The date of application of the contested mark is decisive for the purpose of identifying the applicable substantive law; in contrast, procedural rules are generally held to apply on the date on which they enter into force
Signs composed of two word elements without a space, where each word starts with a capital letter, are considered to consist of a single word
Descriptive elements have an impact on the degree of similarity of the signs when assessing the visual, phonetic and conceptual similarity
Background
The applicant, US company VersionTech Inc, was the registered owner of the EU word mark VERSIONTECH, for goods in Classes 9 and 11, particularly relating to communication devices, such as smartphones, and other technical measuring instruments.
On 10 September 2021 US company Verizon Trademark Services LLC filed an application under Articles 53(1)(a) and 8(1)(b) of Regulation 207/2009, now Articles 60 (1)(a) and 8(1)(b) of Regulation 2017/1001, for a declaration of invalidity of the trademark VERSIONTECH based on the earlier EU word mark VERIZON, registered for identical goods, arguing that there was a likelihood of confusion.
On 14 December 2022 the EUIPO’s Cancellation Division rejected the application, finding that the similarities between the signs were not sufficient to create a likelihood of confusion. Following an appeal on 5 January 2023, the EUIPO’s Board of Appeal partially annulled the decision, finding that the respective signs were similar both visually and phonetically; therefore, there was a likelihood of confusion.
Raising a plea alleging infringement of Article 8(1)(b), the applicant then filed an action with the General Court, seeking the annulment and the alteration of the board’s decision under Article 72(3).
Decision
The General Court first pointed out that, with regard to the applicable substantive law, the Board of Appeal had wrongly applied Regulation 2017/1001: in view of the application date of the contested mark, the previous regulation – Regulation 207/2009 – was to be applied (see Alcon v OHIM (Case C-192/03)). In contrast, since procedural provisions apply on the date on which they enter into force, the case was governed by the procedural provisions of Regulation 2017/1001 (see Commission v Spain (Case C-610/10)).
Considering that the word elements of the contested mark have a meaning in the German language, the parties did not dispute the board’s decision to focus on the understanding of the German consumers. Further, the court upheld the finding of identity and similarity of the respective goods in Class 9.
In considering the similarity of the signs, the court referred to the general principle that the likelihood of confusion must be assessed based on the overall impression of the signs, and based on a visual, phonetical and conceptual comparison.
With regard to the contested mark, the court also upheld the finding that the words ‘version’ and ‘tech’ would be understood as referring to “a specific version of the goods” and to “technology”. At the same time, the court emphasised the following:
1. Even descriptive terms need to be considered when assessing the overall impression of signs.
2. While the term ‘tech’ was purely descriptive, the term ‘version’ was only of very limited distinctiveness.
3. The contested mark must be seen as one word with no separation, despite the capitalised letters ‘V’ and ‘T’ (see Stada Arzneimittel v EUIPO (Case T-396/23)).
4. The relevant public would not focus on the term ‘version’ alone just because it is positioned at the beginning of the sign.
Examining the visual similarity, and contrary to the Board of Appeal, the General Court held that, considering the respective signs as a whole, there was only a low degree of similarity.
As the contested mark consisted of 11 letters and the earlier mark of seven letters, with only five letters being identical and not sharing the same position, the court held the board was wrong in merely focusing on the similarity of the terms ‘version’ and ‘Verizon’ and finding an average degree of similarity.
Phonetically, the Board of Appeal had found that the term ‘version’ would be pronounced as ‘verzion’ (and would thus be very similar to ‘Verizon’), that both signs coincided at the beginning and end, and that both were stressed on the last syllable in the German language. This finding was also held to be wrong by the court, which held that the three syllables “ver-sion-tech” and “ve-ri-zon” showed considerable differences, resulting in a low degree of similarity.
Conceptually, the Board of Appeal had found that no comparison could be made since the earlier sign did not have any meaning in relation to the relevant goods. Again the court disagreed, pointing out that, where one of the signs does hold a meaning, as was the case for the contested mark, it must be held that the respective signs are conceptually different.
Against this background, the court concluded that, even when considering the identity of the goods, the respective signs showed sufficient differences, including in their length, structure, rhythm and intonation, to preclude any likelihood of confusion.
As a result, the court rejected the action and annulled the board’s decision inasmuch as it had annulled the decision of the Cancellation Division and declared that the mark was invalid.
