8 May 2024 (*)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark gamindo – Earlier EU word mark gamigo – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 – Article 41(2)(c) of the Charter of Fundamental Rights)

In Case T‑91/23,

Ofree Srl,

established in Treviso (Italy), represented by L. Sergi, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by M. Capostagno and T. Klee, acting as Agents,

defendant,

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

gamigo AG,

established in Hamburg (Germany), represented by P. Lange, lawyer,

THE GENERAL COURT (Sixth Chamber),

composed of M.J. Costeira, President, U. Öberg and E. Tichy-Fisslberger (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

By its action under Article 263 TFEU, the applicant, Ofree Srl, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 January 2023 (Case R 632/2022-2) (‘the contested decision’).

Background to the dispute

On 9 August 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:

The mark applied for covers goods and services in Classes 9, 35 and 36 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 9: ‘Software; computer gaming software; computer game software, downloadable; electronic game software for mobile phones; electronic game software for wireless devices; electronic game software for handheld electronic devices; downloadable software applications; downloadable application software for smart phones; downloadable applications for use with mobile devices’;

–Class 35: ‘Promotional marketing; internet marketing; marketing; publicity services; publicity and sales promotion services; provision of advertising space on electronic media; business consultancy services relating to the promotion of fund raising campaigns; business consultancy services relating to management of fund raising campaigns’;

–Class 36: ‘Charitable fund raising; arranging charitable collections (for others); arranging charitable fundraising activities; electronic funds transfer’.

On 20 November 2019, the intervener, gamigo AG, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

The opposition was based on the earlier EU word mark gamigo, which covers, inter alia, services in Class 41 corresponding to, inter alia, the following description: ‘Internet provider services relating to the providing and offering of games, including computer games’.

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).

Following a request made by the applicant, EUIPO invited the intervener to furnish proof of genuine use of the earlier mark that had been relied on in support of the opposition. The intervener complied with that request within the time limit set.

On 21 February 2022, the Opposition Division partially upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 in respect of all the goods in Class 9 covered by the mark applied for, on the ground that there was a likelihood of confusion. It rejected the opposition in respect of the services covered by the mark applied for.

On 14 April 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it had upheld the opposition.

By the contested decision, the Board of Appeal dismissed the appeal. In particular, it found, in essence, first of all, that the goods and services concerned were at least similar to a low degree and were aimed at the general public in the European Union with an average level of attention. It focussed on the Italian-speaking public. Next, it observed that, for that part of the relevant public, first, the signs at issue were visually and phonetically similar to an average degree and, secondly, a conceptual comparison of those signs was not possible. Lastly, in the light of those findings and also of the finding that the distinctiveness of the earlier mark was normal, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

Forms of order sought

The applicant claims that the Court should:

–annul the contested decision;

–order EUIPO and the intervener to pay the costs incurred in the present proceedings and in the proceedings before the Board of Appeal.

EUIPO contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs in the event that a hearing is convened.

The intervener contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs of the proceedings, including the intervener’s costs.

Law

The applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 94(1) of Regulation 2017/1001, Article 41(2)(c) of the Charter of Fundamental Rights of the European Union and the second paragraph of Article 296 TFEU.

The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

The applicant disputes, in essence, the Board of Appeal’s findings regarding, first, the relevant public, secondly, the comparison of the goods and services concerned, thirdly, the comparison of the signs at issue and, fourthly, the global assessment of the likelihood of confusion.

EUIPO and the intervener dispute the applicant’s arguments. They support the Board of Appeal’s findings in the contested decision regarding those matters.

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 trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

The relevant public

In the present case, the Board of Appeal found, in paragraphs 22 and 26 of the contested decision, that, first, in the light of the fact that the earlier mark was an EU trade mark, the relevant territory with regard to the assessment of the likelihood of confusion was that of the European Union and, secondly, the relevant public consisted of the general public. Like the Opposition Division, it also found, in paragraph 24 of the contested decision, that the assessment of the likelihood of confusion should be based on the perception of the Italian-speaking public.

Those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

Furthermore, the Board of Appeal concluded, in paragraph 26 of the contested decision, that the relevant public’s level of attention was average.

The applicant disputes that finding. It submits that the Board of Appeal should have found that the general public displays a particularly high level of attention since the goods and services concerned are technological in nature. The applicant argues that the average consumer wishes and needs those goods or services to be compatible with existing components or devices. In addition, it contends that the Court confirmed in its judgment of 8 September 2011, MIP Metro v OHIM – Metronia (METRONIA) (T‑525/09, not published, EU:T:2011:437, paragraph 47), that gaming services are relatively expensive, with the result that they are acquired after reflection and after comparing various offers.

EUIPO and the intervener dispute the applicant’s arguments.

As regards the definition of the relevant public’s level of attention, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the goods or services in question, who is deemed to be 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 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).

As regards the average consumer’s level of attention with regard to the goods and services concerned, contrary to what the applicant claims, the Court holds that, although the purchase price of some goods and services in Classes 9 and 41 may be relatively high and those goods and services may be subject to a period of use spanning several years, the majority of them are electronic goods and services aimed at the general public, which, nowadays, are used on a daily basis by the end consumer, are relatively inexpensive, have a relatively short lifespan and do not require any particular technical knowledge (see, to that effect and by analogy, judgment of 5 December 2017, Xiaomi v EUIPO – Apple (MI PAD), T‑893/16, not published, EU:T:2017:868, paragraph 25). For that reason, the present case differs from the case relied on by the applicant which gave rise to the judgment of 8 September 2011, METRONIA (T‑525/09, not published, EU:T:2011:437).

It is true that the average consumer’s level of attention varies from average to high, depending on the complexity and the price of the goods and services concerned. However, it is apparent from the case-law that, as regards the assessment of the likelihood of confusion, the public with the lowest level of attention must be taken into consideration (see, to that effect, judgments of 23 October 2017, Tetra Pharm (1997) v EUIPO – Sebapharma (SeboCalm), T‑441/16, not published, EU:T:2017:747, paragraph 32 and the case-law cited, and of 10 October 2019, Kalypso Media Group v EUIPO – Wizards of the Coast (DUNGEONS), T‑700/18, not published, EU:T:2019:739, paragraph 34 and the case-law cited).

Consequently, the Board of Appeal was right in finding that the level of attention of the relevant public is average.

The comparison of the goods and services

In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or 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 goods or services concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

The applicant claims that the Board of Appeal contradicted itself, because it initially found that the goods and services concerned were in part at least similar to a low degree and partially dissimilar and subsequently concluded that those goods and services were at least similar to a low degree. It also submits that the Board of Appeal does not in the contested decision specify the goods and services concerned which are to be considered to be, first, at least similar to a low degree and, secondly, partially dissimilar.

EUIPO and the intervener dispute the applicant’s arguments.

In the present case, to begin with, the Board of Appeal, first, defined in paragraph 13 of the contested decision the scope of the proceedings as concerning only the goods in Class 9 covered by the mark applied for, and, secondly, stated in paragraph 14 of the contested decision that genuine use had been proved only in respect of some of the services in Class 41 covered by the earlier mark, namely ‘internet provider services relating to the providing and offering of games, including computer games’.

Next, in paragraph 20 of the contested decision, the Board of Appeal upheld the Opposition Division’s findings. The Opposition Division had found, first, that the goods in Class 9 covered by the mark applied for were at least similar to a low degree to the services in Class 41 covered by the earlier mark because computer games were often distributed to consumers on online platforms which could be accessed through software applications on tablets or computers. Consequently, there was, according to the Opposition Division, a complementary relationship between the goods and services concerned. Secondly, it found that the services in Classes 35 and 36 covered by the mark applied for were dissimilar to the services in Class 41 covered by the earlier mark.

In so far as the applicant claims that the Board of Appeal contradicted itself as regards the comparison of the goods and services concerned, it must be stated, as observed by EUIPO and the intervener, that the applicant is misreading the contested decision.