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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Schmidt Spiele v EUIPO - de Gea Quintana (DDG) (EU trade mark - Judgment) [2025] EUECJ T-53/24 (07 May 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T5324.html Cite as: ECLI:EU:T:2025:442, [2025] EUECJ T-53/24, EU:T:2025:442 |
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JUDGMENT OF THE GENERAL COURT (Second Chamber)
7 May 2025 (*)
( EU trade mark - Opposition proceedings - Application for EU figurative mark DDG - International registration of the earlier figurative mark DOG - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑53/24,
Schmidt Spiele GmbH, established in Berlin (Germany), represented by T. Urek, lawyer,
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 being
David de Gea Quintana, residing in Hale Barns (United Kingdom),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and V. Tomljenović, 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, Schmidt Spiele GmbH, seeks the annulment and, in essence, the alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 December 2023 (Case R 1039/2023-2) ('the contested decision').
Background to the dispute
2 On 28 September 2021, Mr de Gea Quintana filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered, inter alia, goods in Class 28 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 to the following description: 'Games and playthings; Video game apparatus; Gymnastic and sporting articles; Decorations for Christmas trees'.
4 On 20 October 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the earlier international registration designating the European Union in respect of the following figurative mark:
6 The earlier mark covered, inter alia, goods in Class 28 corresponding to the following description: 'Games (including electronic and video games), other than those adapted for use with an external display screen or monitor; playing cards; board games; party games; all the above except toys for animals'.
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 April 2023, the Opposition Division rejected the opposition.
9 On 16 May 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was no likelihood of confusion. It found that, in the sign applied for, the vast majority of the relevant public, namely the general public in the European Union, would see the sequence of letters 'd', 'd' and 'g' and that a smaller part of that public would perceive a purely graphic representation or a graphic design around the letter 'g'. In addition, it found, in essence, that it was unlikely that a non-negligible part of the relevant public would recognise the sequence of letters 'd', 'o' and 'g' or the word 'dog' in the sign applied for. Furthermore, it noted that the graphic design of that sign was not purely decorative.
11 As regards the earlier sign, the Board of Appeal noted that it was not disputed that that sign contained the sequence of letters 'd', 'o' and 'g' and that its graphic design had a purely decorative function. According to the Board of Appeal, the word element 'dog' was dominant in that sign.
12 On the basis of that analysis of the signs at issue, the Board of Appeal found that they were visually and phonetically similar only to a very low degree, that they were impossible to compare conceptually and that, even if it assumed that all the goods at issue were identical and despite the average level of attention of the relevant public, they differed sufficiently for there to be no likelihood of confusion.
Forms of order sought
13 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– alter the contested decision by annulling the decision of the Opposition Division of 12 April 2023;
– order EUIPO to pay the costs, including those incurred before EUIPO.
14 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
15 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that the Board of Appeal erred in finding that there was no likelihood of confusion.
16 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 The risk that the public may believe that the goods 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 the goods 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 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).
18 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).
19 It is in the light of those principles that the contested decision must be examined.
The relevant public
20 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
21 In the present case, the Board of Appeal validated the Opposition Division's approach in so far as the latter had found that the relevant public consisted of the general public and that the level of attention of that public was average. In addition, the Board of Appeal found that the relevant public was that of the European Union.
22 The applicant submits that the Board of Appeal should have found there to be a lower level of attention on the part of consumers, since games and toys, such as board games and card games, are inexpensive and purchased on a daily basis.
23 As regards the level of attention of the average consumer of the goods at issue, which belong to the category of games and toys, the Opposition Division found that they were not inexpensive goods purchased on a daily basis and that the mere fact that the relevant public could make an impulse purchase of some of those goods did not mean that its level of attention was lower than average.
24 It must be borne in mind that the Court has already held that games and toys are everyday consumer goods, but that they are not exclusively low-priced mass consumer items and that the level of attention of the general public with regard to those goods was therefore average (see, to that effect, judgment of 22 January 2015, Novomatic v OHIM – Simba Toys (AFRICAN SIMBA), T‑172/13, not published, EU:T:2015:40, paragraph 161 and the case-law cited). It must be held that the goods at issue fall within the category of games and toys and that, accordingly, the Board of Appeal was right to find that there was an average level of attention.
The comparison of the goods
25 In the contested decision, the Board of Appeal noted that some of the goods covered by the mark applied for were identical to some of the goods covered by the earlier mark. As regards the remainder of the goods at issue, the Board of Appeal decided, like the Opposition Division, to presume that they were identical, thus making the assumption most favourable to the applicant.
26 Given that that approach has not been disputed by the applicant, there is no reason to call into question the Board of Appeal's assessment based on the identity of the goods at issue.
The comparison of the signs
Perception of the sign applied for by the relevant public
27 The applicant disputes the Board of Appeal's analysis of how the relevant public would perceive the sign applied for. It criticises the Board of Appeal for not having placed itself in the position of a consumer in a purchasing situation, who, in its view, will see that sign as it is, without further analysis, and not by analysing in detail the graphic representation of each letter of that sign, as the Board of Appeal incorrectly did. The Board of Appeal erred in finding that, if the sign applied for were to be understood as a sequence of letters, the relevant public would assume that the first two letters are the same. The Board of Appeal also erred in finding that it was unlikely that the second letter would be perceived as the letter 'o' instead of the letter 'd'.
28 It must be held that the sign applied for may be regarded either as (i) a purely graphic representation, in which it is not possible to distinguish any letter, (ii) a sequence of three letters, or (iii) a graphic design around the letter 'g'. As the Board of Appeal correctly noted, the most clearly apparent element is the letter 'g' at the end of the sign. The Board of Appeal was also right to find that, in view of the presence of the letter 'g', the first two characters would be likely to be perceived as letters and that they would both be perceived as the letter 'd'. The second letter does not have a symmetrical form which could suggest the letter 'o'. On the contrary, it has a rounded shape on its right-hand side but not on its left-hand side. This is also the case for the first letter, which is very similar to the second, and will therefore be perceived as the same letter as the second.
29 The applicant's arguments that the first two letters of the sign applied for are not necessarily identical and that the second letter may just as well be perceived by the relevant public as the letter 'o' cannot call into question the analysis of that sign in the contested decision. Even if no analysis of the way in which the relevant public perceives a sign can claim to be exhaustive, it is for the applicant to demonstrate that the analysis carried out by the Board of Appeal is incorrect in respect of a non-negligible part of that public (see, to that effect, judgments of 5 May 2021, Capella v EUIPO – Cobi.bike (GOBI), T‑286/20, not published, EU:T:2021:239, paragraphs 37 and 38 and the case-law cited, and of 1 September 2021, Sony Interactive Entertainment Europe v EUIPO – Wong (GT RACING), T‑463/20, not published, EU:T:2021:530, paragraph 70 and the case-law cited). In the present case, there is nothing in the file to support the view that a non-negligible part of the relevant public will perceive the sign applied for as the applicant submits, and the applicant provides no evidence in support of its claims.
30 It follows from the foregoing considerations that the Board of Appeal was correct in finding that, in the sign applied for, the vast majority of the relevant public would perceive the sequence of letters 'd', 'd' and 'g' and that a smaller part of the public would perceive a purely graphic representation or a graphic design around the letter 'g'.
The distinctive and dominant elements of the signs at issue
31 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
32 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
33 In the first place, the Board of Appeal found that the word element 'ddg' of the sign applied for had no immediately understandable meaning for the relevant public. Consequently, according to the Board of Appeal, that element was distinctive. Furthermore, it found that the graphic design of the sign applied for is not purely decorative and cannot be overlooked in the overall impression created by that sign.
34 In the second place, as regards the earlier sign, the Board of Appeal found that it was not disputed that that sign contained the sequence of letters 'd', 'o' and 'g' and that its graphic design had a purely decorative function. It noted that the word 'dog' was a basic English term designating a pet animal. The Board of Appeal focused its reasoning on the part of the relevant public which would attach no meaning to the sequence of letters 'd', 'o' and 'g', that assumption being, in its view, the most favourable to the applicant's claim of a likelihood of confusion. According to the Board of Appeal, if that sequence of letters had a clear meaning, that meaning might neutralise a visual and phonetic similarity between the signs at issue. Lastly, it found that the word element 'dog' has distinctive character and is dominant in the earlier sign.
35 It should be noted that the applicant's challenge to the Board of Appeal's assessment of the relevant public's perception of the sign applied for was rejected in paragraph 30 above and that the findings relating to the distinctive and dominant elements of the signs at issue referred to in paragraphs 33 and 34 above are not disputed. Moreover, there is no evidence in the file capable of calling those findings into question.
Visual, phonetic and conceptual comparison of the signs at issue
36 In the present case, as regards, in the first place, the visual comparison, the Board of Appeal relied on its analysis of the sign applied for as consisting of the sequence of letters 'd', 'd' and 'g' (see paragraphs 10 to 12 above) to find that the signs at issue differed in their central letters, namely the letters 'd' and 'o'. According to the Board of Appeal, that difference was all the more significant since, according to the case-law, in the case of short terms, even minor differences in the overall impression may be more noticeable. In any event, due to the striking stylisation of the letters, the sign applied for creates an overall impression which is considerably different from that created by the earlier sign. Consequently, it found that there is only a very low visual similarity between the signs at issue, particularly as regards the part of the relevant public which does not perceive any letters or only the letter 'g' in the sign applied for.
37 As regards, in the second place, the phonetic comparison of the signs at issue, the Board of Appeal found that, as regards the earlier sign, the relevant public would pronounce the word 'dog', whether it be the part of that public attributing a meaning to it or the part which would not attribute any meaning to it. It found that, at most, a negligible part of the relevant public would pronounce the letters 'd', 'o' and 'g' not as a single word, but as a sequence of individual letters. It then compared the pronunciation of the word 'dog' with that of the letters 'd', 'd' and 'g' and found that the phonetic similarity of the signs at issue was very low, or even non-existent for the part of the relevant public that would not perceive any letters in the sign applied for.
38 As regards, in the third place, the conceptual comparison of the signs at issue, the Board of Appeal found, in essence, that it was impossible to compare conceptually the sequence of letters 'd', 'd' and 'g' in the sign applied for, which had no meaning, with the word 'dog' of the earlier sign.
39 First of all, it should be noted that the applicant compares the signs at issue by referring only to the perception of part of the relevant public who will perceive those signs as the sequence of letters 'd', 'o' and 'g'.
40 As set out in paragraphs 28 to 30 above, the applicant has not established that the Board of Appeal made an error of assessment in finding, in essence, that it was unlikely that a non-negligible part of the public would perceive the sequence of letters 'd', 'o' and 'g' or the word 'dog' in the sign applied for.
41 Consequently, the applicant's arguments concerning the visual, phonetic and conceptual comparison of the signs at issue must be rejected. Moreover, there is nothing in the file to invalidate the Board of Appeal's findings that the visual and phonetic similarity between those signs is very low and that, in the scenario most favourable to the applicant, in which the word 'dog' is not understood by the relevant public, a conceptual comparison of the signs is not possible.
The distinctiveness of the earlier mark
42 In the contested decision, the Board of Appeal found, in essence, that the distinctiveness of the earlier mark was average.
43 There is nothing in the file to support the claim that the earlier mark has a weak or a high degree of distinctiveness. Moreover, the applicant does not dispute the contested decision in that regard.
The global assessment of the likelihood of confusion
44 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
45 In its global assessment of the likelihood of confusion, the Board of Appeal took into account the average distinctiveness of the earlier mark, the average level of attention of the relevant public and its analysis of the signs at issue. Accordingly, in the light of the very low degree of visual and phonetic similarity of the signs at issue, the impossibility of comparing them conceptually and the average degree of distinctiveness of the earlier sign, it found that, despite the presumed identity of the goods at issue, the degree of similarity between those signs was too low to establish the existence of a likelihood of confusion.
46 In that regard, it should be borne in mind that the applicant disputed the assessment of the likelihood of confusion in the contested decision solely on the basis of the assumption that part of the relevant public would perceive the sign applied for as the sequence of letters 'd', 'o' and 'g' or the word 'dog'. As is apparent from paragraphs 28 to 30 above, the Board of Appeal correctly ruled out that possibility in its analysis of the likelihood of confusion. Accordingly, the applicant's arguments are not such as to call into question the assessments of the Board of Appeal concerning the assessment of the existence of a likelihood of confusion as set out in paragraph 45 above.
47 In the light of all of the foregoing considerations, the single plea in law must be rejected and, consequently, the applicant's action must be dismissed.
Costs
48 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.
49 In the present case, although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Marcoulli | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 7 May 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.
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