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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Karneolis v EUIPO - Match Group (KinkySwipe) (EU trade mark - Judgment) [2025] EUECJ T-332/24 (14 May 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T33224.html Cite as: [2025] EUECJ T-332/24, ECLI:EU:T:2025:489, EU:T:2025:489 |
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JUDGMENT OF THE GENERAL COURT (Third Chamber)
14 May 2025 (*)
( EU trade mark - Opposition proceedings - Application for the EU word mark KinkySwipe - Earlier national word mark SWIPE - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑332/24,
Karneolis LTD, established in Nicosia (Cyprus), represented by E. Henao Hoyos, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Match Group LLC, established in Dallas, Texas (United States), represented by J. Güell Serra, lawyer,
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl, President, I. Nõmm (Rapporteur) and G. Steinfatt, 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, Karneolis LTD, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 May 2024 (Case R 1430/2023‑5) ('the contested decision').
Background to the dispute
2 On 8 October 2021, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign KinkySwipe.
3 The mark applied for covered services in Classes 38 and 45 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, corresponding, for each of those classes, to the following description:
– Class 38: 'Communication services, namely, electronic transmission of data and documents among users of computers; provision of access to content, websites and portals; provision of access to internet platforms for the purpose of exchanging digital photographs; chatroom services for social networking';
– Class 45: 'Dating services provided through social networking'.
4 On 14 January 2022, the intervener, Match Group LLC, filed a notice of opposition against the registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5 The opposition was based, inter alia, on the earlier Italian word mark SWIPE registered on 24 July 2019 under No 2019000001048 in respect of 'dating services; internet based social networking, introduction and dating services' in Class 45.
6 The ground relied on in support of the opposition was the one 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 10 May 2023, the Opposition Division upheld the opposition and rejected the application for registration in respect of the services referred to in paragraph 3 above.
8 On 10 July 2023, the applicant filed a notice of appeal with EUIPO against the Opposition Division's decision.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– declare that the application for registration of the mark applied for should be granted.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
12 The intervener contends, in essence, that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The jurisdiction of the General Court
13 As regards the applicant's second head of claim, it must be noted, as observed by EUIPO, that, in essence, it asks the Court to order EUIPO to register the mark applied for. In that regard, suffice it to point out that, in the context of the review of legality based on Article 263 TFEU, the General Court has no jurisdiction to issue directions to EUIPO (see, to that effect, judgment of 24 January 2024, Tiendanimal v EUIPO – Salvana Tiernahrung (SALVAJE), T‑55/23, not published, EU:T:2024:30, paragraph 25 and the case-law cited). It follows that the applicant's second head of claim must be rejected on the ground of lack of jurisdiction.
Substance
14 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, arguing that the Board of Appeal erred in finding that there was a likelihood of confusion in the present case. More specifically, the applicant maintains that the Board of Appeal made errors of assessment in the comparison of the services at issue and the signs at issue and in the global assessment of the likelihood of confusion.
15 It should be recalled that, under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
16 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 32 and the case-law cited).
17 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 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).
The relevant public and its level of attention
18 The Board of Appeal found, in essence, in paragraphs 22 to 24 of the contested decision, that, depending on the services concerned, the relevant public consisted of the public at large and/or professionals, who had at least an average level of attention.
19 Furthermore, the Board of Appeal found, in paragraph 25 of the contested decision, that the relevant territory for assessing the likelihood of confusion was Italy, on account of the registration of the earlier mark in that State.
20 There is no need to call those assessments into question, which, moreover, have not been disputed by the applicant.
Comparison of the services in question
21 The Board of Appeal found, in paragraphs 31 and 32 of the contested decision, that the services in Class 45 covered by the earlier mark were, first, similar to an average degree to the services in Class 38 covered by the mark applied for and, second, identical to the services in Class 45 covered by that mark.
22 The applicant disputes those findings of the Board of Appeal, arguing that the services at issue are different.
23 EUIPO, supported by the intervener, disputes the applicant's arguments.
24 According to the case-law, in assessing the similarity of the services at issue, all the relevant factors relating to those services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the services concerned (see judgment of 7 June 2023, DDR Kultur v EUIPO – Groupe Canal+ (THE PLANET), T‑47/22, not published, EU:T:2023:311, paragraph 44 and the case-law cited).
25 It must be noted that, as maintained by EUIPO, the applicant does not put forward any specific arguments to demonstrate why the services covered by the signs at issue are different. It merely submits, in essence, that those signs are used and the services at issue are provided in different sectors and thus address a different segment of consumers.
26 However, as observed by the intervener, it follows from the case-law that what matters is not the specific conditions under which the services of the applicant are provided, but the description of the services covered by the earlier mark and by the mark applied for (see judgment of 23 October 2024, Vinatis v EUIPO – Global Rambla Restauración (VINATIS), T‑605/23, not published, EU:T:2024:717, paragraph 58 and the case-law cited). In the present case, the description of the services covered by the mark applied for and by the earlier mark does not indicate any limitation as to the sectors or sections of the public for which they are intended.
27 Since the applicant's claims do not follow from the description of the services at issue, but are based, rather, on the specific conditions under which those services are provided, they must, in the light of the case-law referred to in paragraph 26 above, be rejected as ineffective.
28 In any event, it must be stated, first, as was observed by the Board of Appeal, that the services in Class 38 covered by the mark applied for and the services in Class 45 covered by the earlier mark, as indicated in their descriptions, serve the same purpose, namely to build up a community and/or to allow consumers to communicate and interact. They could also be offered by the same provider and are complementary to the extent that one is indispensable for the other. In those circumstances, the Board of Appeal was right to find that those services are similar to an average degree.
29 Second, as found by the Board of Appeal, the services in Class 45 covered by the mark applied for, on the one hand, and by the earlier mark, on the other, are, in essence, identical even though they are described using synonyms.
30 In the light of the foregoing, it must be held that the Board of Appeal did not make an error of assessment in finding that the services at issue were identical or similar to an average degree.
Comparison of the signs at issue
31 The global assessment of the likelihood of confusion, so far as concerns the visual, phonetic or conceptual similarities between the signs at issue, must 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 appreciation 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).
32 Therefore, before addressing the question of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal's assessment of their distinctive and dominant elements.
– Distinctive and dominant elements of the signs at issue
33 The Board of Appeal found that, although the terms 'swipe' and 'kinky' included in the signs at issue are English words, they will not convey a clear meaning for at least a non-negligible part of the relevant public in Italy which does not understand that language. In those circumstances, it found that those terms had, in the eyes of that part of the relevant public, a 'normal' distinctive character with regard to the services at issue.
34 The applicant disputes those findings of the Board of Appeal. According to the applicant, first, the English word 'swipe', which is common to both signs, will be understood by the relevant public in Italy as a commonly used term 'to denote the act of moving one's finger across a touch-sensitive surface, often to interact with digital devices', so that it is devoid of distinctive character or has a weak, or even very weak, distinctive character. Second, the term 'swipe', used in the mark applied for in conjunction with the term 'kinky', also refers to an experience that is well known in the swinger community. As regards the term 'kinky', the applicant associates it with the kinky community and states that that term refers to a well-known aesthetic and cultural movement in Germany, which makes that word element distinctive for the relevant public.
35 EUIPO, supported by the intervener, disputes the applicant's arguments.
36 In the first place, as regards possible dominant elements of the marks at issue, it should be observed that, according to the case-law, word marks consist entirely of letters, words or associations of words which are written in printed characters in a normal font without any specific graphic element. Such marks therefore do not have a dominant element since, by their nature, none of the constituent elements has a particular graphic or stylistic aspect which is capable of giving it such a character (see judgment of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 79 and the case-law cited).
37 Thus, it must be held that, since the marks at issue are word marks, none of them contains any dominant elements.
38 In the second place, for the purpose of assessing the distinctive character of an element making up a mark, according to the case-law an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 1 June 2022, Krasnyj Octyabr v EUIPO – Pokój (Pokój TRADYCJA JAKOŚĆ KRÓWKA SŁODKIE CHWILE Z DZIECIŃSTWA TRADYCYJNA RECEPTURA), T‑355/20, not published, EU:T:2022:320, paragraph 41 and the case-law cited).
39 It is common ground that both the term 'swipe', which is common to both of the signs at issue, and the term 'kinky', which appears only in the mark applied for, are English words which have a specific meaning for English-speaking consumers.
40 As is apparent from paragraph 9 of the contested decision, the English word 'swipe' is defined by the Oxford English Dictionary as follows: 'to move your finger quickly across the screen of an electronic device such as a mobile phone or small computer in order to move text, pictures, etc. or give commands'.
41 As regards the word 'kinky', as noted in paragraph 51 of the contested decision it is used, according to the Oxford Learner's Dictionary, informally 'to describe sexual behaviour that most people would consider strange or unusual'.
42 It should be borne in mind that, in the present case, since the relevant territory for assessing the likelihood of confusion is Italy, the perception of the signs at issue must be examined from the point of view of an Italian consumer.
43 In that regard, it must be noted that, according to the case-law, knowledge of the vocabulary of a foreign language, other than the basic vocabulary, cannot be assumed (see, to that effect, judgment of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 40 and the case-law cited).
44 In addition, the applicant itself stresses that only 44% of EU citizens declare themselves able to have a conversation in English, which means that a non-negligible proportion of those citizens, including Italians, do not know that language.
45 First, it is common ground that the words 'swipe' and 'kinky' do not exist in Italian and, as the Board of Appeal found in paragraph 43 of the contested decision, do not resemble their equivalents in that language. Furthermore, those words are not basic English words. As the Board of Appeal found in paragraphs 44 and 51 of the contested decision, they are not classified, by the dictionaries referred to in paragraphs 40 and 41 above, in category A1/A2, corresponding to the basic level of English according to the Common European Framework of Reference for Languages (CEFR).
46 Second, it is true that the applicant produced before the Board of Appeal numerous items of evidence (in particular, extracts from websites, various articles and descriptions, and so forth) to demonstrate the meaning and use of the words 'swipe' and 'kinky'. However, it must be noted, as observed by EUIPO and the intervener, that none of that evidence contains data as to the understanding of those English words by the relevant public in Italy.
47 As regards the word 'swipe', it should be pointed out that, even if it is accepted, as the applicant submits, that that term has become commonplace in the field of technology or, more particularly, on the market for touchscreen devices, it cannot be established with certainty that it will also be understood by Italian-speaking consumers who do not understand the English language.
48 Although the evidence produced by the applicant in that regard does indeed illustrate the use of the word 'swipe' in texts written in English, it is not apparent whether and how that word is used in texts written in Italian. Similarly, although the applicant, referring to a study by the Cervantes Institute, claims that many English terms have now been introduced into other languages, it does not demonstrate, in particular, that the specific term 'swipe' has actually been introduced into the Italian language without an Italian translation being used.
49 Similarly, the applicant cannot validly claim that the meaning of the word 'swipe' will be understood by Italian-speaking consumers because around 60% of users of the 'Tinder' dating application, in which the term 'swipe' is frequently used, are under 35 years old, meaning that they constitute a public which is exposed to technological language on a daily basis. In the light of the case-law referred to in paragraph 26 above, the perception of the signs at issue must be examined taking into account the services covered by those signs, whereas the specific conditions under which those services are provided are not relevant to that examination. The services covered by the earlier mark are not limited to the services provided by the 'Tinder' dating application.
50 The same conclusion must be drawn as regards the applicant's arguments concerning the possible association of the words 'swipe' and 'kinky', as presented in the mark applied for, with the specific concepts used by the swinger community or the kinky community. First, the services covered by that mark are in no way limited to services intended specifically for those communities. Second, even if those communities could recognise such concepts in the mark applied for, there is no evidence that that would be the case for a significant part of the relevant public in Italy.
51 In those circumstances, it must be held that at least a non-negligible part of the relevant public in Italy will perceive the words 'swipe' and 'kinky' as meaningless, so that, for that public, they have an average degree of distinctiveness.
52 Furthermore, as regards the registrations previously filed with EUIPO which are, according to the applicant, comparable to the mark applied for, it should be borne in mind that, according to the case-law, the legality of the decisions of the Board of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO which cannot, in any event, bind those Courts (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 10 September 2015, Laverana v OHIM (BIO PROTEINREICHER PFLANZENKOMPLEX AUS EIGENER HERSTELLUNG), T‑571/14, not published, EU:T:2015:626, paragraph 22).
53 Admittedly, the EU judicature has held that 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 (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74, and of 24 November 2015, Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 39).
54 Similarly, in accordance with the case-law, where the competent bodies of EUIPO decide to take a different view from the one adopted in their previous decisions, they should, having regard to the context in which they adopt their new decision, since reliance on such previous decisions forms part of that context, provide an explicit statement of their reasoning for departing from those decisions (see order of 22 October 2020, Grammer v EUIPO (Representation of a geometric figure), T‑833/19, not published, EU:T:2020:509, paragraph 66 and the case-law cited).
55 However, it must be noted that the Board of Appeal expressly stated, in paragraphs 46 and 47 of the contested decision, the reasons why the previous decisions of EUIPO, relied on by the applicant, were not applicable to the present case. Although that previous decision-making practice of EUIPO concerns, inter alia, marks containing the word 'swipe', the analysis of the distinctiveness of that term was not based on the perception of Italian-speaking consumers. However, the perception of that public is decisive in the present case, with the result that EUIPO's previous decisions concerning the perception of the word 'swipe' by sections of the public other than the Italian public are not relevant to the present case.
56 In the light of the foregoing, it must be held that, contrary to what the applicant claims, the Board of Appeal did not make an error of assessment in examining the distinctive and dominant elements of the signs at issue.
– Visual and phonetic comparison of the signs at issue
57 The Board of Appeal found, in paragraphs 56 and 59 of the contested decision, that the signs at issue were visually and phonetically similar to an average degree.
58 The applicant challenges that assessment by the Board of Appeal. In that regard, without putting forward any specific arguments, it submits that the differences between the signs at issue 'are enough … to avoid likelihood of confusion'.
59 EUIPO, supported by the intervener, disputes the applicant's arguments.
60 In the present case, both visually and phonetically, the signs at issue share the word element 'swipe' in an identical manner. However, the signs differ in that the word element 'kinky' is present only in the mark applied for.
61 It is true that, as the applicant points out, the word element 'kinky' constitutes the initial part of the mark applied for and that, according to the case-law, that part of word marks may be capable of attracting the consumer's attention more than the following parts. However, that consideration cannot prevail in every case and cannot, in any event, call into question the principle that the assessment of the similarity of the signs must take account of the overall impression given by them (see judgment of 10 March 2016, credentis v OHIM – Aldi Karlslunde (Curodont), T‑53/15, not published, EU:T:2016:136, paragraph 35 and the case-law cited).
62 In the present case, the initial part of the mark applied for is not likely to attract the attention of the relevant public more than the following part. It should be borne in mind that, in the light of the assessments set out in paragraph 51 above, no element of the mark applied for is more distinctive than the other. Similarly, as stated in paragraph 37 above, that mark does not contain any dominant elements. In those circumstances, the fact that the common element 'swipe' appears at the end of the mark applied for does not mean that the relevant public will give it less weight, especially in view of the fact that that element contains the same number of letters as the word element 'kinky'.
63 Thus, given that the word element 'swipe', which is the sole component of the earlier mark, is included in its entirety in the mark applied for, the signs at issue are partially identical in such a manner as to create, in the mind of the relevant public, an impression of an average degree of visual and phonetic similarity (see, by analogy, judgment of 27 October 2021, Jiruš v EUIPO – Nile Clothing (Racing Syndicate), T‑356/20, not published, EU:T:2021:736, paragraph 69).
64 Thus, contrary to what the applicant claims, the difference created by the existence of the word element 'kinky', despite its position at the beginning of the earlier mark, is not such as to eliminate the visual and phonetic similarities produced by the fact that both marks contain the word 'swipe'.
65 In the light of the foregoing, it must be held that the Board of Appeal did not make an error of assessment in finding that the signs at issue were visually and phonetically similar to an average degree.
– Conceptual comparison of the signs at issue
66 The Board of Appeal concluded, in paragraph 60 of the contested decision, that, since the marks at issue did not convey any meaning for the relevant public in Italy, they could not be compared conceptually.
67 The applicant disputes the assessment of the Board of Appeal in so far as, in its view, those marks convey different concepts to the relevant public.
68 EUIPO disputes the applicant's arguments, while the intervener does not present an explicit position as regards the assessment of the conceptual similarity of the signs at issue.
69 In that regard, it is sufficient to recall that, as stated in paragraph 51 above, the Board of Appeal did not make an error of assessment in finding that none of the English words included in the signs at issue conveys any meaning for a significant part of the relevant public in Italy.
70 In those circumstances, it must be held, as the Board of Appeal found, that a conceptual comparison of the signs at issue is impossible.
Distinctiveness of the earlier mark
71 In paragraph 62 of the contested decision, the Board of Appeal concluded that the earlier mark had an average degree of inherent distinctiveness.
72 Although the applicant does not put forward any specific arguments concerning the distinctiveness of the earlier mark, it is clear from all its written pleadings, in particular as regards the inherent distinctiveness of the word element 'swipe' common to both signs, that it does not agree with the Board of Appeal's assessment. According to the applicant, that term is devoid of distinctive character or has a weak, or even very weak, distinctive character. Furthermore, the applicant submits that the earlier mark should not automatically be regarded as distinctive merely because it was registered as a national trade mark.
73 Although EUIPO and the intervener also do not put forward any specific arguments concerning the distinctiveness of the earlier mark, it is apparent from their written pleadings that, as regards the distinctiveness of the element 'swipe', common to both signs, they do not agree with the applicant's arguments in that regard.
74 As a preliminary point, it must be noted that, contrary to what the applicant appears to claim, according to the case-law, a validly registered earlier right has, in any event, a minimum degree of inherent distinctiveness merely because it has been registered (see judgment of 15 September 2021, Freshly Cosmetics v EUIPO – Misiego Blázquez (IDENTY BEAUTY), T‑688/20, not published, EU:T:2021:567, paragraph 63 and the case-law cited). Accordingly, in the context of the present action, the applicant cannot validly rely on the lack of inherent distinctiveness of the earlier mark.
75 Furthermore, it must be borne in mind that it has already been concluded that the term 'swipe' has an average degree of distinctiveness in the eyes of the relevant public (see paragraph 51 above). The same conclusions must be drawn as regards the distinctiveness of the earlier mark, since it contains only that element.
76 Consequently, the Board of Appeal did not make any error of assessment in concluding that the earlier mark had an average degree of distinctiveness.
Global assessment of the likelihood of confusion
77 The Board of Appeal found, in essence, that, in view of the identity or similarity of the services at issue, the visual and phonetic similarities between the signs at issue and the average degree of distinctiveness of the earlier mark, there was a likelihood of confusion for at least a non-negligible part of the relevant public in Italy, whose level of attention was 'not necessarily high'.
78 The applicant disputes that conclusion by the Board of Appeal. It submits, in essence, that there is no likelihood of confusion, in view of the differences between the signs at issue, in particular in so far as the word element 'swipe', which is common to those signs, is devoid of distinctive character or has a weak, or even very weak, distinctive character. The applicant also submits that to acknowledge the existence of a likelihood of confusion, in the present case, would amount to conferring on the intervener a monopoly on the use of the term 'swipe' for the services at issue.
79 EUIPO, supported by the intervener, disputes the applicant's arguments.
80 As noted in paragraph 51 above, the Board of Appeal did not make an error of assessment in finding that both the word element 'swipe', common to both signs, and the word element 'kinky' of the mark applied for had an average degree of distinctiveness. It then concluded, correctly, that the signs at issue were visually and phonetically similar to an average degree and that it was impossible to compare them conceptually (see paragraphs 65 and 70 above). In those circumstances, and taking into account the identity and/or average similarity of the services at issue and the average degree of distinctiveness of the earlier mark, the difference between the signs at issue, provided by the word element 'kinky' of the mark applied for, is not sufficient to rule out any risk that the relevant public displaying at least an average level of attention might be led to believe that the services at issue come from the same undertaking or from economically linked undertakings or that, as the intervener submits, the mark applied for is a sub-brand of the earlier mark.
81 That conclusion cannot be called into question by the applicant's reference to the judgment of 23 May 2019, Dentsply De Trey v EUIPO – IDS (AQUAPRINT), (T‑312/18, not published, EU:T:2019:358), in which it was found that there was no likelihood of confusion and which, according to the applicant, 'has similar elements to those from the case at stake'. The applicant does not put forward any argument as to why the conclusions drawn in that judgment are relevant to the present case. In any event, the circumstances of the case which gave rise to that judgment are different from those of the present case. Thus, the findings of the General Court in that judgment cannot be transposed to the present case.
82 Moreover, nor can the applicant validly claim that to recognise the existence of a likelihood of confusion would amount to conferring on the intervener a monopoly on the use of the word 'swipe' for the services at issue when, in the English language, that term is part of everyday language and has no figurative meaning.
83 First, the present decision cannot, in itself, result in a prohibition on the use of the word 'swipe', in particular in the marks used in the marketing of the services in question (see, by analogy, judgment of 16 May 2013 in Seba Diş Tįcaret ve Naklįyat v OHIM – von Eicken (ESTABLISHED 1932 SEBA TRADITION), T‑508/10, not published, EU:T:2013:249, paragraph 56).
84 Second, it should be borne in mind that Article 9(1) and (2) of Regulation 2017/1001 provides that an EU trade mark confers on its proprietor exclusive rights therein which entitle him or her to prevent all third parties from using in the course of trade, inter alia, any sign where, because of its identity with or similarity to the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign concerned, there exists a likelihood of confusion on the part of the public. Since the existence of a likelihood of confusion was established above, the alleged monopoly consists of nothing more than the legitimate exercise of those exclusive rights (see, by analogy, judgment of 1 July 2008, Apple Computer v OHIM – TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraphs 68 and 69).
85 It should also be pointed out that the applicant's arguments concerning an 'illegal monopoly of the use of the term “Swipe”' in the context of a possible lack of genuine use of the earlier mark, as referred to in paragraph 44 of the application, are not relevant, in particular in view of the fact that the Board of Appeal found that the earlier mark had been registered for less than five years prior to the filing of the mark applied for and that it was therefore not subject to the requirement of proof of genuine use in accordance with Article 47(2) and (3) of Regulation 2017/1001. There is no need to call into question that assessment by the Board of Appeal, which, moreover, has not been disputed by the applicant.
86 The applicant has therefore not put forward any argument capable of calling into question the Board of Appeal's assessment that there is a likelihood of confusion within the meaning of Article 8(1) of Regulation 2017/1001.
87 In the light of all the foregoing considerations, since the single plea in law relied on by the applicant in support of its claims cannot be accepted, the action must be dismissed in its entirety.
Costs
88 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.
89 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. However, 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 bear its own costs since no hearing was held.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Karneolis LTD to bear its own costs and to pay those incurred by Match Group, LLC;
3. Declares that the European Union Intellectual Property Office (EUIPO) shall bear its own costs.
Škvařilová-Pelzl | Nõmm | Steinfatt |
Delivered in open court in Luxembourg on 14 May 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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