applicant, including those incurred in the proceedings before the Board of Appeal.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event that an oral hearing is convened.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant alleges infringement of Article 8(1)(b) of Regulation 2017/1001, in so far as the Board of Appeal found that there was a likelihood of confusion.
14 It is appropriate, as a preliminary point, to examine the impact of the restriction of the list of goods and services covered by the mark applied for.
The restriction of the goods and services covered by the mark applied for
15 On 7 December 2023, the applicant submitted to EUIPO a request to restrict the list of goods and services covered by the mark applied for.
16 On 16 January 2024, EUIPO notified the applicant that its request to restrict the list of goods and services covered by the mark applied for could not be granted, because the disclaimer sought lacked clarity and precision.
17 On 8 February 2024, following an additional request for restriction, EUIPO approved the restriction of the list of goods and services covered by the mark applied for.
18 The applicant requests, in essence, that the Court take into account the restriction of the list of the goods and services in question. Since the restriction has been approved, the mark applied for covers the following goods and services:
– Class 9: ‘Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for controlling electricity; Electric and electronic components; all of the aforesaid goods only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’;
– Class 37: ‘Maintenance, repair and installation of apparatus and equipment for electricity charging and storage, electricity control devices and equipment, electrical and electronic components; all of the aforesaid services only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’;
– Class 40: ‘Sub-assembly of components; Custom assembling of materials for others; all of the aforesaid services only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’;
– Class 42: ‘Technological services and design relating thereto; all of the aforesaid services only for professionals in transportation, medical, lighting, energy, utility infrastructure, military, horticulture, marine, building automation, information technology and security industries, and in the manufacturing industries of automated systems, electronic and technological goods’.
19 EUIPO claims that the restriction of the goods and services covered by the mark applied for does not consist of mere deletions and it is possible that the narrowing down of the relevant public to a professional public might have an impact on the assessment of the case. Accordingly, in its view, that restriction must not be taken into consideration for the purpose of reviewing the legality of the contested decision, since that would change the subject matter of the dispute in the course of the proceedings before the Court. EUIPO adds that, by the same token, all of the applicant’s arguments that are based on that restriction must be considered ineffective. The intervener also submits, in essence, that the restriction in question cannot be taken into account in the proceedings before the Court.
20 In that regard, it should be recalled that, under Article 49(1) of Regulation 2017/1001, the applicant may at any time withdraw its application for an EU trade mark or restrict the list of goods or services contained therein.
21 In accordance with settled case-law, for reasons of procedural economy, the Court may take account of a restriction of the goods and services covered in the trade mark application on condition that that restriction is not such as to change the factual context to which the Board of Appeal’s examination related as regards the goods or services not affected by that restriction. Thus, a restriction carried out in accordance with Article 49(1) of Regulation 2017/1001 subsequent to the adoption of the contested decision may be taken into consideration by the Court where the applicant for the trade mark limits itself strictly to reducing the subject matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application. Since the Board of Appeal must assess the likelihood of confusion in relation to each of the goods and services in respect of which the EU trade mark has been applied for, the mere withdrawal of one or more categories of goods and services from the list in respect of which the trade mark application is filed is not, in principle, capable of changing the factual context to which the Board of Appeal’s examination related as regards the goods and services not affected by that restriction (see judgment of 21 February 2024, Hoffmann v EUIPO – Moldex/Metric (Holex), T‑767/22, not published, EU:T:2024:108, paragraph 21 and the case-law cited).
22 Where, in contrast, that restriction leads to a change in the subject matter of the dispute, in that it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the contested decision, it may not, in principle, be taken into account by the Court. Such is the case where the restriction of the goods and services consists in specifications capable of influencing the assessment of the similarity of the goods and services or the determination of the target public and of changing, consequently, the factual context presented before the Board of Appeal (see, to that effect, judgment of 30 April 2015, Tecalan v OHIM – Ensinger (TECALAN), T‑100/14, not published, EU:T:2015:251, paragraph 32 and the case-law cited).
23 In the present case, it is appropriate to note that the restriction of the list of goods and services covered by the mark applied for has two aspects. The first aspect of that restriction concerns Classes 9, 37 and 42 and consists in a mere withdrawal of certain goods and services from that list, namely ‘Measuring, detecting and monitoring instruments, indicators and controllers’ in Class 9, ‘[Maintenance, repair and installation of] measuring devices, monitoring and surveillance devices, sensors and controls; Charging of electric vehicles’ in Class 37 and ‘Science and technology services; Technological research; Scientific services and design relating thereto; Scientific research; Software design and development; Design and development of computer hardware; Industrial analysis and research services’ in Class 42. In accordance with the case-law cited in paragraph 21 above, that withdrawal may be taken into consideration by the Court.
24 The second aspect of the restriction concerns all of the classes covered in the trade mark application, namely Classes 9, 37, 40 and 42, and consists in the addition of the indication that all the goods and services referred to in those classes, after the withdrawal referred to in paragraph 23 above, are only for professionals in certain sectors, thus limiting the target public to professionals in specific sectors. That second aspect of the restriction is therefore such as to change the factual context, within the meaning of the case-law cited in paragraphs 21 and 22 above, to which the Board of Appeal’s examination related. Consequently, that second aspect of the limitation cannot be taken into account by the Court in the present case for the purpose of examining the legality of the contested decision.
25 Accordingly, it is necessary to take into account the restriction at issue only to the extent that the applicant, in essence, no longer seeks the annulment of the contested decision in so far as it relates to the goods and services referred to in paragraph 23 above.
The single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
26 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 in finding that there was a likelihood of confusion within the meaning of that provision. The applicant alleges, in essence, an incorrect assessment, first, of the relevant public and its level of attention, secondly, of the comparison of the goods and services in question, thirdly, of the comparison of the signs at issue, fourthly, of the distinctive character of the earlier mark, and, fifthly, of the likelihood of confusion, in the context of the global assessment.
27 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 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.
28 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).
29 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public and its level of attention
30 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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).
31 In the present case, the Board of Appeal found that the goods and services in question targeted mainly the specialised public and also the general public, whose level of attention might vary from average and higher than average. More specifically, as regards the goods in question in Class 9, the Board of Appeal stated that they are most often aimed at the professional public which displays a higher degree of attention, however, occasionally, some consumers from the general public also purchase those goods. According to the Board of Appeal, the goods in question in Class 9 relate to two categories of goods, for the first of which, included in the general term of measuring instruments, the level of attention of the general public is average. The remainder of the goods in Class 9 requires a higher level of attention, both from the general public and the professional public. In respect of the goods covered by the earlier mark in Class 12, the Board of Appeal stated that they targeted the general public and the professional public, whose level of attention is particularly high. Lastly, as regards the services in question in Classes 37, 40 and 42, it found that they were aimed at the professional public which displays a high level of attention. Furthermore, in its view, the relevant territory is the territory of the European Union.
32 The applicant alleges that, following the restriction of the list of goods and services covered by the mark applied for, only the professional public which displays a significantly high level of attention with regard to the marks at issue must be taken into consideration when assessing the likelihood of confusion. Therefore, the findings, in paragraphs 33, 66, 67, 77, 88 and 89 of the contested decision, relating to the general public or (average) consumers, regardless of their level of attention, would no longer be relevant to the assessment.
33 EUIPO and the intervener dispute the applicant’s argument.
34 It should be observed that, for the reasons set out in paragraphs 20 to 25 above, the second aspect of the restriction of the list of goods and services covered by the mark applied for, which limited the target public to professionals in specific sectors, cannot be taken into account by the Court.
35 Therefore, the applicant’s argument concerning the relevant public and its level of attention, based solely and completely on that second aspect of the restriction, must be rejected as ineffective.
Comparison of the goods and services in question
36 According to the contested decision, the goods covered by the mark applied for in Class 9 are either identical or highly similar to those covered by the earlier mark in the same class. The services covered by the mark applied for in Class 37 are at least highly similar or similar to an average degree to goods and services covered by the earlier mark in the same class or in Class 12. The services covered by the mark applied for in Class 40 and the services covered by the earlier mark in Class 37 are similar to an average degree. The services covered by the mark applied for in Class 42 are identical or at least highly similar or similar to an average degree to services covered by the earlier mark in the same class.
37 The applicant submits that, after the restriction of the list of goods and services covered by the mark applied for, the marks at issue cover only partly identical and partly similar goods in Class 9 and only similar services in Classes 37, 40 and 42, with most of the compared services being similar only to an average degree. It claims that the goods and services covered by the mark applied for are sold and directed only to professionals.
38 EUIPO and the intervener dispute the applicant’s arguments.
39 It should be noted that the applicant’s arguments are entirely based on the restriction of the list of goods and services covered by the mark applied for. However, to the extent that the first aspect of the restriction must be interpreted as a statement that the applicant no longer seeks the annulment of the contested decision in so far as it relates to the goods and services referred to in paragraph 23 above, and the second aspect of that restriction, for the reasons set out in paragraphs 20 to 25 above, cannot be taken into account by the Court, those arguments must be rejected as ineffective.
40 In any event, it must be found, as EUIPO did, that the applicant’s unsupported and undeveloped arguments are not capable of calling into question the comparison of the goods and services covered by the marks at issue carried out by the Board of Appeal.
41 Accordingly, the applicant’s arguments concerning the comparison of the goods and services in question must be rejected.
Comparison of the signs at issue
42 The global assessment of the likelihood of confusion must, so far as concerns the visual, aural 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 proceed to analyse its various details (see judgment of judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
43 In the present case, before addressing the question of the visual, phonetic and conceptual comparison of the marks at issue, it is necessary to examine the assessment of the distinctive and dominant elements of those marks carried out by the Board of Appeal.
– The distinctive and dominant elements of the marks at issue
44 The Board of Appeal observed that, since the earlier mark was written as a single word without any visual separations – such as a hyphen – and was perceived as a whole, a significant part of the relevant public will perceive it as a single unit which has no particular meaning to them, and that, accordingly, that mark was distinctive to a normal degree. In addition, in its view, the meaning of the elements ‘ene’ and ‘dis’ will not be grasped immediately, at least for the vast majority of the relevant public, and the evidence submitted by the applicant does not show at all how the relevant public perceives the elements ‘ene’ and ‘dis’ and their potential meanings.
45 However, according to the Board of Appeal, it is apparent from the evidence submitted that part of the professional public in the energy sector could be led, on account of the very specific goods and services, to perceive the prefix ‘ene’ in the signs at issue as referring to the English term ‘energy’. Therefore, a certain part of the English-speaking relevant public might break down the earlier mark into two elements, ‘ene’ and ‘dis’, especially in relation to goods and services relating to the distribution of energy, and perceive them as meaningful elements alluding to the terms ‘energy’ and ‘distribution’. For that part of the relevant public, the earlier mark will therefore have a weak distinctive character in relation to the goods and services in question.
46 Nevertheless, according to the contested decision, the applicant failed to demonstrate that the whole of the relevant public would adopt an identical approach without exception and perceive the meanings of the word elements ‘ene’ and/or ‘dis’. The Board of Appeal found that at least a non-negligible part of the professional public in the European Union will not see any of the abovementioned meanings in the signs at issue and will perceive the words ‘enedis’ of the earlier mark and ‘enedo’ of the mark applied for as meaningless distinctive words.
47 Since a likelihood of confusion for only a non-negligible part of the relevant public is sufficient to reject the application for registration, the Board of Appeal focused the comparison of the signs on that part of the relevant public for which the signs and their parts are meaningless and distinctive. That part of the public is not likely, according to the Board of Appeal, to break down the signs at issue into two or more elements. In addition, those signs have no elements that could be considered dominant.
48 In that regard, the applicant claims, first, that the Board of Appeal failed to consider that the relevant public, in all of the European Union and not only the English-speaking part of it, will perceive the prefix ‘ene’ in the signs at issue as referring to the word ‘energy’ for the goods and services in question, in all relevant languages used within the European Union, and that that prefix therefore has a low distinctive character, so that the findings relating to a non-negligible part of the professional public not comprehending that meaning in the signs are clearly incorrect.
49 Secondly, according to the applicant, it has not failed to demonstrate that the highly aware professional public in the field of goods and services relating to the energy sector in the territory of all the Member States and not only in the English-speaking part thereof, will perceive, at least, the meaning of the word element ‘ene’ as referring to the word ‘energy’, regardless of the language, if not also the meaning of the element ‘dis’, present in the earlier mark, as referring to the word ‘distribution’, so that the impact of such elements on the assessment is limited. Accordingly, the element ‘ene’ would be weakly distinctive. In addition, it argues, the list of goods and services covered by the mark applied for is now restricted to covering only the goods and services relating to energy or electricity.
50 In that regard, according to the applicant, in the present case, the general public is no longer the relevant public and the opposite conclusion should therefore be drawn as regards the relevant public that is common to the goods and services in question, namely the professional public in the field of goods and services relating to the energy or electricity sector. The findings regarding the non-negligible part of the professional public would no longer be relevant in the Court’s assessment. The highly attentive professional public should be regarded as perceiving the components in question as separate elements, since the element ‘ene’ would have, in the present case, a clear and evident meaning for the professional public as referring to energy or electricity, while the element ‘do’ would mean ‘to do’ or ‘to act’ in English and the element ‘dis’ would refer to ‘distribution’ in many languages used within the European Union. The elements ‘ene’ and ‘dis’ would have, therefore, a low distinctive character. Furthermore, the applicant claims that those different endings ‘dis’ and ‘do’ attract more attention from the professional public and are sufficient to safely distinguish the signs at issue in the minds of the highly attentive professional public, even in the case of identical goods or services.
51 EUIPO and the intervener dispute the applicant’s arguments.
52 As a preliminary point, it must be borne in mind that it does not follow from Article 8(1)(b) of Regulation 2017/1001 that, for an EU trade mark to be refused registration under that provision, the likelihood of confusion must exist in all Member States and in all linguistic areas of the European Union (judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraph 56).
53 Next, when considering the applicant’s arguments concerning the distinctiveness of the elements of the marks at issue taken as a whole, it must be noted that they are based on the restriction of the list of the goods and services covered by the mark applied for. The applicant claims in particular that ‘now the list of goods and services covered by the [mark applied for] is limited to covering only goods and services related to energy [or] electricity’, that ‘[i]n this case, the [general public] is, however, no longer the relevant public and thus the conclusion should be opposite concerning the relevant public that is common to the goods and services at issue, i.e. the professional public within the field of goods and services relating to energy sector’, and that ‘the considerations regarding the non-negligible part of the professional public no longer have relevance in the assessment’. However, as apparent from paragraphs 20 to 25 above, the first aspect of the restriction must be interpreted as a statement that the applicant no longer seeks the annulment of the contested decision in so far as it relates to the goods and services referred to in paragraph 23 above, and the second aspect of that restriction cannot be taken into account by the Court.
54 The latter finding concerning the second aspect of the restriction also applies for the arguments relating to the dominant character of the elements of the marks at issue, where the applicant claims that ‘contrary to what is stated in the Contested Decision (paragraph 89)[, the principle that] “consumers generally take more note of the beginning of a sign rather than of its end”, does not apply to the current circumstances where the relevant public consisting solely of professionals pay more attention to the different endings of the compared signs in the current case’; that ‘[t]his highly attentive professional public should be considered as analysing a mark in [its] various details and will perceive the components in question as separate elements’; that ‘[t]he different endings “dis” [and] “do” are sufficient to safely distinguish the signs in the minds of the highly attentive professional public’ or that, ‘especially for such professionals[,] the component “ene” has […] limited relevance in the assessment[,] so the different endings “dis” [and] “do” are sufficient to safely distinguish the signs’.
55 If only for those reasons, the applicant’s arguments must be rejected.
56 In addition, it must be noted, first, as EUIPO observed, that, as regards the elements ‘ene’ and ‘dis’, the applicant has submitted neither specific and supported argument nor any evidence supporting the conclusion that the relevant section of the relevant public will immediately perceive those elements as references to the terms ‘energy’ and ‘distribution’. The applicant’s arguments listing the translations of the words ‘energy’ and ‘distribution’ in various languages or stating that the word ‘energy’ has a common Latin origin in many EU languages demonstrate nothing as regards the relevant public’s understanding of the elements ‘ene’ and ‘dis’.
57 Secondly, concerning the group of letters ‘do’ in the mark applied for, the applicant merely indicates its meaning in English which, in its view, is widely understood within the professional public which speaks at least a basic level of English, without, however, referring to any evidence in that regard.
58 Thirdly, the applicant relies, in support of its arguments, on examples of decisions of the Boards of Appeal of EUIPO; examples of registered marks containing the elements ‘ene’ or ‘dis’ in the energy or electricity sector; or examples of various company names in the energy sector. However, first, it should be borne in mind that the legality of decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation 2017/1001, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those boards (see, to that effect, judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 48; and of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraphs 65).
59 Secondly, the examples referred to in paragraph 58 above are either very distinct from the marks at issue, or, like those marks and company names beginning with the letters ‘ene’ or containing the element ‘dis’, not conclusive, in so far as they do not necessarily reflect the situation in the market.
60 In that regard, it should be recalled that the relevant factor for the purposes of disputing the distinctive character of an element is its actual presence on the market and not its having been entered in registers or databases (see, to that effect, judgment of 30 January 2018, Arctic Cat v EUIPO – Slazengers (Representation of a member of the cat family jumping to the right), T‑113/16, not published, EU:T:2018:43, paragraph 55). The registration of a trade mark does not in itself imply that it is actually used on the market or that it is used in respect of all the goods covered by the registration in question, which is why additional evidence demonstrating its actual use on the market is essential in that context (see, to that effect, judgment of 6 March 2024, Drinks Prod v EUIPO – Coolike-Regnery (VIVIASEPT), T‑796/22, not published, EU:T:2024:153, paragraph 46). In the present case, the evidence submitted by the applicant does not establish the presence on the market of the marks it relies on as examples or that, on the basis of those marks and company names, the relevant public would perceive the groups of letters ‘ene’ and ‘dis’ as referring, respectively, to the words ‘energy’ and ‘distribution’.
61 In the light of the foregoing, the applicant has not succeeded in calling into question the Board of Appeal’s findings that, first, ‘a significant part of the relevant public will perceive [the earlier mark] as a single unit which has no particular meaning to them and it is therefore distinctive to a normal degree’, secondly, ‘[the] meanings [of the elements “ene” and “dis”] will not be grasped immediately, at least for the vast majority of the relevant public’, thirdly, ‘[t]he evidence submitted does not show at all how the relevant public perceives the abbreviations “ene” and “dis” and their potential meanings’, fourthly, ‘at least a non-negligible part of the professional public in the European Union will not see any of the abovementioned meanings in the signs under comparison and will perceive the words “enedis” of the earlier mark and “enedo” of the [mark applied for] as meaningless distinctive words’, fifthly, ‘[the] relevant section of the relevant public is not likely to break down the signs under comparison into two or more elements’, and, sixthly, ‘[t]he signs have no elements that could be considered dominant’.
62 Accordingly, the applicant’s arguments relating to the distinctiveness and dominance of the elements of the marks at issue must be rejected.
– Visual similarity
63 The Board of Appeal found that the marks at issue are visually similar at least to an above-average degree. It relied, in that regard, on various elements, namely, on the first four letters ‘e’, ‘n’, ‘e’ and ‘d’ which are common to the marks at issue and are placed in the same order; on the total number of letters of the single word element of the marks which differs only by a single letter between the two signs; and on the fact that the difference between their final sections is not such as to attract the consumer’s attention any more than the parts at the beginning of those marks.
64 The applicant states that the marks at issue coincide as regards their initial section ‘ene’ meaning ‘energy’, but that they have different final sections, namely ‘dis’ and ‘do’, and that they are of different lengths. According to the applicant, in respect of marks which are relatively short, the central elements are as important as the elements at the beginning and end of the sign. In addition, in the present case, the relevant public consisting solely of professionals would pay more attention to the different endings.
65 EUIPO and the intervener dispute the applicant’s arguments.
66 It should be borne in mind that what matters, rather, in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (see judgment of 27 February 2020, Knaus Tabbert v EUIPO – Carado (CaraTwo), T‑203/19, not published, EU:T:2020:76, paragraph 54 and the case-law cited).
67 In the present case, as the Board of Appeal states in the contested decision, the marks at issue have the first four letters ‘e’, ‘n’, ‘e’ and ‘d’ in common and in the same order. They only differ in their final, shorter sections, the earlier mark adding the two letters ‘i’ and ‘s’ to those first four letters and the mark applied adding a single letter, namely ‘o’. Therefore, while the applicant refers to the case-law concerning the central elements of marks, it must be observed that the two marks at issue share not only the first two letters, but also the two letters which make up the central part of the signs, namely the letters ‘e’ and ‘d’.
68 In addition, even though the length of the marks at issue differs, it is only by a single letter, the earlier mark and the mark applied for consisting of six and five letters respectively.
69 It must be noted that the similarities described in paragraph 67 above prevail over the differences which are confined to the final, shorter sections. Those differences are not such as to attract the attention of the relevant public more than the initial, longer section common to both marks.
70 In the light of the foregoing, and of the fact that the applicant’s arguments concerning the distinctiveness and dominance of the elements of the marks at issue, on which it also partially relied for the visual comparison, have been rejected in paragraphs 52 to 62 above, the applicant has not succeeded in calling into question the Board of Appeal’s finding that the marks at issue have, in essence, a high degree of visual similarity.
71 Accordingly, the applicant’s arguments concerning the visual comparison must be rejected.
– Aural similarity
72 According to the Board of Appeal, the marks coincide in the pronunciation of their common first four letters, namely ‘e’, ‘n’, ‘e’ and ‘d’. They differ in the sound of the fifth letter ‘o’ of the mark applied for and in the sound of the fifth and sixth letters ‘i’ and ‘s’ of the earlier mark. However, the Board of Appeal finds that any aural differences are not of such a significance that they could prevail over the aural similarities between the marks at issue and accordingly conclude that those marks have at least an above-average degree of aural similarity.
73 The applicant states that the signs coincide as regards their initial section ‘ene’ meaning ‘energy’, but that they have different final sections, namely ‘dis’ and ‘do’, that they are of different lengths, and that they are pronounced differently.
74 EUIPO and the intervener dispute the applicant’s arguments.
75 It should be noted that, first, the marks at issue have an identical syllabic structure consisting of three syllables, namely ‘e’, ‘ne’ and ‘dis’ for the earlier mark and ‘e’, ‘ne’ and ‘do’ for the mark applied for. They have a sequence of similar vowels (e-e-i) and (e-e-o), of which the first two are common and coincide in the pronunciation of their common first four letters, namely ‘e’, ‘n’, ‘e’ and ‘d’.
76 Secondly, since the applicant’s arguments concerning the distinctiveness and dominance of the elements of the marks at issue, on which it also partially relied for the aural comparison, have been rejected in paragraphs 52 to 62 above, the applicant does not develop any specific argument which would call into question the Board of Appeal’s finding that the aural differences of the marks at issue are not of such a significance that they could prevail over their similarities, or this board’s conclusion that those marks had, in essence, a high degree of aural similarity.
77 Accordingly, the applicant’s arguments concerning the aural comparison must be rejected.
– Conceptual similarity
78 According to the Board of Appeal, for the part of the relevant public for which neither of the signs has a meaning, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.
79 The applicant claims that the signs at issue are conceptually different. In its view, the letter combination ‘dis’ may be perceived to mean ‘distribution’ in many languages used within the European Union. Furthermore, the part ‘do’ is a very basic English word meaning ‘to do something’ or ‘to act’ and is widely understood within the professional public which speaks at least a basic level of English.
80 EUIPO and the intervener dispute the applicant’s arguments.
81 It should, first of all, be borne in mind that where none of the marks at issue, each taken as a whole, has any meaning, conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).
82 In that regard, it must be recalled that the applicant’s arguments concerning the distinctiveness and dominance of the elements of the marks at issue, on which it also partially relied for the conceptual comparison, have been rejected in paragraphs 52 to 62 above. In particular, it is apparent from paragraph 61 above that the applicant has not succeeded in calling into question the Board of Appeal’s findings that, first, a significant part of the relevant public will perceive the earlier mark as a single unit which has no particular meaning to them, and is therefore distinctive to a normal degree; secondly, at least a non-negligible part of the professional public in the European Union will not see any of the abovementioned meanings in the signs under comparison and will perceive the words ‘enedis’ of the earlier mark and ‘enedo’ of the mark applied for as meaningless distinctive words, and, thirdly, a non-negligible part of the relevant public is not likely to break down the marks at issue into two or more elements.
83 Accordingly, the applicant has also failed to call into question the Board of Appeal’s finding that, for the part of the relevant public for which neither of the signs has a meaning, conceptual comparison is not possible. The applicant’s arguments raised in relation to the conceptual comparison must therefore also be rejected.
The distinctiveness of the earlier mark
84 According to the Board of Appeal, the intervener had not explicitly claimed that its earlier mark had acquired reputation or enhanced distinctiveness through intensive use. The earlier mark as a whole would not convey any meaning in relation to the goods and services that it covers from the perspective of the public under analysis, that is to say a non-negligible part of the professional public that would not perceive the elements ‘ene’ and ‘dis’ as referring to ‘energy’ and ‘distribution’ in relation to the goods and services in question and would perceive the words ‘enedis’ of the earlier mark and ‘enedo’ of the mark applied for as meaningless distinctive words. Accordingly, the Board of Appeal has concluded that the inherent distinctiveness of the earlier mark must be seen as normal, despite the fact that the remaining part of the public may perceive the element ‘ene’ and potentially also the element ‘dis’ as having a low distinctive character due to the reference to the nature of the goods and services in question.
85 According to the applicant, for the professional part of the relevant public that understands the whole meaning of the earlier mark as ‘distribution of energy [or] electricity’, the right conferred by the earlier mark must be regarded as very limited due to its considerably low distinctive character. That public would break the earlier mark ENEDIS down into two elements, namely ‘ene’ which would be associated with energy, and ‘dis, which would be associated with distribution. The earlier mark would, therefore, have a particularly low distinctive character.
86 EUIPO and the intervener dispute the applicant’s arguments.
87 In that regard, it is sufficient to note that, in so far as the applicant’s arguments concerning the distinctiveness and dominance of the elements of the marks at issue were rejected in paragraphs 52 to 62 above, it is also necessary to reject, for the same reasons, its arguments concerning the distinctiveness of the earlier mark.
The likelihood of confusion
88 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).
89 The distinctive character of the earlier mark is one of the other relevant factors which must be taken into account in the context of the global assessment of the likelihood of confusion (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
90 In the present case, the Board of Appeal found that the inherent distinctiveness of the earlier mark must be seen as normal; that the goods and services in question were in part identical, in part highly similar and in part similar to an average degree; that the signs at issue were visually and aurally similar at least to an above-average degree; and that the conceptual aspect did not affect the similarity.
91 The Board of Appeal therefore concluded that there was a likelihood that at least the part of the public for which the signs have no meaning and are distinctive might believe that the goods and services covered by the earlier mark and those covered by the mark applied for are provided by the same undertaking or, as the case may be, by economically linked undertakings. It found, accordingly, that a likelihood of confusion could not be excluded at least for that part of the relevant public, despite its higher degree of attention for all the goods and services covered by the mark applied for.
92 The applicant disputes the existence of a likelihood of confusion. In its view, it cannot be accepted that the professional public within the relevant field of the goods and services in question, for which the signs at issue have understandable meanings and are, therefore, not particularly, if at all, distinctive, might believe that the goods and services covered by the earlier mark and those covered by the mark applied for are provided by the same undertaking or by economically linked undertakings.
93 EUIPO and the intervener dispute the applicant’s arguments.
94 It must be observed that the applicant’s complaint is based on the premise that the Board of Appeal made multiple errors regarding the definition of the relevant public and its level of attention, the comparison of the goods and services in question, the comparison of the signs at issue, and the assessment of the earlier mark’s distinctiveness. However, as is apparent from the examination of the applicant’s arguments in paragraphs 30 to 87 above, those arguments do not make it possible to call the analysis of the Board of Appeal into question in that regard.
95 Therefore, the applicant has not presented any argument capable of invalidating the global assessment of the likelihood of confusion carried out by the Board of Appeal in the contested decision. In so far as, first, the goods and services covered by the mark applied for and those covered by the earlier mark are identical or at least very similar, very similar or similar to an average degree and, secondly, the marks at issue have a high degree of visual and aural similarity, the inherent distinctiveness of the earlier mark being normal, it must be found, in accordance with the principle of interdependence, as the Board of Appeal observed, that there is a likelihood of confusion in the minds of part of the relevant public, despite that public’s high level of attention.
96 In the light of the foregoing, it is appropriate to reject the applicant’s arguments relating to the global assessment of the likelihood of confusion and, consequently, to dismiss the action in its entirety.
Costs
97 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.
98 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, as applied for by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Enedo Oyj, in addition to bearing its own costs, to pay those incurred by Enedis;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kowalik-Bańczyk | Dimitrakopoulos | Ricziová |
Delivered in open court in Luxembourg on 15 January 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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