JUDGMENT OF THE GENERAL COURT (Third Chamber)

28 March 2017 (*)

(EU trade mark — Invalidity proceedings — EU word mark REGENT UNIVERSITY — Earlier national figurative mark REGENT’S COLLEGE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)

In Case T‑538/15,

Regent University, established in Virginia Beach, Virginia (United States), represented by E. Himsworth QC and D. Wilkinson, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

defendant,

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

Regent’s College, established in London (United Kingdom), represented by S. Malynicz QC,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 July 2015 (Case R 1859/2014-2) relating to invalidity proceedings between Regent’s College and Regent University,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, I.S. Forrester (Rapporteur) and E. Perillo, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 17 September 2015,

having regard to the response of the intervener lodged at the Court Registry on 27 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 3 December 2015,

further to the hearing on 18 January 2017,

gives the following

Judgment

 Background to the dispute

1        On 10 November 2005 the applicant, Regent University, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the European Union trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2        The trade mark in respect of which registration was sought is the word sign REGENT UNIVERSITY.

3        The services in respect of which registration was sought are in Class 41 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, and correspond to the following description:

‘Educational services, namely, developing, arranging for and providing courses of instruction and training at the undergraduate and graduate levels; educational services, namely developing, arranging for and providing courses of instruction and training at the undergraduate and graduate levels via a global computer network.’

4        The EU trade mark application was published in Community Trade Marks Bulletin No 19/2006 of 8 May 2006 and the mark at issue was registered on 24 October 2006 under number 4711594.

5        On 2 May 2013 the intervener, Regent’s College, filed an application for a declaration of invalidity, under, in particular, Article 53(1)(a) of Regulation No 207/2009 read in conjunction, in particular, with Article 8(1)(b) of that regulation, against the mark at issue in respect of all the services referred to in paragraph 3 above.

6        The application for a declaration of invalidity was based, in particular, on the United Kingdom figurative mark, filed on 11 March 1993 and registered on 23 June 1995 under number 1532876, reproduced below:

Image not found

7        The earlier trade mark designates services in Class 41 corresponding to the following description: ‘College education, teaching and training services; arranging and conducting conferences, meetings and seminars; all included in Class 41’.

8        The earlier trade mark registration contains the following disclaimer: ‘Registration of this mark shall give no right to the exclusive use of the device of a book and the words “College London”’.

9        By decision of 30 May 2014, the Cancellation Division of EUIPO declared the registration of the contested mark invalid for all services covered by it on the ground that, because of the similarity of the signs and the identity of the services covered by the two marks at issue, there was a likelihood of confusion on the part of the relevant public.

10      On 18 July 2014 the applicant filed a notice of appeal with the Board of Appeal of EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

11      By decision of 6 July 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. It concluded, in essence, that there was a likelihood of confusion between the marks at issue on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009. More specifically, it held that:

–        the relevant public was that of the United Kingdom and consisted both of professionals, with a relatively high level of attention, and students, with a high level of attention;

–        the services covered by the marks at issue were identical;

–        the signs at issue were similar overall from a visual, phonetic and conceptual perspective;

–        the earlier mark possessed a normal degree of inherent distinctiveness.

12      Furthermore, the Board of Appeal deemed irrelevant the fact that there was no evidence of actual confusion between the marks at issue, given that, first, concurrent use of those marks on the relevant market had not been substantiated and, second, evidence of actual confusion between those marks was not necessary for the purposes of the application of Article 8(1)(b) of Regulation No 207/2009.

 Forms of order sought by the parties

13      The applicant claims that the Court should:

–        annul the contested decision;

–        remit the matter for further consideration by the Board of Appeal;

–        order EUIPO and the intervener to pay the costs, including the costs incurred before the Board of Appeal.

14      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

15      The intervener contends that the Court should:

–        uphold the contested decision;

–        order the applicant to pay the costs.

 Law

16      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation. In essence, the applicant takes issue with the Board of Appeal for making errors of assessment at the stage of the comparison of the signs at issue and the global assessment of the likelihood of confusion.

17      Under Article 53(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier trade mark within the meaning of Article 8(2) of that regulation and, inter alia, the conditions set out in Article 8(1)(b) of that regulation are fulfilled.

18      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an 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.

19      Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

20      According to settled case-law, the risk that the relevant 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. According to the same case-law, 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).

21      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).

22      The relevant factors mentioned in paragraph 20 above also include the distinctive character of the earlier trade mark, whether this derives from the inherent qualities of that mark or its reputation. However, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of the identity of the goods in question and of the similarity between the signs at issue (see judgment of 29 April 2015, Hostel Tourist World v OHIM — WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraph 67 and the case-law cited).

23      It is in the light of the abovementioned principles that the Court must examine the various complaints made by the applicant in the present plea.

 The relevant public

24      In paragraph 20 of the contested decision, the Board of Appeal considered that, as the earlier trade mark was registered in the United Kingdom, the relevant public was the public of that Member State. Moreover, in paragraphs 24 and 25 of the contested decision, unlike the Cancellation Division, it considered that that public was made up of professionals and students with a higher than average level of attention: either high or relatively high, as the case may be. Those considerations are not called into question and should be upheld.

 Comparison of the services

25      In paragraph 26 of the contested decision, the Board of Appeal found, like the Cancellation Division, that the services covered by the marks at issue were identical. That finding is not called into question and should be upheld.

 Comparison of the signs

26      The applicant disputes the Board of Appeal’s assessment of the visual, phonetic and conceptual aspects of its comparison of the signs at issue, inter alia as regards the elements which give rise to differences between the words ‘university’, ‘college’, ‘london’, ‘regent’ and ‘regent’s’, as well as, therefore, its assessment of the overall impression conveyed by those signs, which it classified, wrongly, as similar.

27      According to case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 21 January 2016, Rod Leichtmetallräder v OHIM — Rodi TR (ROD), T‑75/15, not published, EU:T:2016:26, paragraph 25 and the case-law cited).

28      In addition, 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. Account must also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must rely on his imperfect recollection of them (see judgments of 30 September 2015, Sequoia Capital Operations v OHIM — Sequoia Capital (SEQUOIA CAPITAL), T‑369/14, not published, EU:T:2015:733, point 36 and the case-law cited).

29      Furthermore, it is necessary to take into account the objective circumstances in which the goods or services covered by the marks at issue are marketed. The examination of the likelihood of confusion which the EUIPO authorities are called on to carry out is a prospective examination. Since the particular circumstances in which the goods or services covered by the marks are marketed may vary in time and according to the wishes of the proprietors of the trade marks, the prospective analysis of the likelihood of confusion between two marks, which pursues an aim that is in the public interest, that is, to ensure that the relevant public is not exposed to the risk of being misled as to the commercial origin of the goods or services in question, cannot be dependent on the commercial intentions, whether carried out or not — and which are naturally subjective — of the trade mark proprietors (judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 104).

30      In the present case, the marks at issue are, on the one hand, a word mark and, on the other, a composite figurative mark which also contains word elements.

31      In that regard, the 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, such a comparison must be made by examining the marks in question, each considered as a whole (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 22 and the case-law cited).

32      The overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components. However, 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 (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 23 and the case-law cited).

33      At the same time, an element of a composite sign does not retain an independent distinctive role if, together with the other element or elements of the sign, that element forms a unit having a different meaning as compared with the meaning of those components taken separately (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25 and the case-law cited).

34      Moreover, according to well-established case-law, in the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of other components. In addition and as an incidental point, account may be taken of the relative position of the various components within the arrangement of the composite mark (see judgment of 16 December 2015, Perfetti Van Melle Benelux v OHIM — Intercontinental Great Brands (TRIDENT PURE), T‑491/13, not published, EU:T:2015:979, paragraph 37 and the case-law cited).

35      It should also be noted that descriptive elements of a trade mark are not generally regarded by the relevant public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 16 December 2015, TRIDENT PURE, T‑491/13, not published, EU:T:2015:979, paragraph 38 and the case-law cited).

36      In the present case, the applicant complains that the Board of Appeal failed to consider each sign as a whole visually, phonetically and conceptually, in the specific circumstances of the present case, disregarding the case-law cited above.

37      More specifically, the observation that the distinctive and dominant element of the marks at issue is the element ‘regent’ or ‘regent’s’, without considering how the other elements may qualify or affect how the relevant public would perceive the marks, led to a misapplication of the case-law referred to.

38      In that regard, the applicant complains, in particular, that the Board of Appeal, in the first place, failed to take into account the meaning and importance of the respective words ‘university’ and ‘college’ that qualify the word ‘regent’ in the marks at issue. During the hearing, it illustrated that complaint by referring to marks such as Manchester United and Manchester City, which can be very clearly distinguished from one another despite the word element they share, or indeed Harry Potter, in which the characteristic element ‘potter’ precludes any likelihood of confusion with other marks also containing the element ‘harry’.

39      The Board of Appeal’s conclusion, in paragraph 31 of the contested decision, that the words ‘university’ and ‘college’ would ‘be associated with an institution where educational services will be provided, normally on a third level basis’, failed to take into account the evidence produced before it showing that the relevant public would regard those terms as both highly significant and conceptually distinct in the context of the services covered by the marks at issue. It failed to take into account the following elements:

–        the witness statement of the company secretary of the intervener, which shows the importance the intervener attached to acquiring ‘university’ status as opposed to ‘college’ status;

–        the intervener’s letter of 12 July 2012, stating that, in the United Kingdom, an institution must fulfil specific criteria in order to be granted university status and highlighting the distinction in the United Kingdom between a ‘college’ and a ‘university’;

–        the observations of the Patents County Court (England & Wales), sitting as an EU trade mark court, in proceedings for interim measures between the applicant and the intervener pursuant to Article 104 of Regulation No 207/2009, according to which the intervener recognised the ‘importance and prestige of the word University over alternatives such as College’;

–        the definition of the word ‘college’ in the Cambridge English Dictionary;

–        the finding of the Board of Appeal of EUIPO as to the significant conceptual difference between the types of educational establishments in Case R-228/2014-5.

40      In the second place, the applicant complains that the Board of Appeal failed to recognise, in paragraphs 53 to 55 of the contested decision, the significance and importance of the element ‘london’ within the earlier trade mark. As the Patents County Court referred to in paragraph 39 above recognised, that word was seen by the intervener as a highly advantageous ingredient of its name. It provides an important additional qualification to the words ‘regent’s college’.

41      In the third place, the applicant takes issue with the Board of Appeal for stating, incorrectly, in paragraph 36 of the contested decision, that ‘regent’s college’ is a college named in honour of the Prince Regent, later George IV. The evidence shows that the inclusion of the word ‘regent’s’ in the earlier mark was due to the location of the intervener’s campus being the Inner Circle of Regent’s Park in London. In the applicant’s view, therefore, the Board of Appeal should have found that the average consumer in the United Kingdom would recognise the term ‘regent’s’ in the earlier mark as referring to the well-known park in the city of London. Such a finding would be further supported by the apostrophe and the letter ‘s’ at the end of the word ‘regent’.

42      In any event, the word ‘london’ undoubtedly refers to a particular geographical location. According to the applicant, the inclusion of that word is decisive and should not have been disregarded by the Board of Appeal in its overall assessment of the similarity of the signs at issue, since the mark at issue contains no reference to a geographical location of any sort and its overall meaning is therefore different from that of the earlier mark.

43      In the fourth place, the applicant complains that the Board of Appeal placed too much emphasis, in paragraph 39 of the contested decision, on the ‘first’ element of the signs at issue. That led to the meaning and significance produced by combining the words ‘regent’ and ‘regent’s’ with the other words ‘university’, on the one hand, and ‘college’, on the other — which results in conceptually different marks — being disregarded.

44      In the fifth place, the applicant takes issue with the Board of Appeal for failing to make an explicit finding on the conceptual comparison of the signs at issue. In the applicant’s view, had the Board of Appeal approached the question from the correct perspective, it would have found that the conceptual differences between the marks at issue were such as to counteract the limited visual and phonetic similarities observed in the case, which were based on a single shared word.

45      Last, in the sixth place, the applicant complains that the Board of Appeal relied, in paragraph 34 of the contested decision, on the fact that the earlier trade mark had a disclaimer related, inter alia, to the terms ‘college london’. That cannot be relevant, in its view.

46      EUIPO and the intervener dispute all of those arguments.

47      For the reasons set out below, both the general complaint and the various particular complaints made by the applicant must be rejected, given that the Board of Appeal adopted a correct approach and correctly applied Article 8(1)(b) of Regulation No 207/2009.

48      As regards the general complaint set out in paragraph 36 above, it is based on an incorrect reading of the contested decision. In paragraph 21 of that decision, the Board of Appeal actually referred specifically to the need to perceive marks as a whole and cited the relevant case-law. Similarly, in paragraph 27 of the contested decision, the Board of Appeal stated that whether there is a likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the marks based on the overall impression given by the marks, bearing in mind their distinctive and dominant components. The issue was addressed again in paragraph 39 of the contested decision, in which the Board of Appeal stated that it was necessary to focus on the overall impression conveyed by the signs. Last, so far as concerns the assessment of the likelihood of confusion, the Board of Appeal considered, in paragraph 59 of the contested decision, that the signs at issue were ‘similar overall’.

49      Accordingly, the Board of Appeal did not conclude that the signs at issue were similar owing to a ‘salami slicing’ of their various elements, but concluded that they were similar on the basis of a global assessment that included the different stages of the examination required by the case-law referred to above in the course of which it took into account the relevant factors of the case. It thus correctly applied Article 8(1)(b) of Regulation No 207/2009.

50      As a first step of its global assessment of the similarity of the signs at issue, the Board of Appeal commenced by identifying, in paragraphs 29 to 42 of the contested decision, the distinctive and dominant elements of the signs, namely the element ‘regent’s’ in the earlier trade mark, and the virtually identical element ‘regent’ in the mark at issue. None of the findings it made in that context are vitiated by error.

51      It is appropriate to recall, in that respect, that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more readily refer to the goods or services in question by quoting the name rather than by describing the figurative element of the mark (see judgment of 21 January 2016, ROD, T‑75/15, not published, EU:T:2016:26, paragraph 38 and the case-law cited).

52      As regards the visual comparison, it should also be recalled that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 14 January 2016, The Cookware Company v OHIM — Fissler (VITA+VERDE), T‑535/14, not published, EU:T:2016:2, paragraph 37 and the case-law cited).

53      Concerning the earlier trade mark, the Board of Appeal inter alia found, rightly, in paragraph 29 of the contested decision, that the word element ‘london’ was smaller than the two other word elements ‘regent’s college’ and was placed at the bottom; in paragraph 31 of the contested decision, that the word ‘college’ was descriptive of the services designated by that mark and that the word ‘london’ was less distinctive, owing to its descriptive geographical meaning, whereas the word ‘regent’s’ had no specific meaning in relation to those services; in paragraph 35 of the contested decision, that the other figurative elements of the earlier trade mark, namely the lamp and book, were purely decorative in nature and thus less distinctive, and, in paragraph 39 of the contested decision, that consumers generally tend to focus on the first element of a word sign, since they read from left to right. It should be recalled, in that regard, that, according to settled case-law, as far as marks containing word elements are concerned, consumers generally pay greater attention to the beginning of a mark than to the end (judgments of 14 January 2016, VITA+VERDE, T‑535/14, not published, EU:T:2016:2, paragraph 61 and the case-law cited).

54      The Board of Appeal moreover rejected, correctly, in paragraph 36 of the contested decision, the applicant’s argument that the element ‘regent’s’ in the earlier trade mark was a geographical reference to Regent’s Park in London and therefore was purely descriptive in nature. In that regard, it noted, inter alia, that that element, together with the element ‘college’, referred either to the Prince Regent, future king George IV, or to the natural meaning of that word, rather than to any geographical indication. The presence of the additional element ‘london’ cannot call that assessment into question, on account of its considerably smaller size and the distance between it and the main two words.

55      Similarly, as regards the mark at issue, the Board of Appeal found, rightly, in paragraph 31 of the contested decision, that the word ‘university’ would be associated with an institution offering educational services and that it was therefore descriptive of the services covered by that mark.

56      As a second step in its global assessment of the similarity of the signs at issue, the Board of Appeal went on to carry out an analysis of that similarity visually (paragraphs 45 and 46 of the contested decision), phonetically (paragraphs 47 and 48 of the contested decision) and conceptually (paragraphs 49 to 55 of the contested decision). None of the findings it made in that context are vitiated by error.

57      Thus, from the visual perspective, after having duly identified the common and differing elements present in the signs at issue, in paragraph 45 of the contested decision, the Board of Appeal went on, in paragraph 46 of the decision, to find — rightly — that, given that it was the distinctive and dominant element of those signs, the common element ‘regent’ clearly outweighed the differentiating elements, without there being any need to attach importance to the ‘apostrophe s’ present in the earlier trade mark.

58      From the phonetic perspective, the Board of Appeal also found, rightly, in paragraphs 47 and 48 of the contested decision, that the pronunciation of the signs at issue was the same as a result of the fact that the syllables ‘re’ and ‘gent’ are present at the beginning of both signs and constitute their distinctive and dominant element. It therefore concluded — rightly — that the signs at issue were phonetically similar to a normal degree.

59      Last, from the conceptual perspective, as examined by the Board of Appeal in paragraphs 49 to 55 of the contested decision, it found — again rightly — that the distinctive and dominant word ‘regent’ may be understood either in a general sense, namely a person who rules or governs in the stead of another, whether a minor or legally incapacitated, or as a reference to the Prince Regent and future King George IV who, before acceding to the throne of the United Kingdom, ruled as regent during the illness of his father, King George III. In that regard, the applicant’s argument as summarised in paragraph 41 above disregards the small size of the word element ‘london’ in the earlier trade mark and the fact that it is descriptive of the geographical indication of the place where the services are provided.

60      So far as concerns the elements ‘college’, in the earlier trade mark and ‘university’, in the mark at issue, the Board of Appeal was right, in paragraph 52 of the contested decision, to reach the conclusion that they were also conceptually similar, even for a public with a high level of attention, given that they both refer to higher education. Thus, according to the Merriam-Webster dictionary, the word ‘university’ refers to ‘an institution of higher learning providing facilities for teaching and research and authorized to grant academic degrees’, specifically ‘one made up of an undergraduate division which confers bachelor’s degrees and a graduate division which comprises a graduate school and professional schools each of which may confer master’s degrees and doctorates’. According to that dictionary, the word ‘college’ refers, inter alia, to an independent institution of higher learning offering a course of general studies leading to a bachelor’s degree, and a university division offering such a course.

61      That similarity also allows the marks at issue in the present case to be distinguished from those relied on by the applicant at the hearing (see paragraph 38 above),the relevance of which is therefore not established. In any event, the fact that there is no likelihood of confusion between two word marks despite the presence of a common element, which is the case, in the applicant’s view, with the marks Manchester United and Manchester City, or indeed the mark Harry Potter as compared to any other mark incorporating the word ‘harry’, is not in itself sufficient to establish that such a risk might not exist for other word marks also containing a common element.

62      Furthermore, the Board of Appeal was right to find, in paragraphs 31 and 32 of the contested decision, that those words were descriptive of the identical services covered by the marks at issue and that, consequently, a subtle difference in meaning could not be particularly important.

63      In any event, the Board of Appeal did consider that there was a slight difference in meaning between the two words at issue, in paragraph 52 of the contested decision, and indicated that it had taken that difference into account, while concluding that both words had a common purpose and could be linked, in so far as it is not uncommon for a university to have various colleges. In that regard, it must be borne in mind that certain English universities are organised into ‘colleges’, like the two oldest, Oxford and Cambridge, or University College London. Reference can also be made to the famous King’s College London, which forms part of the University of London.

64      With regard to the applicant’s reference to certain statements or correspondences originating from the intervener reflecting the importance accorded by it to the grant of ‘university’ status as opposed to ‘college’ status, it appears irrelevant since, for the purposes of the assessment of the likelihood of confusion, it is the perception of the relevant public that matters and not the subjective assessment of the trade mark proprietor or the commercial goals the proprietor pursues.

65      As regards the reference made by the applicant to certain observations made by the Patents County Court, the intervener notes, rightly, that they did not relate to the application of Article 8(1)(b) of Regulation No 207/2009 and concerned different trade marks. In any event, the legality of the decisions of Boards of Appeal 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 national decisions (see judgment of 19 October 2006, Bitburger Brauerei v OHIM — Anheuser-BuschAmerican Bud and Anheuser Busch Bud (BUD, American Bud and Anheuser Busch Bud), T‑350/04 to T‑352/04, EU:T:2006:330, paragraph 115 and the case-law cited).

66      So far as concerns the reference made by the applicant to a decision of the Board of Appeal in Case R 228/2014-5, it must be recalled that, in accordance with settled case-law, the decisions which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, 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 of those boards. While EUIPO is required to take into account decisions previously taken on similar applications in accordance with the principles of equal treatment and sound administration, and to take particular care in considering whether to decide the issue before it in the same way, those principles must nevertheless be applied in a manner consistent with observance of legality (see judgment of 21 January 2016, ROD, T‑75/15, not published, EU:T:2016:26, paragraph 65 and the case-law cited).

67      In the present case, the Board of Appeal acted in accordance with those case-law principles, as is apparent from paragraph 13 of the contested decision.

68      In any event, in Case R 228/2014-5 cited by the applicant, the Board of Appeal of EUIPO arrived at the conclusion that the signs at issue in that case, namely OXFORD UNIVERSITY and OXFORD LEADERSHIP ACADEMY, were conceptually similar.

69      In paragraph 53 of the contested decision, the Board of Appeal took account of the applicant’s argument that the element ‘london’ was not present in the mark at issue, but it noted that that difference was of rather low importance in the overall impression conveyed by the mark. In paragraph 55 of that decision, it maintained, rightly, its conclusion that the element ‘london’ is of little importance and lacks distinctiveness.

70      In conclusion, in the light of all the relevant factors of the case, the global assessment confirms the Board of Appeal’s conclusion that the signs at issue are similar.

 The likelihood of confusion

71      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 lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 21 January 2016, ROD, T‑75/15, not published, EU:T:2016:26, paragraph 59 and the case-law cited).

72      In the present case, since the services designated by the marks at issue are identical, the differences between the marks must be considerable in order to rule out a likelihood of confusion. As explained above, however, the marks at issue have at least an average degree of similarity.

73      Moreover, in paragraph 56 and 57 of the contested decision, the Board of Appeal duly took account of the fact that the earlier trade mark had at least a normal degree of distinctiveness.

74      The applicant nevertheless disputes the overall assessment of the likelihood of confusion carried out by the Board of Appeal. In that context, it criticises the Board of Appeal more specifically, in the first place, for not taking sufficient account of the high level of attention demonstrated by the relevant public. In its view, that high level of attention would result in UK consumers:

–        seeing the marks at issue as a whole, including identifying one as a word mark and the other as a complex figurative mark;

–        clearly identifying the visual, phonetic and conceptual differences between the marks at issue and, in particular, noting that one of them contains the word ‘university’ and the other the words ‘college’ and ‘london’ within a figurative device;

–        appreciating that the respective words ‘university’ and ‘college london’ qualify the words ‘regent’ and ‘regent’s’ such as to produce significantly different composite terms in each of the marks at issue.

75      In the second place, the applicant criticises the Board of Appeal for not taking into account, first, the evidence of coextensive use of the two marks at issue, which it dismissed, wrongly, and, second, the lack of evidence of actual confusion between the marks at issue on the part of the relevant public.

76      EUIPO and the intervener dispute those arguments.

77      In that regard and in relation, first, to the level of attention of the relevant public, it should be noted that, contrary to the Cancellation Division, which found that the relevant public fell into the category of the general public, the Board of Appeal considered, in paragraphs 24 and 25 of the contested decision, that the marks at issue were aimed at a specialised public, demonstrating a high level of attention and thus less likely to be exposed to a likelihood of confusion.

78      The Board of Appeal, moreover, duly took into account that element in its assessment of the overall likelihood of confusion, in paragraph 60 of the contested decision, but it concluded, rightly, that it was not decisive in view of other relevant factors, namely the identity of the services, the similarity of the signs, the principle of interdependence and the normal degree of distinctiveness of the earlier trade mark.

79      With regard, in the second place, to the alleged lack of evidence of actual confusion between the marks at issue on the relevant market, the Board of Appeal was right to find, in paragraph 63 of the contested decision, first, that the applicant had not provided sufficient evidence of concurrent use of the marks at issue in the relevant territory and, second, that under Article 8(1)(b) of Regulation No 207/2009 it is necessary to establish the existence of a likelihood of confusion, not the existence of actual confusion (judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 69). In the present case, the likelihood of confusion between the marks at issue is established and that is sufficient for the purposes of the application of that provision.

80      In conclusion, in the light of all the relevant factors of the case, the global assessment confirms the Board of Appeal’s conclusion that there is a likelihood of confusion between the marks at issue on the part of the relevant public.

81      As that assessment was made without any regard to the disclaimer made when the earlier trade mark was registered (see paragraph 8 above), the applicant’s argument as summarised in paragraph 45 above must be rejected as ineffective.

82      Having regard to all the foregoing considerations, the single plea in law put forward by the applicant must be rejected and, accordingly, the action must be dismissed in its entirety.

 Costs

83      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.

84      Since the applicant has been unsuccessful, it must be ordered to pay the costs, as applied for in the other parties’ pleadings.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action.

2.      Orders the Regent University to pay the costs.


Frimodt NielsenForresterPerillo

Delivered in open court in Luxembourg on 28 March 2017.


E. Coulon

 

       I. Pelikánová

Registrar

 

      President


* Language of the case: English.