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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> DoDo Services v EUIPO - doqo (doqo) (EU trade mark- Judgment) [2025] EUECJ T-298/24 (30 April 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T29824.html Cite as: [2025] EUECJ T-298/24, EU:T:2025:425, ECLI:EU:T:2025:425 |
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JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
30 April 2025 (*)
( EU trade mark - Opposition proceedings - Application for EU figurative mark doqo - Earlier EU figurative mark Do Do - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑298/24,
DoDo Services s. r. o., established in Prague (Czech Republic), represented by J. Matzner, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
doqo, established in Paris (France), represented by D. Huart, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva and P. Zilgalvis (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 based on Article 263 TFEU, the applicant, DoDo Services s. r. o., seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 April 2024 (Case R 1921/2023‑2) ('the contested decision').
Background to the dispute
2 On 7 February 2022, the intervener, doqo, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark applied for covered goods and services in Classes 9, 35, 38 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.
4 On 4 May 2022, the applicant filed a notice of opposition to registration of the mark applied for in respect of all of the goods and services referred to in paragraph 3 above.
5 The opposition was based on the earlier EU figurative mark, filed on 19 July 2018 and registered on 11 December 2018 under No 17 932 458, reproduced below:
6 The goods and services in respect of which the earlier mark was registered were in Classes 35 and 38.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
8 On 12 July 2023, the Opposition Division upheld the opposition in part.
9 On 8 September 2023, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal upheld the appeal, annulled the decision of the Opposition Division and rejected the opposition in its entirety. In the first place, it refused as out of time the intervener's request, made for the first time in the appeal against the decision of the Opposition Division, that the applicant be ordered to produce proof that the earlier mark had been put to genuine use. In the second place, it found, in essence, that, in view, in particular, of the very low degree of visual similarity between the signs at issue and their low degree of phonetic similarity, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, despite the identity or similarity of the goods and services at issue.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in case an oral hearing is convened.
13 The intervener contends, in essence, that the Court should:
– dismiss the action;
– order the registration of the mark applied for;
– alter the contested decision in so far as it found that neither of the two signs had any meaning for the relevant public;
– order the applicant to pay the costs incurred before the Opposition Division, the Board of Appeal and the Court.
Law
The Court's jurisdiction to hear and determine the intervener's third head of claim
14 By its third head of claim, the intervener asks the Court to order the registration of the mark applied for.
15 In that regard, it is sufficient to recall that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see orders of of 22 September 2016, Gaki v Commission, C‑130/16 P, not published, EU:C:2016:731, paragraph 14 and the case-law cited, and of 19 July 2016, Trajektna luka Split v Commission, T‑169/16, not published, EU:T:2016:441, paragraph 13 and the case-law cited).
16 It follows that that head of claim must be rejected on the grounds of lack of jurisdiction.
The admissibility of the intervener's claim for alteration of the contested decision
17 By its fourth head of claim, the intervener asks the Court to alter the contested decision and to hold that the earlier mark has a specific meaning that excludes any likelihood of confusion with the mark applied for. In that regard, it submits that, contrary to what was held in the contested decision, the word element of the earlier sign cannot be considered meaningless by the 'local people', which are Czech-speaking consumers and not Hungarian-speaking consumers. Thus, the mark applied for does not have a clear intellectual meaning, unlike the earlier mark, with the result that the signs at issue are conceptually different.
18 In that regard, it should be recalled that Article 72(4) of Regulation 2017/1001 provides that an action before the Court is to be open to any party to proceedings before the Board of Appeal 'adversely affected by its decision'. Moreover, according to settled case-law, an applicant's interest in bringing proceedings constitutes the essential prerequisite for any legal proceeding and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which it will be inadmissible. The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it (see judgment of 25 September 2015, Copernicus-Trademarks v OHIM – Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 27 and the case-law cited).
19 According to the case-law, a decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board, when it grants the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even where it does not examine or where it dismisses the other grounds or arguments raised by that party (see judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 28 and the case-law cited).
20 In the present case, since the Board of Appeal rejected the applicant's opposition to registration of the mark applied for on the basis of Article 8(1)(b) of Regulation 2017/1001 in respect of all the goods and services at issue, it must be held that the contested decision upheld the intervener's claims.
21 Accordingly, the intervener's claim for alteration of the contested decision must be rejected as inadmissible.
Admissibility of the separate plea raised by the intervener concerning the lack of genuine use of the earlier mark
22 While acknowledging that the earlier mark was not subject to the obligation of genuine use during the opposition proceedings, the intervener requests that the applicant prove that the earlier mark was put to genuine use. It submits that the applicant uses a different figurative mark, filed on 17 June 2022. The opposition proceedings brought by the applicant are therefore abusive, given that the applicant no longer uses the mark on which the opposition was based.
23 In that regard, it must be held that the Board of Appeal was correct in finding that the request for proof of genuine use of the earlier mark submitted by the applicant was inadmissible on the basis of Article 27(3)(c) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), because that request had not been submitted in due time before the Opposition Division.
24 Furthermore, and in any event, the request for proof of genuine use of the earlier mark cannot be declared admissible in the proceedings before the Court. The purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72(2) of Regulation 2017/1001. Similarly, Article 188 of the Rules of Procedure of the General Court provides that the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal (see, to that effect, judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 23 and the case-law cited).
25 The separate plea put forward by the applicant seeks to have the Court assess an issue that the Board of Appeal was correct in not examining. It must, for that reason, be rejected as inadmissible.
Substance
26 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. According to the applicant, the Board of Appeal erred in finding that there was no likelihood of confusion in the present case.
27 EUIPO, supported by the intervener, disputes the applicant's arguments.
28 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
29 The risk that the public might 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).
30 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
31 The applicant's arguments must be examined in the light of the abovementioned principles.
The relevant public and territory
32 As regards the determination of the relevant public and territory, the Board of Appeal found that the relevant territory for the assessment of the likelihood of confusion was that of the European Union. Furthermore, it confirmed the Opposition Division's finding that the goods and services at issue targeted both the public at large and business customers with specific professional knowledge or expertise. It also found that the public's level of attention could vary from average to high, depending on the price, sophistication, specialised nature or terms and conditions of the goods and services purchased.
33 The applicant does not dispute the Board of Appeal's assessments relating to the determination of the relevant public and its level of attention.
34 However, the applicant complains, in essence, that the Board of Appeal did not focus its assessment on the Hungarian-speaking part of the relevant public, which it considers non-negligible and for which, according to the applicant, neither of the signs at issue has any meaning.
35 EUIPO and the intervener each dispute the applicant's arguments.
36 In that regard, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). However, the Board of Appeal's assessment that there is no likelihood of confusion on the part of the relevant public of the European Union encompasses the Hungarian-speaking part of the relevant public. In such a case, the reduction of the relevant public throughout the European Union to that part alone cannot affect that assessment. In paragraph 33 of the contested decision, the Board of Appeal found that neither of the signs at issue had a meaning for the relevant public. That argument of the applicant must therefore be rejected as ineffective.
37 Consequently, there is no need to call into question the Board of Appeal's assessments as regards the determination of the relevant public and the relevant territory.
The comparison of the goods and services
38 As regards the comparison of the goods and services in respect of which the opposition was upheld, the Board of Appeal agreed with the Opposition Division's finding that, first, the goods and services at issue in Classes 9, 38 and 42 covered by the mark applied for were either identical or similar to the communications by fibre optic networks services in Class 38 covered by the earlier mark and, secondly, the services in Class 35 covered by the mark applied for were either identical or similar to varying degrees to the services in Class 35 covered by the earlier mark. It also found that the fact that all the services covered by the mark applied for were limited to the field of health did not affect the comparison of the goods and services in the present case, since the services covered by the earlier mark were not limited to any specific field.
39 Those findings, which are not contested by the parties, must be upheld.
The comparison of the signs
40 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
41 In the present case, the earlier mark is a figurative mark consisting of two speech bubbles, one dark green and the other light green, facing opposite directions, each containing the word element 'do', written in standard white characters, with an upper-case letter 'D' and a lower-case letter 'o'.
42 The mark applied for is a figurative mark consisting of the word element 'doqo', represented in stylised lower-case letters in blue.
– The visual similarity
43 In the first place, the applicant submits that the Board of Appeal erred in finding that the signs at issue were visually similar to a very low degree. It submits that, in accordance with the case-law, the word element usually has a stronger impact than the figurative element, as word elements are, in principle, more distinctive than figurative elements. In that regard, the differences between the lower-case letter 'd' and the upper-case letter 'D' are insignificant. According to the applicant, what matters in the assessment of visual similarity is the presence, in each sign, of several letters placed in the same order and it is therefore particularly relevant that the signs coincide in three out of four letters. Furthermore, the Board of Appeal departed from the case-law according to which consumers tend to focus on the beginning of the mark.
44 In the second place, the applicant complains that the Board of Appeal failed to take into account several previous decisions of EUIPO, taken in relation to similar applications, in which the assessment of visual similarity was based mainly on the similarity of the word elements of the compared signs. Furthermore, the Board of Appeal failed properly to reason and justify its departure from EUIPO's previous decision-making practice. It therefore failed to comply with the principles of equal treatment and sound administration.
45 EUIPO, supported by the intervener, disputes the applicant's arguments.
46 The Board of Appeal concluded that the signs at issue were visually similar to a very low degree. In its view, even though those signs coincided in the sequence of letters 'd', 'o' and 'o', their figurative elements also had to be taken into account. In that regard, it noted that those two figurative signs differed in their particular typeface and colours. In addition, it noted that, although the signs at issue shared the two lower-case letters 'o', the letter 'q' in the mark applied for was the 'opposite' of the letter 'd'. Furthermore, the lower-case letter 'd' was visually different from the upper-case letter 'D'. Consequently, according to the Board of Appeal, the principle that consumers generally tend to focus on the beginning of a sign when they encounter a mark was irrelevant in the present case.
47 In the first place, it must be borne in mind that the signs at issue are both figurative. The case-law relied on by the applicant, according to which, in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as more distinctive than the figurative elements, cannot be interpreted as meaning that, in the comparison of two figurative marks each made up of a word element, at least one of which has stylised characters, as in the present case, the stylisation of the word elements should not be taken into account, since that would amount to considering the figurative marks at issue as being word marks. Consequently, the comparison of the two marks at issue cannot overlook the stylisation of the word element making up the mark applied for (see, to that effect, judgment of 27 February 2019, Aytekin v EUIPO – Dienne Salotti (Dienne), T‑107/18, not published, EU:T:2019:114, paragraph 45).
48 In the present case, while it is true that the signs at issue coincide in the sequence of letters 'd', 'o' and 'o', that is to say, three out of four letters in the same order, those signs differ significantly in several figurative aspects, which affect their structure.
49 First of all, as the Board of Appeal correctly pointed out, the earlier mark contains figurative elements that are missing from the mark applied for. Those elements consist of two speech bubbles, one dark green and the other light green, facing opposite directions.
50 Next, as regards the characteristics of the letters of the signs at issue, it should be noted that they differ in colour and typeface. The word elements of the earlier mark are represented in a standard white typeface, whereas the mark applied for has a stylised blue typeface. That particular stylisation gives the mark applied for a uniform appearance that the earlier mark does not possess. In particular, as the intervener correctly points out, the letters 'd' and 'q' of the mark applied for could be seen as the letter 'o' with a stick. It should also be noted that the lower-case letter 'd' in the mark applied for produces a visual impression that is different from that produced by the upper-case letter 'D' in the earlier mark.
51 Moreover, the figurative and stylistic elements of the signs at issue affect their respective structures. In the earlier mark, the figurative elements consisting of two speech bubbles contribute to creating a distance between the two word elements making up the sign, each bubble containing the word element 'do'. The fact that each of those word elements begins with the upper-case letter 'D' reinforces the visual impression of a separation between them. The mark applied for, on the contrary, is characterised by a homogeneous structure on account, in particular, of the particular stylisation of its typeface, as stated in paragraph 50 above, and the exclusive use of lower-case letters.
52 Those elements, far from being insignificant as the applicant suggests, contribute, taken together, to distinguishing the signs at issue visually, especially given that the case-law states that even insignificant differences between signs are capable of creating a different overall impression where those signs are made up of short words (see, to that effect, judgment of 27 February 2019, Dienne, T‑107/18, not published, EU:T:2019:114, paragraph 56 and the case-law cited). Furthermore, as regards the applicant's argument that the important aspect of the assessment of visual similarity is the presence in each sign of several letters placed in the same order, it must be borne in mind that, according to the case-law, it cannot be ruled out that signs may be regarded as having little similarity or as being different from a visual point of view, even though they contain a sequence of identical letters (see, to that effect, judgment of 11 December 2013, Eckes-Granini v OHIM – Panini (PANINI), T‑487/12, not published, EU:T:2013:637, paragraph 42).
53 Lastly, as regards the applicant's reference to the case-law according to which the beginning of a mark is more likely to attract the relevant public's attention, it must be borne in mind that that consideration cannot apply in all cases (see judgment of 16 May 2007, Trek Bicycle v OHIM-Audi (ALLTREK), T‑158/05, not published, EU:T:2007:143, paragraph 70 and the case-law cited). In any event, the identity of the first two letters of the signs at issue must be assessed in the light of the principle that the examination of the similarity between the signs must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its individual details (see judgments of 10 October 2006, Armacell v OHIM – nmc (ARMAFOAM), T‑172/05, EU:T:2006:300, paragraph 65 and the case-law cited, and of 27 February 2014, Advance Magazine Publishers v OHIM – Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraph 40 and the case-law cited).
54 Consequently, in view of their constituent elements, in particular the presence of figurative elements in the earlier mark that are absent from the mark applied for, the respective characteristics of the typefaces of the signs at issue, their different colour and structure, it must be concluded that the Board of Appeal did not make an error of assessment in finding, by comparing the overall impression produced by the signs at issue, that those signs were visually similar to a very low degree.
55 In the second place, as regards the argument that the Board of Appeal's assessment of visual similarity contradicts EUIPO's previous decision-making practice, it must be borne in mind that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, as EUIPO correctly submits, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the Courts of the European Union and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
56 It is true that the Court of Justice has held that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. However, it added that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74, 75 and 77).
57 Moreover, in so far as the applicant refers to a decision of the Opposition Division, it must be observed that the Boards of Appeal may not in any event be bound by the decisions of lower-ranking adjudicating bodies of EUIPO (judgments of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 48, and of 13 December 2016, APAX, T‑58/16, not published, EU:T:2016:724, paragraph 38).
58 In the present case, it is apparent from the considerations set out in paragraphs 48 to 54 above that the Board of Appeal was justified in finding that the signs at issue were visually similar to a very low degree. In those circumstances, the applicant cannot usefully rely, for the purposes of invalidating that finding, on previous decisions of EUIPO, which, moreover, refer to marks different from those at issue in the present case. Consequently, nor can the applicant reasonably criticise the Board of Appeal for failing to set out the reasons why it departed from EUIPO's alleged previous decision-making practice.
– The phonetic similarity
59 As regards the assessment of phonetic similarity, the applicant submits, in essence, that the Board of Appeal erred in finding that the signs at issue had a low degree of phonetic similarity, as they have a different rhythm and the syllable 'qo' is unusual. According to the applicant, both of the compared signs will be pronounced with similar intonation and rhythm.
60 In addition, the applicant submits, referring to EUIPO's decision-making practice, that, among the list of previous decisions that it cites in its written pleadings, the compared four-letter signs, which differed only in the third letter, were always found to be phonetically similar at least to an average degree.
61 EUIPO submits that none of the applicant's arguments can call into question the Board of Appeal's assessment that the signs at issue were phonetically similar to a low degree. As regards the argument based on its previous decision-making practice, it states that no general decision-making practice regarding the precise degree of phonetic similarity can be extrapolated from the previous decisions cited by the applicant.
62 The intervener submits that, although the signs at issue consist of the same number of letters and syllables, they do not contain the same sequence of vowels and do not have the same stresses. In its view, the pronunciation of the earlier mark is repetitive and neither of the two syllables is particularly stressed, whereas, in the mark applied for, the stress is placed on the second syllable, which contains the strong-impact letter 'q'. The pronunciation of the signs at issue is thus totally different.
63 In paragraph 32 of the contested decision, the Board of Appeal concluded that the signs at issue were phonetically similar to a low degree. In support of that conclusion, the Board of Appeal noted that, although those signs share the same syllable 'do' and contain the same sequence of vowels 'o', they differed in their second syllable, 'qo' and 'do'. Furthermore, according to the Board of Appeal, the repetition of the same syllable 'do' in the earlier mark is striking and gives a rhythm and particular sound to the sign. In contrast to the earlier mark, the same rhythm is not characteristic of the mark applied for and the syllable 'qo' is rather unusual.
64 In the present case, it must be noted that the first syllables of the signs at issue are identical. It is true that the second syllables 'qo' and 'do' differ in their first sound, namely 'q' and 'd' respectively, but are, however, phonetically similar on account of their common final sound. Furthermore, as the applicant has pointed out, those signs both consist of two syllables, the rhythm of which is similar. The impact of the third letter 'q' in the mark applied for and of the third letter 'd' in the earlier mark on the sound and rhythm cannot be overestimated in that regard.
65 It follows that the signs at issue are phonetically similar to an average degree and that the Board of Appeal made an error of assessment in finding that there was a low degree of similarity in that regard. However, the scope of that error will be examined in the overall analysis of the likelihood of confusion, it being understood that the finding of an error would justify the automatic annulment of the contested decision only in so far as it has any bearing on the outcome of the dispute (see, to that effect, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 70).
– The conceptual similarity
66 The applicant submits that, according to the case-law, even if a likelihood of confusion exists only for part of the relevant public, that finding is sufficient to uphold the opposition. Accordingly, in its view, the Board of Appeal should have focused its assessment of the conceptual similarity on the non-negligible part of the Hungarian-speaking public for which the component 'do' was meaningless and had a normal degree of distinctiveness. Thus, a conceptual comparison is not possible with regard to that part of that public, increasing the likelihood of confusion between the marks at issue. It also submits that if only one of the compared signs evoked a concept, it is not possible to conduct a conceptual comparison.
67 EUIPO contends, in essence, that the applicant's arguments are irrelevant.
68 In paragraph 33 of the contested decision, the Board of Appeal found, in essence, that a conceptual comparison of the signs at issue was not possible, on the ground that the two signs under comparison had no meaning for the relevant public, and that the conceptual aspect therefore had no bearing on the assessment of the similarity between the signs. In its view, it is unlikely that the earlier mark will be perceived as the English verb 'to do' or as a reference to an extinct species of bird. In any event, even if that were the case, the mark applied for would have no meaning and, consequently, the signs at issue would not be conceptually similar.
69 In the present case, it must be held that, in the unlikely event that the earlier mark is perceived by the relevant public as a reference to the English verb 'to do', or even to an extinct species of bird, the marks at issue would be conceptually different, given that the mark applied for has no meaning. It should be noted that, where one of the signs at issue has a meaning from the perspective of the relevant public and the other has no meaning, it must be held that they are conceptually different (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).
70 In the more likely alternative, where neither of the signs at issue would have a meaning for a significant part of the relevant public, a conceptual comparison would be impossible. It is clear from the case-law that, where none of the signs at issue has meaning taken as a whole, it must be held that the 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).
71 Given that, in paragraph 33 of the contested decision, the Board of Appeal considered the two situations referred to in paragraphs 69 and 70 above, it was entitled to conclude that either the signs were conceptually different or that a conceptual comparison between those signs was impossible.
72 As regards the applicant's argument that the Board of Appeal did not focus its assessment of conceptual similarity on the Hungarian-speaking part of the relevant public, which is non-negligible and in respect of which a conceptual comparison is impossible, that argument must be rejected as ineffective. As noted in paragraphs 36 and 37 above, the Board of Appeal took into consideration the relevant public throughout the European Union, including that part of that public for which the component 'do' has no meaning. Accordingly, it must be held, as EUIPO did, that the applicant, in arguing that a conceptual comparison is impossible in the present case, essentially agrees with the Board of Appeal's assessment of the conceptual comparison.
73 The applicant's argument that even if only one of the signs at issue evoked a concept, it would not be possible to carry out a conceptual comparison, must be rejected. In such a situation, as has been pointed out in paragraph 69 above, the signs at issue are conceptually different.
The likelihood of confusion
74 The 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
75 The applicant disputes the Board of Appeal's finding that there is no likelihood of confusion in the present case. First of all, it submits that the signs at issue are visually similar to an average degree and phonetically similar to a very high degree, whereas a conceptual comparison of those signs is impossible, even though the goods and services at issue are identical or similar.
76 Next, the applicant submits, in essence, that the Board of Appeal's application of the principle of interdependence is not consistent with its normal application, as is apparent from EUIPO's decision-making practice and the case-law. In that regard, it submits that the Board of Appeal did not apply the principle that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind.
77 In addition, the applicant submits that the likelihood of confusion, which includes the likelihood of association, is clear from the fact that, in its action, the intervener itself wrongly associated the earlier mark with the sign of another company, unrelated to the applicant, by providing the Board of Appeal with a direct link to that company's website, as evidence of the fact that the applicant did not put the earlier mark to genuine use. Since that association was made by the intervener, it follows that the word element of the signs at issue is a decisive factor in the assessment of the likelihood of confusion.
78 Lastly, the applicant claims that, according to an analysis of EUIPO's decision-making practice, when EUIPO has compared two four-letter signs that differ only in the third character, it has found that the compared signs were similar in such a way as to give rise to a likelihood of confusion in 84% of the 378 cases examined.
79 EUIPO and the intervener dispute the applicant's arguments.
80 As a preliminary point, it should be noted that there is no need to call into question the Board of Appeal's assessment – which, moreover, is not disputed by the applicant – that the distinctive character of the earlier mark was average, since that mark had no meaning in relation to the relevant goods and services.
81 As regards the overall assessment of the likelihood of confusion, in paragraphs 37 to 43 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to a very low degree and phonetically similar to a low degree, whereas, conceptually, either their comparison was impossible or they were different. It concluded that, in the present case, clearly perceptible differences between those signs excluded any likelihood of confusion, despite the identity or similarity of the goods and services at issue.
82 In the present case, in the first place, it follows from the foregoing that the Board of Appeal correctly established that the signs at issue were visually similar to a very low degree (see paragraph 54 above) and that no conceptual comparison was possible or that those signs were conceptually different (see paragraph 71 above). It also follows from the foregoing that the relevant public displays a level of attention varying from average to high (see paragraph 32 above) and that the goods and services in respect of which the Opposition Division upheld the opposition are identical or similar (see paragraph 38 above). As regards the inherent distinctiveness of the earlier mark, it must be held to be average (see paragraph 80 above).
83 By contrast, as noted in paragraph 65 above, the Board of Appeal should have found that there was an average degree of phonetic similarity between the signs at issue, and not a low degree of phonetic similarity.
84 However, despite that error of assessment, the Board of Appeal was correct to conclude that differences between the signs at issue excluded any likelihood of confusion on the part of the relevant public.
85 It should be borne in mind that, according to the case-law, the overall assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks and that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
86 In the present case, it follows from an overall comparison of the signs at issue that the overall impressions produced by each of them are not such as to give rise to a likelihood of confusion on the part of the relevant public. The elements of average phonetic similarity are offset by the very low degree of visual similarity found in paragraph 54 above, especially since the signs at issue are both figurative and not word signs, with different typefaces, colours and structures. Furthermore, conceptually, either the comparison is impossible or those signs are different. The identity or similarity of the goods and services is thus offset by the low degree of overall similarity between those signs, excluding any likelihood of confusion in the present case, given also that the level of attention of the relevant public varies from average to high.
87 Furthermore, as regards the applicant's argument that the Board of Appeal did not correctly apply the principle of interdependence in the present case, it must be borne in mind that there is no automatic basis for concluding that there is a likelihood of confusion whenever there is identity between the goods or services and a low degree of similarity between the signs at issue. While it is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the signs, conversely there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods or services are involved and there is a weak degree of similarity between the signs (see judgment of 21 February 2024, Hoffmann v EUIPO – Moldex/Metric (Holex), T‑767/22, not published, EU:T:2024:108, paragraph 74 and the case-law cited). As has been stated in paragraph 86 above, the identity or similarity of the goods and services is offset in the present case by the low degree of overall similarity between the signs at issue.
88 It follows that the Board of Appeal, in finding that there was no likelihood of confusion, complied with the principle of interdependence referred to in paragraph 74 above.
89 Furthermore, in so far as the applicant relies on the concept of imperfect recollection in order to establish that there is a likelihood of confusion in the present case, it is true that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
90 Nevertheless, the marks at issue contain significant visual differences (see paragraphs 49 to 52 and 54 above). Consequently, the relevant public, the level of attention of which is average to high, will perceive the differences between the signs which relate to their figurative and stylistic elements, even though it has only an imperfect recollection of those signs.
91 In the second place, as regards the applicant's complaint that the Board of Appeal's assessment is inconsistent with EUIPO's previous decision-making practice, it should be borne in mind that, although, in accordance with the case-law cited in paragraphs 55 and 56 above, the Board of Appeal is required to exercise its powers in accordance with the principles of equal treatment and sound administration, those principles must be consistent with respect for legality. Therefore, the examination of any application for registration must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).
92 In the present case, it is apparent from paragraphs 82 and 84 above that the Board of Appeal was correct to conclude, on the basis of a full examination, that there was no likelihood of confusion in the present case. It follows that, in accordance with the case-law referred to in paragraph 91 above, that assessment cannot validly be called into question by the applicant's arguments alleging a contradiction between the contested decision and EUIPO's decision-making practice.
93 Lastly, the argument that, during the proceedings before the Board of Appeal, the intervener incorrectly associated the earlier mark with the mark of another company unrelated to the applicant is irrelevant. Even supposing that the intervener had made an error, it would not be such as to demonstrate the existence of a likelihood of confusion in the present case.
94 Having regard to all the foregoing considerations, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
95 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings.
96 Therefore, since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener during the present proceedings, in accordance with the form of order sought by the latter. By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, in the absence of such a hearing, bear its own costs.
97 As regards the form of order sought by the intervener relating to the costs incurred before the Opposition Division, it should be recalled that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred in respect of the proceedings before the Opposition Division cannot be regarded as recoverable costs (see judgment of 8 May 2014, Pyrox v OHIM – Köb Holzheizsysteme (PYROX), T‑575/12, not published, EU:T:2014:242, paragraph 15 and the case-law cited). Consequently, the intervener's head of claim to the effect that the applicant should be ordered to pay the costs incurred before the Opposition Division must be rejected.
98 As regards the intervener's claim that the applicant should be ordered to pay the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment is dismissing the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see judgment of 13 December 2023, Good Services v EUIPO – ITV Studios Global Distribution (EL ROSCO), T‑381/22, not published, EU:T:2023:799, paragraph 60 and the case-law cited).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders DoDo Services s. r. o., in addition to bearing its own costs, to pay those incurred by doqo;
3. Declares that the European Union Intellectual Property Office (EUIPO) is to bear its own costs.
Costeira | Kancheva | Zilgalvis |
Delivered in open court in Luxembourg on 30 April 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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