Gerecht EU: relevant publiek zal 'supr' niet onmiddellijk associëren met 'super'

Gerecht EU 13 maart 2019, IEF 18301; IEFbe 2842, ECLI:EU:T:2019:160 (Wirecard Technologies tegen Striatum Ventures). De eisende partij Wirecard Technologies  is een grote, van oorsprong Duitse, multinational en houder van het woordmerk 'supr'. Verweerder is Striatum Ventures, een Nederlandse onderneming die net de startupfase is ontgroeid en houder van 'zupr'. Het Gerecht beslist in r.o. 49 dat het relevante publiek het merk 'supr' niet onmiddellijk zal associëren met het algemeen bekende woord 'super', terwijl beide woorden in alle relevante talen identiek worden uitgesproken. 

47. First of all, the applicant disputes that finding, submitting that the relevant German- and Dutch-speaking publics will pronounce the contested mark according to the rules of German, Dutch or English pronunciation and will immediately and without further thought consider that the common term ‘super’ must naturally be substituted for the term ‘supr’. Furthermore, it maintains that the likely pronunciation of the contested trade mark in English would therefore be ‘su-per’ [su :pǝ(r)] whereas, in German or Dutch, the contested trade mark will be pronounced as ‘su-per’ [‘zu :pɐ] and ‘süper’ [‘sypǝr] respectively. By contrast, it submits that the earlier mark will be pronounced by the German-speaking public as ‘tsu-p’, namely by pronouncing the first letter as [t:], whereas the Dutch-speaking public will pronounce it as ‘zü-pr’ [zy :pr]. It maintains that the letter ‘s’ in Dutch is always voiceless whereas the letter ‘z’ is voiced. Secondly, the applicant submits that the French-speaking Benelux public will pronounce the first syllable of the contested mark and of the earlier mark nearly identically as ‘zue’. However, it maintains that the pronunciation of the second syllable would be significantly different. The applicant submits that, on account of its allusion to the French word ‘super’, the French-speaking part of the relevant public will pronounce the second syllable of the contested trade mark as ‘per’, with the stress falling on the letter ‘e’, whereas it will pronounce the second syllable of the earlier mark as ‘pr’. Lastly, the applicant maintains that the term ‘zupr’ is a fanciful term which has no relation to the goods and services covered by the corresponding earlier trade mark. It submits that that term is therefore more capable of attracting the relevant public’s attention and that that increases the difference between the fanciful earlier trade mark and the contested trade mark.

48. In that regard, it must be stated that the applicant’s line of argument is based, in essence, on the premiss that the relevant public will naturally associate the contested mark with the English and French term ‘super’ and that, on account of that immediate and instinctive association, the contested mark must, according to the applicant, be regarded as consisting of two different syllables, namely ‘su’ and ‘per’. That association of the contested mark with the term ‘super’ also, in the applicant’s view, results in a difference in pronunciation, in particular in French, between the second syllable of the contested mark, which is pronounced as ‘per’ and within which the stress is placed on the ‘e’, and the second syllable of the earlier sign, which is pronounced as ‘pr’

49. In the first place, it must be pointed out that, as has been stated in paragraph 36 above, it has not been established that the relevant public will be led to associate, immediately and without further thought, the contested mark with the term ‘super’. That is particularly so because, by contrast with the case which gave rise to the judgment of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD) (T‑339/05, not published, EU:T:2007:172, paragraph 45), which is mentioned by the applicant, the two terms ‘supr’ and ‘super’ are not pronounced in the same way.

50. In the second place, as EUIPO points out, there is no reason to presume that the signs at issue consist of two syllables to the extent that the group of letters ‘pr’ would be pronounced independently and in a significantly different way. As EUIPO observes, the two signs at issue comprise only one syllable, which consists of a vowel sound, coming from the letter ‘u’, combined with the sound of the consonants which precede and follow that letter. Given that there is only one vowel, the two signs will be pronounced, in all the languages of the relevant public, as a single syllable, without any distinction between the first parts of the two signs, namely ‘zu’ and ‘su’ respectively, and the second parts, namely ‘pr’.

51. It follows that, contrary to what the applicant submits, the Board of Appeal was fully entitled to find, in paragraph 31 of the contested decision, that the relevant public would pronounce the word element ‘upr’ in both of the signs in the same way.

52. Moreover, as the Board of Appeal correctly points out, although the first letters in the signs at issue are pronounced differently, the pronunciation of the word element ‘upr’ is strictly identical and thus necessarily maintains a degree of similarity. Consequently, when undertaking an overall comparison of the signs at issue, it is necessary to take into account that there is some phonetic similarity between those signs, in view of the identical pronunciation to which a very large part of each of those signs, namely three of their four letters, gives rise.