JUDGMENT OF THE GENERAL COURT (Second Chamber)
7 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark Sanity Group – Earlier EU figurative mark SANYTOL – Relative ground for refusal – Detriment to reputation – Article 8(5) of Regulation (EU) 2017/1001)
In Case T‑541/22,
Sanity Group GmbH, established in Berlin (Germany), represented by B. Koch and V. Wolf, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
AC Marca Brands, SL, established in Barcelona (Spain), represented by D. Pellisé Urquiza and J.C. Quero Navarro, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and R. Norkus, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 23 March 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Sanity Group GmbH, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 June 2022 (Case R 2107/2021-1) (‘the contested decision’).
Background to the dispute
2 On 20 August 2019, the applicant 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 goods and services in Classes 3, 5, 35, 42 and 44 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, in essence, to goods and services concerning the field of protection and maintenance of humans, animals, or plants health.
4 On 10 January 2020, the intervener, AC Marca Brands, SL, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services covered by the application referred to in paragraph 2 above.
5 The opposition was based on, inter alia, the earlier EU figurative mark reproduced below, registered on 24 July 2008 under number 6383161 and renewed until 22 October 2027, for goods concerning the field of disinfection and hygiene, included in Classes 3 and 5:
6 The ground relied on in support of the opposition was, inter alia, that set out in Article 8(5) 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).
7 On 15 October 2021, the Opposition Division partially upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001. However, it rejected the opposition as regards certain services in Class 35.
8 On 13 December 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it upheld the opposition in respect of certain goods and services covered by the mark applied for.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the Opposition Division had been fully entitled to find that the EU trade mark application should be dismissed on the basis of Article 8(5) of Regulation 2017/1001.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001.
14 Under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
15 As regards the risk referred to by Article 8(5) of Regulation 2017/1001, it must be pointed out that, although it is true that the primary function of a mark is that of an indication of origin, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys. To that effect each mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation 2017/1001 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).
16 It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; secondly, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54 and the case-law cited).
17 It is in the light of those considerations that the arguments relied on by the applicant in support of its single plea must be examined.
18 In the present case, the applicant has divided its plea into two parts, alleging, as regards the fist, errors made in the assessment of the similarity of the marks at issue and, as regards the second, errors made in the assessment of the link between those marks and an unfair advantage taken by the mark applied for of the reputation acquired by the earlier mark. The arguments raised in support of those two parts seek to call into question the assessment by the Board of Appeal of the first and third conditions for application of Article 8(5) of Regulation 2017/1001 referred to in paragraph 16 above.
19 However, the applicant does not dispute the Board of Appeal’s assessment as regards the other conditions for application of Article 8(5) of Regulation 2017/1001.
20 In particular, the applicant does not call into question the Board of Appeal’s assessment concerning the definition of the relevant public which is a necessary prerequisite for the purposes of applying Article 8(5) of Regulation 2017/1001. It is with regard to that public that the Court must assess whether there is any similarity between the marks at issue, any reputation of the earlier mark, any link between those marks and finally any detriment to the reputation or to the distinctive character of the earlier mark or any unfair advantage being taken of the reputation or the distinctive character of that mark (judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 31).
21 In the present case, the Board of Appeal found that the goods and services at issue were directed at the public at large as well as the professional public in the pharmaceutical and medical field which displayed an average to high degree of attention. According to the Board of Appeal, they included both the average consumer of the goods and services covered by the mark applied for and the average consumer of the goods and services covered by the earlier mark. Moreover, the Board of Appeal found that, to the extent that a reputation in part of the European Union, in particular in a Member State, was sufficient, it was justified in conducting its analysis from the viewpoint of the Spanish public (see contested decision, paragraphs 34 to 36).
22 Likewise, the applicant does not dispute the Board of Appeal’s findings concerning the reputation of the earlier mark in Spain (see contested decision, paragraphs 45 to 47). In that regard, the Board of Appeal considered that, for the reasons set out in the decision of the Opposition Division, the earlier mark enjoyed a substantial reputation in that Member State for the goods ‘cleaning-, scouring preparations; soaps’ and ‘disinfectants; fungicides’ in Classes 3 and 5, respectively. Taking into account the evidence submitted by the intervener, the Board of Appeal also noted that the earlier mark occupied ‘a leading position on the Spanish market of disinfectants and cleaning products’ and that it enjoyed a ‘reputation for a high-quality product’.
23 There is no need to call into question the Board of Appeal’s assessment concerning the definition of the relevant public and the existence of a reputation of the earlier mark which are correctly based on the evidence relied on in that respect in the contested decision and are, moreover, not disputed by the parties.
The similarity of the signs at issue
24 It should be recalled that, in order to satisfy the condition relating to the existence of identity or similarity between the marks at issue laid down by Article 8(5) of Regulation 2017/1001, it is not necessary to prove that there exists, on the part of the relevant section of the public, a likelihood of confusion between the earlier mark with an alleged reputation and the mark applied for. It is sufficient for the degree of similarity between those marks to have the effect that the relevant section of the public establishes a link between them (see, to that effect, judgment of 9 March 2012, Ella Valley Vineyards v OHIM – HFP (ELLA VALLEY VINEYARDS), T‑32/10, EU:T:2012:118, paragraph 37).
25 It should also be pointed out that, in general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical in one or more relevant aspects (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30). The global assessment of the link between the marks at issue must, so far as concerns the visual, phonetic or conceptual similarity of the marks, be based on the overall impression given by those marks, 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 link. In that 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 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL), T‑509/19, not published, EU:T:2021:225, paragraph 88 and the case-law cited; see also, as regards the global assessment of the likelihood of confusion, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
26 In the present case, the applicant takes the view that the signs at issue are dissimilar. It disputes the result of the examination of their similarity, carried out by the Board of Appeal, both in the light of the visual comparison and the phonetic or conceptual comparison.
27 EUIPO and the intervener dispute the applicant’s arguments.
The distinctive and dominant elements
28 In the present case, before addressing the issue of the visual, phonetic and conceptual similarity of the signs at issue, the content of the Board of Appeal’s assessment of their distinctive and dominant elements against which the applicant puts forward arguments should be borne in mind.
29 So far as concerns the mark applied for, the Board of Appeal noted that the word elements ‘sanity’ and ‘group’ were displayed in a black, standard typeface which are preceded by a circular figurative device in black and white, slightly bigger than the letter size. The Board of Appeal also stated that the first element had no meaning for a part of the Spanish public, even though it could also be perceived as alluding to the word ‘sanitario’ which, in Spanish, means ‘relating to the conditions that affect hygiene and health’. As regards the second element, the Board of Appeal found that it was perceived as the English equivalent of the Spanish word ‘grupo’. For the Board of Appeal, that term had a weak inherent distinctive character, since it generally designated a corporate conglomerate and it was therefore normally understood as a descriptive addition to a distinctive element. According to the Board of Appeal, the Spanish consumer would thus understand the English term ‘group’ due to its closeness to the Spanish counterpart ‘grupo’. Moreover, the Board of Appeal noted that the figurative element of the mark applied for was perceived as merely decorative, rather simple and unremarkable and, therefore, secondary in the overall impression. Consequently, the Board of Appeal found that the word element ‘sanity’ was, for the relevant Spanish public, the most distinctive and dominant element of the mark applied for (see contested decision, paragraph 38).
30 As regards the earlier mark, the Board of Appeal observed that the word element ‘sanytol’, in white capital letters, was depicted on a green rectangular background, underlined by a red triangle, with a small red triangle above the letter ‘y’. According to the Board of Appeal, that element had no meaning for the Spanish public, it could also be perceived by the same public as alluding to the Spanish word ‘sanitario’ for ‘sanitary’ and, to that extent, its initial part was weakened. Furthermore, the Board of Appeal found that the figurative elements were perceived as decorative and secondary in the overall impression produced by the earlier mark. Consequently, the Board of Appeal concluded that the word element ‘sanytol’ was the most distinctive and dominant element of the earlier mark (see contested decision, paragraph 39).
The visual comparison
31 The applicant argues that the signs at issue are ‘not at all’ similar. It claims that the apparent visual differences of those signs, namely their length, figurative elements, colours and fonts outweigh their similarities. According to the applicant, the attention of the relevant public is drawn not only by the word elements but also by the figurative elements and the colours of those signs. The applicant also maintains that the Board of Appeal incorrectly focused on the overlaps of the initial parts of the word elements ‘sanytol’ and ‘sanity’ and on the finding that the word element ‘group’ of the mark applied for played almost no role in the overall impression. First, the principle that the public pays more attention to the initial part of a sign than to its subsequent elements is not, according to the applicant, relevant and, in addition does not argue for but rather against the similarity of the signs at issue. Secondly, the applicant claims that the Board of Appeal’s findings in the contested decision are contradictory, in so far as, in order to assess the scope of the overlaps referred to above, the Board of Appeal uses the reasoning that a weakened element is not necessarily negligible in the overall impression, which is perfectly applicable to the word element ‘group’. According to the applicant, that word element should not have been disregarded or regarded as secondary in the overall impression of the sign on the sole ground that it had a weak distinctive character or that it was placed in second position.
32 First of all, it should be noted that, in paragraph 40 of the contested decision, the Board of Appeal carried out a visual comparison of the signs at issue and set out the reasons why it found that they displayed an average degree of similarity in that regard. First, the Board of Appeal observed that those signs coincided in the letter sequence ‘s’, ‘a’, ‘n’ and ‘t’ and that they differed in the letters ‘i’, ‘y’ and ‘y’, ‘o’ and ‘l’, in the additional element ‘group’ of the mark applied for and in the figurative elements of the signs at issue. Secondly, the Board of Appeal stated that, even if the initial part of the signs, namely ‘sanit’ and ‘sanyt’, could be perceived as alluding to ‘sanitario’ and therefore as weakened, this did not necessarily mean that that element was negligible in the overall impression. Thirdly, the Board of Appeal found that, since the figurative elements were secondary in the overall impression and the additional element ‘group’ of the mark applied for was devoid of distinctiveness, the signs displayed an average degree of visual similarity.
33 The applicant’s arguments do not make it possible to call into question the Board of Appeal’s assessment concerning the visual degree of similarity of the signs at issue.
34 In order to assess the overall impression produced by the signs at issue, the Board of Appeal duly identified the different word and figurative elements of which the signs consisted (see paragraphs 29 and 30 above). Furthermore, it correctly set out the reasons why the most distinctive and dominant element for the Spanish public was, on the one hand, the word element ‘sanity’ in respect of the mark applied for and, on the other, the word element ‘sanytol’ in respect of the earlier mark.
35 In that regard, it should be noted that where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting the name than by describing the figurative element of the mark. Although it is true, as the applicant sets out, that that principle does not mean that the word elements of a mark must always be regarded as more distinctive than the figurative elements, the fact remains that the shape, size, colour and position of the figurative element or elements of the marks at issue do not make it possible, in the present case, to call into question the findings made by the Board of Appeal as regards the more distinctive and dominant character of the word element ‘sanity’ or of the word element ‘sanytol’ in the mark applied for and the earlier mark, respectively (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraphs 60 and 61 (not published) and the case-law cited).
36 Accordingly, in the light of the reasoning set out in that regard in the contested decision, the Board of Appeal cannot be criticised for having found that the figurative elements of the marks at issue were secondary in the overall impression.
37 Likewise, the Board of Appeal cannot be criticised for having noted that the word element ‘group’, which follows the word element ‘sanity’ in the mark applied for, was devoid of distinctiveness. As the Board of Appeal correctly stated, the term ‘group’ is commonly used in Spain where it is perceived as the English equivalent of the Spanish word ‘grupo’. Therefore, the Board of Appeal was fully entitled to find, in the present case, that that term generally referred to a corporate conglomerate and was normally perceived as a descriptive addition to the word element which preceded it (see, to that effect, judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 29).
38 In addition, the Board of Appeal’s finding that there is an average degree of visual similarity between the marks at issue is not called into question by the fact that it considers that, even though the words ‘sanity’ and ‘sanytol’ are devoid of meaning for all or part of the relevant Spanish public, it is nevertheless possible that those words may be perceived as alluding to the Spanish word ‘sanitario’ which means ‘relating to the conditions that affect hygiene and health’.
39 In so doing, the Board of Appeal concedes, as the applicant states and EUIPO accepts, that the word elements ‘sanity’ and ‘sanytol’ could allude to a potentially descriptive term. Nonetheless, as the Board of Appeal observed in the contested decision, ‘even if the beginning of the signs “san(i)t” [might] be perceived as alluding to “sanitario” and therefore as weakened’, this did not necessarily mean that that element was negligible in the overall impression.
40 As EUIPO and the intervener correctly note, although it is true that, as a general rule the public will not consider a descriptive element forming part of a mark as the distinctive and dominant element in the overall impression produced by that mark, the fact remains that the weak distinctive character of an element of a mark does not necessarily mean, when its size or its position in the mark are taken into account, that that element is negligible in the overall impression produced by that mark (see, to that effect, judgments of 8 February 2011, Lan Airlines v OHIM – Air Nostrum (LINEAS AEREAS DEL MEDITERRANEO LAM), T‑194/09, EU:T:2011:34, paragraph 30, and of 27 January 2021, Olimp Laboratories v EUIPO – OmniVision (Hydrovision), T‑817/19, not published, EU:T:2021:41, paragraph 71). Such a solution is also apparent from the judgment of 6 April 2022, Moio v EUIPO – Paul Hartmann (moio.care), T‑276/21, not published, EU:T:2022:221, paragraphs 67 and 68, which is relied on by the applicant in support of its argument.
41 In addition, the difference between the fact, first, that the word element ‘sanity’ is written, in the mark applied for, with a capital letter and lower-case letters and, secondly, that the word element ‘sanytol’ is written in capital letters in the earlier mark, is not very perceptible and is therefore visually hardly noticeable. Likewise, the fact that those word elements are written in different fonts does not create, in the present case, a striking visual difference (see, to that effect, judgment of 15 December 2010, Epcos v OHIM – Epco Sistemas (EPCOS), T‑132/09, not published, EU:T:2010:518, paragraph 76).
42 In those circumstances, the Board of Appeal was correct in finding that there was an average degree of visual similarity between the signs at issue.
The phonetic comparison
43 The applicant argues that the mark applied for is pronounced in two words and that the Board of Appeal was therefore incorrect in finding that the word element ‘group’ was not going to be pronounced by the relevant public, to the extent that it was included in the last part of the sign at issue and that it had a weak distinctive character. Next, according to the applicant, the Board of Appeal made an error by adding the additional syllables to the signs at issue on the ground that Spanish consumers pronounced them with an ‘e’ at the beginning. Furthermore, the applicant submits that the principle that the initial part of a mark is more important than its other parts does not apply where that initial part has a weak distinctive character.
44 In that regard, it should be noted that, in paragraph 41 of the contested decision, the Board of Appeal found that the phonetic similarity between the signs at issue was above average, even taking into account a weakened distinctiveness of their common initial parts ‘san’. For the Board of Appeal, the phonetic similarity was higher than the visual similarity, since the figurative elements were not pronounced. The Board of Appeal then stated that the signs were pronounced by the relevant Spanish public according to the syllables ‘e’, ‘sa’, ‘ni’, ‘ti’, and ‘grup’, in respect of the mark applied for, and ‘e’, ‘sa’, ‘ni’ and ‘tol’, in respect of the earlier mark and that, consequently, they coincided in the first three syllables and in the first letter of the fourth syllable. The Board of Appeal also noted that the additional element ‘group’ at the end of the mark applied for was weak and that it might not even be pronounced.
45 In the present case, the applicant and EUIPO agree that there is no need to consider that the relevant Spanish public would add the vowel ‘e’ at the beginning of the signs at issue. EUIPO states in that connection that, although it is true that in the Spanish language, words do not begin with consonant clusters, with the result that Spanish speakers often add the vowel ‘e’ to the beginning of foreign words which begin with a consonant cluster when pronouncing them, the same cannot be said for words which do not begin with such a cluster, such as the Spanish word ‘sanitario’ or the meaningless words ‘sanytol’ and ‘sanity’. In the present case, there is therefore no need to consider that Spanish speakers add the vowel ‘e’ to the beginning of the words ‘sanity’ and ‘sanytol’ to pronounce them.
46 Nevertheless, as EUIPO contends, that error has no significant effect on the result of the assessment of the phonetic similarity of the signs at issue, since the coincidence in the sound of the first two syllables ‘sa’ and ‘ni’ of those signs, duly noted in the contested decision, is sufficient to establish an at least average degree of phonetic similarity.
47 Such a finding is not called into question by the applicant’s other arguments.
48 As has been stated above, so far as concerns the visual similarity, although it is true, as the applicant argues, that the element ‘group’ featuring exclusively in the mark applied for introduces a phonetic difference, that difference is not such as to call into question the existence of a phonetic similarity in the overall impression given by the two signs at issue. Accordingly, the element ‘group’ is clearly detached, in the mark applied for, from its dominant element ‘sanity’ similar to the earlier mark, since its pronunciation is preceded by a short interruption. That pronunciation therefore has no significant phonetic impact and does not affect the phonetic similarity between the most dominant elements of the signs at issue.
49 Likewise, contrary to what the applicant argues, by relying on judgments of the Court concerning cases which do not have the same characteristics as those in question here, it follows from the actual content of the contested decision that the Board of Appeal took into account, in its assessment of the phonetic similarity, the fact, also referred to in the assessment of the visual similarity, alleging that the word elements ‘sanity’ and ‘sanytol’ could have a weakened distinctiveness, since they could be perceived as alluding to the Spanish word ‘sanitario’.
50 Consequently, it must therefore be held that the phonetic similarity between the signs at issue, even though it could not be regarded as ‘above average’ on account of the error made by the Board of Appeal as regards the vowel ‘e’ incorrectly added in their pronunciation, nevertheless remains at least average.
The conceptual comparison
51 The applicant submits that the reduced effect of the initial parts of the signs at issue is insufficient to establish a conceptual similarity, a fortiori, if the additional word element ‘group’ of the mark applied for is taken into consideration.
52 It should be noted that, in paragraph 42 of the contested decision, the Board of Appeal stated that, conceptually, neither the word ‘sanity’ nor the word ‘sanytol’ had any meaning in Spanish. However, it also stated that a certain conceptual similarity could result from the coincidence in the initial parts of the signs ‘sanit’ and ‘sanyt’ if they were perceived as alluding to the Spanish word ‘sanitario’, even though they were weakly distinctive. The Board of Appeal also found that the element ‘group’ of the mark applied for was devoid of distinctive character for the relevant Spanish public.
53 It follows from the foregoing that the Board of Appeal found a certain conceptual similarity in a clearly defined and limited situation.
54 As is apparent from the contested decision, such a finding was made only in a situation where the relevant public would perceive the elements common to the signs at issue as alluding to the Spanish word ‘sanitario’. The Board of Appeal also referred to another situation, that in which the elements ‘sanity’ and ‘sanytol’ had no meaning in Spanish and in which the examination of the conceptual similarity could therefore not be carried out.
55 In any event, the conceptual similarity referred to by the Board of Appeal in the situation criticised by the applicant must be considered in the light of the fact that, as stated by the Board of Appeal in the contested decision, the common elements of the signs at issue are weakly distinctive in so far as they describe certain of the characteristics of the goods covered (see, to that effect, judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 67 and the case-law cited).
56 That reasoning is not called into question by the issue of whether or not the additional element ‘group’ of the mark applied for is taken into account, since it remains devoid of distinctiveness for the relevant Spanish public as correctly stated in the contested decision.
57 There is therefore no reason to call into question the assessment of the conceptual similarity of the signs at issue set out by the Board of Appeal in the contested decision.
58 Consequently, the first part of the plea must be rejected as unfounded.
The existence of a link between the marks and an unfair advantage taken of the reputation of the earlier mark
59 As regards the condition linked to the risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see paragraph 16 above), the detriment referred to in Article 8(5) of Regulation 2017/1001, where it occurs, is the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant public makes a connection between those two marks. In other words, the relevant public establishes a link between those marks even though it does not confuse them (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 50 and the case-law cited).
60 The existence of such a link on the part of the relevant public between the mark applied for and the earlier mark is therefore an essential precondition for the application of Article 8(5) of Regulation 2017/1001 (see judgments of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited, and of 11 November 2020, Totalizator Sportowy v EUIPO – Lottoland Holdings (Lottoland), T‑820/19, not published, EU:T:2020:538, paragraph 26 and the case-law cited).
61 The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for would call the earlier mark to mind is tantamount to the existence of such a link between those marks (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).
62 The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case, such as the degree of similarity between the marks at issue; the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the relevant public (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 52 and the case-law cited). In particular, although the existence of a similarity between the goods and services covered by the marks at issue does not constitute a condition for the application of the relative ground for refusal laid down in Article 8(5) of Regulation 2017/1001, the nature and the degree of closeness of the goods or services concerned constitute factors that are relevant in order to assess whether a link between those marks exists (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 182).
63 It is in the light of those considerations that the arguments relied on by the applicant against the existence of a link between the marks and an unfair advantage taken of the reputation of the earlier mark must be examined.
64 In that regard, the applicant argues that, in so far as the marks at issue are ‘not at all’ similar, the relevant public will not establish a link between them. Consequently, according to the applicant, it is ruled out that the mark applied for takes unfair advantage of the reputation of the earlier mark. The applicant also observes that, in earlier decisions, EUIPO found that where the signs overlapped only in elements displaying a weak distinctive character, it could not be concluded that the relevant public established a link between the marks.
65 EUIPO and the intervener dispute the applicant’s arguments.
66 In the present case, it must be observed, as EUIPO contends, that the applicant’s argument is not capable of calling into question the merits of the reasoning set out by the Board of Appeal in the contested decision in order to establish the existence of a link between the marks at issue and an unfair advantage taken of the reputation of the earlier mark.
67 It follows from the foregoing that there is at least an average degree of visual and phonetic similarity between the marks. It is also not disputed that the earlier mark has a substantial reputation in the field of disinfection and hygiene.
68 In addition, the applicant does not dispute, as it confirmed at the hearing, the findings of the Board of Appeal that, first, the inherent distinctiveness of the earlier mark is normal and, secondly, the goods and services covered by the application for registration and the goods in respect of which the earlier mark has a reputation target sections of the public which overlap. Those findings are apparent to the requisite legal standard from paragraphs 49 to 52 of the contested decision.
69 In particular, as the Board of Appeal has stated in paragraphs 49 to 52 of the contested decision without being disputed by the applicant, the goods and services concerned belonged partly to the same markets or to closely related markets and a link was also established in respect of the other goods or services which were not identical or closely related to the earlier reputed goods, since all those goods or services concerned the field of protection and maintenance of humans, animals, or plants health. As has been correctly noted by the Board of Appeal, hygiene and health were closely related and many companies specialised in the field of disinfection and hygiene also provided goods and services related to health care.
70 Therefore, the Board of Appeal was justified in finding that the relevant public might understand that the intervener had extended its activities in the field of reputed disinfectants and cleaning products into the field of health care products and services. It cannot therefore be ruled out that the earlier reputed mark will be brought to the minds of the relevant consumers when they see the mark applied for in relation to the goods and services covered by that mark in the field of protection and maintenance of humans, animals, or plants health.
71 In that context, the Board of Appeal was entitled to observe, as regards the unfair advantage, that, taking into account the closeness of the goods and services, the fact that the relevant public of the marks at issue overlapped and the substantial reputation of the earlier mark, consumers were likely to purchase the goods and services covered by the mark applied for believing that they were linked to the earlier mark, thus resulting in a misappropriation of its power of attraction and its advertising value. The Board of Appeal was therefore correct in finding, in paragraph 55 of the contested decision, that there was a risk of transferring the image of the earlier reputed mark and its positive characteristics to the goods and services of the mark applied for.
72 Consequently, it cannot be claimed, as the applicant does, not only that the marks at issue are ‘not at all’ similar but also that, for that reason alone, which is moreover incorrect, the Board of Appeal failed to establish the existence of a link between those marks and an unfair advantage taken of the reputation of the earlier mark, in accordance with the requirements of Article 8(5) of Regulation 2017/1001.
73 In addition, as regards the applicant’s argument that the contested decision is inconsistent with EUIPO’s decision-making practice, it must be borne in mind that, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a mark must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO (see judgment of 6 April 2022, moio.care, T‑276/21, not published, EU:T:2022:221, paragraph 65 and the case-law cited).
74 Furthermore, the applicant relies on a decision-making practice of EUIPO from which it follows that, in other cases, the Board of Appeal found that, even if the ‘relevant goods and services’ were identical, but the signs overlapped only in elements of weak distinctiveness, it could not be concluded that the relevant public could establish a link between the marks at issue.
75 In addition to the fact, explained in paragraph 74 above, that the legality of decisions of EUIPO concerning registration of an EU trade mark must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65), as EUIPO correctly contends in its response, it appears that the cases cited by the applicant involve different circumstances from those of the present case. In the present case, the earlier mark differs from the earlier mark at issue in the decisions cited, whose distinctiveness had been regarded as so diluted that the marks at issue could be used as generic words for all the undertakings of the relevant sector.
76 The second part of the plea must therefore be rejected as unfounded.
77 It follows from all of the foregoing that the applicant’s single plea must be rejected and the action must be dismissed in its entirety without it being necessary to examine and to rule on the admissibility of the decision of 6 December 2022 of an Italian administrative authority and of the judgment of 23 December 2022 of a Spanish court which concern other opposition proceedings and which have been submitted by the intervener before the hearing.
Costs
78 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.
79 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Sanity Group GmbH to pay the costs.
Marcoulli | Frimodt Nielsen | Norkus |
Delivered in open court in Luxembourg on 7 June 2023.
V. Di Bucci | | M. van der Woude |