JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
26 July 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark RADA PERFUMES – Earlier EU figurative marks PRADA – Earlier EU figurative mark PRADA MILANO DAL 1913 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑439/22,
Rada Perfumery SRL, established in Cluj-Napoca (Romania), represented by E.‑M. Dicu, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Prada SA, established in Luxembourg (Luxembourg), represented by G. Casucci, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov (Rapporteur), President, G. De Baere and D. Petrlík, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Rada Perfumery SRL, seeks the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 April 2022 (Case R 1610/2021‑2) (‘the contested decision’).
I. Background to the dispute
2 On 22 January 2020, 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 and 35 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 corresponds, for each of those classes, to the following description:
– Class 3: ‘Cosmetics and cosmetic preparations; Perfume oils for the manufacture of cosmetic preparations; Perfume; Oils for perfumes and scents; Natural essential oils; Blended essential oils; Body deodorants [perfumery]; Synthetic perfumery; Perfumery’;
– Class 35: ‘Advertising services relating to perfumery; Marketing research in the fields of cosmetics, perfumery and beauty products; Preparing promotional and merchandising material for others; Providing consumer product advice relating to cosmetics; Online retail services relating to cosmetics; Mail order retail services for cosmetics; Wholesale services in relation to fragrancing preparations.’
4 On 4 May 2020, the intervener, Prada SA, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based in particular on the following earlier EU marks:
– EU figurative mark No 11918331 designating goods in Class 3 and corresponding to the following description: ‘Perfumery; perfumes’, reproduced below:
– EU figurative mark No 12443362 designating services in Class 35 and corresponding to the following description: ‘Bringing together, for others, of a variety of goods (excluding the transport thereof), in particular of clothing, footwear, headgear, bags, leatherware, cosmetics, perfumes, frames for spectacles, sunglasses, mobile telephones, clocks and watches, jewellery, costume jewellery, books, magazines, sports articles, enabling customers to conveniently view and purchase those goods’, reproduced below:
– EU figurative mark No 13400635 designating goods in Class 3 and corresponding to the following description: ‘Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Eau de Cologne; Lavender water; Eau de Cologne; Adhesives for cosmetic purposes; Fabric softeners for laundry use; Aromatics [essential oils]; Joss sticks; Make-up; Wax (Depilatory -); Eyelashes (False -); Face powder; Hair dyes; Colorants for toilet purposes; Cosmetics for animals; Creams (Cosmetic -); Skin whitening creams; Bleaching preparations [decolorants] for cosmetic purposes; Deodorants for human beings or for animals; Massage gels other than for medical purposes; Hair spray; Nail polish; Cleansing milk for toilet purposes; Aftershave; Hair lotions; Lotions for cosmetic purposes; Lip gloss; Mascara; Cosmetic masks; Eyebrow pencils; Eyebrow pencils; Oils for toilet purposes; Essential oils; Oils for cosmetic purposes; Cotton wool for cosmetic purposes; Pumice stone; Pomades for cosmetic purposes; Pot-pourri; Cosmetics for bronzing the skin; Baths (Cosmetic preparations for -); Douching preparations for personal sanitary or deodorant purposes [toiletries]; Cosmetic preparations for slimming purposes; Skincare cosmetics; Depilatories; Perfumery; Make-up; Dental rinses, non medicated; Nail care preparations; Shaving preparations; Toiletries; Sachets for perfuming linen; Make-up removing preparations; Perfumery; Air fragrancing preparations; Lipstick; Bath salts, not for medical purposes; Soap; Deodorant soap; Disinfectant soap; Shampoo; Shampoos for pets; Dry shampoos; Talcum powder, for toilet use; Dyes (Cosmetic -); Tissues impregnated with cosmetic lotions; False nails’, reproduced below:
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and 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 4 August 2021, the Opposition Division partially upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 in respect of all the goods in Class 3 covered by the mark applied for and in respect of the services in Class 35 corresponding to the following description: ‘Online retail services relating to cosmetics; mail order retail services for cosmetics; wholesale services in relation to fragrancing preparations’, on the ground that there was a likelihood of confusion. It rejected the opposition in respect of the other services covered by the mark applied for.
8 On 20 September 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as the latter had upheld the opposition in respect of the goods and services in Classes 3 and 35 referred to in paragraph 7 above.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
II. Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition;
– grant the application for registration of the mark applied for.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO if the parties are summoned to a hearing.
12 The intervener contends, in essence, that the Court should:
– dismiss the action as inadmissible or unfounded;
– order the applicant to pay the costs.
III. Law
A. The applicant’s third head of claim
13 As regards the applicant’s third head of claim, it should be noted that this asks the Court to grant the application for registration of the mark, in order for it to be registered, and may be understood as asking the Court to alter the contested decision, within the meaning of Article 72(3) of Regulation 2017/1001, by adopting the decision which the Board of Appeal should have taken, in accordance with the provisions of that regulation. The competent bodies of EUIPO do not, however, adopt formal decisions recording the registration of an EU trade mark which could be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it should register an EU trade mark. In those circumstances, it is similarly not for the General Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited). It follows that the third head of claim must be rejected on the ground of lack of jurisdiction.
B. Substance
14 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It disputes the Board of Appeal’s findings concerning, first, the comparison of the goods and services covered by the marks at issue, second, the comparison of those marks and, third, the global assessment of the likelihood of confusion.
1. Admissibility of the evidence adduced for the first time before the General Court
15 EUIPO disputes the admissibility of Annexes A.5 to A.11 to the application, in so far as they were not submitted in the course of the administrative proceedings.
16 The purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
17 It is therefore not the Court’s function to review the facts in the light of evidence adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine such evidence (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
18 In the present case, it must be noted that Annexes A.5 to A.11 to the application have been produced for the first time before the Court, with the exception of two documents included in Annex A.8, namely, a copy of the identity card of one of the applicant’s shareholders and the applicant’s statutes, which were produced before the Opposition Division. Therefore, Annexes A.5 to A.11 to the application must be regarded as inadmissible, with the exception of the two items of evidence referred to above which have already been produced before the Opposition Division.
2. The single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
19 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
20 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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).
(a) The relevant public
21 In the present case, the Board of Appeal found that the relevant territory was that of the European Union and that the goods and services concerned were addressed both to the public at large and to a professional public. It then found that the level of attention of the relevant public with regard to the goods in Class 3 was ‘at least average’. As regards online retail services relating to cosmetics and mail order retail services for cosmetics in Class 35, the Board of Appeal found that there was an average level of attention. As regards the wholesale services in Class 35, the Board of Appeal found that these were mainly addressed to a professional public, which will have a high level of attention. Furthermore, the Board of Appeal stated that it based its analysis on the French-speaking part of the relevant public. Lastly, it noted that, with regard to the assessment of the likelihood of confusion, the public with the lowest level of attention had to be taken into consideration.
22 Those assessments by the Board of Appeal are not contested by the applicant.
(b) The comparison of the goods and services
23 The Board of Appeal found that the goods and services concerned overlapped and were therefore identical.
24 First, the applicant submits that the perfumes which it markets are oriental perfumes with a different composition, different bottles, and different smell and packaging from those of the goods covered by the earlier marks. The various aspects of the goods marketed by the applicant refer, according to the latter, to the Arab world, whereas those of the intervener are packaged in ‘European’ and ‘elegant’ bottles containing inscriptions in French or English.
25 EUIPO and the intervener dispute those arguments on the part of the applicant.
26 It is settled case-law that, for the purposes of assessing whether there is a likelihood of confusion, only the description of the goods and services in respect of which registration of the mark is sought is relevant; the intended or actual use of that mark cannot be taken into account, since the registration does not contain a restriction to that effect (see judgment of 27 January 2021, Turk Hava Yollari v EUIPO – Sky (skylife), T‑382/19, not published, EU:T:2021:45, paragraph 36 and the case-law cited; see also, to that effect, judgment of 17 January 2012, Kitzinger v OHIM – Mitteldeutscher Rundfunk and Zweites Deutsches Fernsehen (KICO), T‑249/10, not published, EU:T:2012:7, paragraph 23 and the case-law cited).
27 In the present case, it must be held that the goods and services covered by the mark applied for, referred to in paragraph 7 above, either appear identically in the list of goods and services covered by the earlier marks or are included in the description of the goods or services covered by those marks. Since only the description of the goods and services is relevant, the applicant’s arguments, based on the composition, smell or packaging of the goods which it markets, are therefore ineffective for the purposes of determining whether the goods and services concerned are similar.
28 Second, the applicant submits that the mere fact that the goods and services at issue belong to the same class does not, under Article 33(7) of Regulation 2017/1001, lead to the conclusion that they are similar. However, it must be stated that the Board of Appeal did not find that the goods and services at issue were identical solely on the basis that they belong to the same class. It examined them according to their description, in accordance with the case-law cited in paragraph 26 above, and stated, inter alia, that the goods covered by the earlier marks, for example perfumery and perfumes, were described so broadly as to include the relevant goods of any geographic or ethnic origin.
29 Third, the applicant claims that, since the relevant public to be taken into consideration when analysing the comparison of the goods and services at issue is that with the lowest level of attention, that is, in the present case, the public with an average level of attention, no similarity can be retained between the goods or services at issue. It should, however, be noted that, first, it follows from the contested decision that it is precisely that level of attention which was taken into consideration by the Board of Appeal and, second, the applicant has not produced any evidence to show that, with regard to that level of attention, the relevant public does not perceive the goods and services at issue as being identical.
30 Consequently, the Board of Appeal did not make an error of assessment in finding that the goods and services at issue were identical.
(c) The comparison of the signs
31 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 this 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 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
32 As a preliminary point, it should be noted that the earlier marks No 11918331 and No 12443362 (together ‘the first two earlier marks’) consist of the single word element ‘prada’, in stylised capital letters. The earlier mark No 13400635 (‘the third earlier mark’) consists of the same word element, below which are the word element ‘milano’ in smaller uppercase letters, the word element ‘dal 1913’ in the centre of a figurative element representing a banner and a figurative element representing a coat of arms. The mark applied for consists of the word element ‘rada’ in stylised capital letters below which the word element ‘perfumes’ appears, smaller, in fine capital letters. Two red strokes or dashes appear on the left and right of that latter element.
(1) The distinctive and dominant elements of the marks at issue
33 The Board of Appeal found that the first two earlier marks consisted of a single word element, namely ‘prada’, the stylisation of that element playing, in its view, only a decorative role, that, as regards the third earlier mark, that word element constituted the dominant element and that the additional elements, namely ‘milano’, ‘dal 1913’ and the coat of arms and banner, were weak, descriptive or non-distinctive. In particular, while the term ‘milano’ was associated with the Italian city, the element ‘dal 1913’ would be perceived by most consumers as meaning ‘since 1913’, that is to say, as the date of creation of the intervener’s commercial activity, the coat of arms and the banner having a decorative role. As regards the mark applied for, the Board of Appeal found, first, that the word element ‘rada’ was its dominant element and, second, that the word element ‘perfumes’ was descriptive of the goods and services covered by that mark, on account of its proximity in spelling to the French term ‘parfums’. According to the Board of Appeal, the two strokes or dashes placed on both sides of that element were, moreover, devoid of distinctiveness, since they were merely decorative.
34 The applicant does not dispute those assessments by the Board of Appeal.
(2) The visual comparison
35 The Board of Appeal stated that, visually, the signs at issue coincided in the sequence of letters ‘r’, ‘a’, ‘d’ and ‘a’ and that that coincidence concerned both the dominant and most distinctive element of the mark applied for, four out of five letters of the only element of the first two earlier marks and the dominant element of the third earlier mark. Furthermore, it found that, since the other elements of the mark applied for and of the third earlier mark were only weakly distinctive, or even non-distinctive, the mark applied for had a high degree of visual similarity with the first two earlier marks and an average degree of visual similarity with the third earlier mark.
36 The applicant submits that the graphic aspects of the signs at issue differ considerably in that, in its view, there is no similarity between the fonts used and the mark applied for and the third earlier mark are accompanied by word and graphic elements capable of differentiating them. It states, in that regard, that the mark applied for consists of the additional word element ‘perfumes’, whereas the third earlier mark contains the word elements ‘milano’ and ‘dal 1913’ as well as the figurative elements representing a coat of arms and a banner.
37 EUIPO and the intervener dispute the applicant’s arguments.
38 First, as the Board of Appeal correctly pointed out, the marks at issue have in common the sequence of letters ‘r’, ‘a’, ‘d’ and ‘a’, which constitute the entirety of the most distinctive and dominant element of the mark applied for and four of the five letters of the only element of the first two earlier marks and the dominant element of the third earlier mark.
39 Second, as regards the applicant’s argument based on the differences in the fonts used in the marks at issue, it should be noted that the word elements ‘prada’ and ‘rada’ are each represented, in all the marks at issue, in capital letters written in bold font and spaced apart from each other. Although the fonts used in those marks are not identical, they are neither particularly fanciful nor unusual, with the result that the differences between them, as noted by the applicant, have only a marginal impact on the visual comparison of those marks.
40 Third, as was correctly pointed out by the Board of Appeal, the reasoning of which is set out in paragraph 33 above, as regards the word element ‘perfumes’ of the mark applied for and the word elements ‘milano’ and ‘dal 1913’ of the third earlier mark, it should be borne in mind that these are descriptive.
41 Consequently, the differences between the signs, namely the presence of an additional letter ‘p’ at the beginning of the earlier marks, the word element ‘perfumes’, the two red strokes or dashes placed on both sides of that element in the mark applied for and the different fonts used in those marks, are not sufficient to rule out the high degree of visual similarity between the mark applied for and the first two earlier marks. As regards the third earlier mark, on account of the presence of the word elements ‘milano’ and ‘dal 1913’ and of the figurative elements representing a coat of arms and a banner, which are not present in the mark applied for, the similarity between them is only average.
42 Consequently, the Board of Appeal did not make an error of assessment in finding, first, that there was a high degree of visual similarity between the mark applied for and the first two earlier marks and, second, that there was an average degree of similarity between the mark applied for and the third earlier mark.
(3) The phonetic comparison
43 The Board of Appeal concluded that there was a high degree of phonetic similarity between the signs at issue, stating that they coincided in the pronunciation of the sequence of letters ‘r’, ‘a’, ‘d’ and ‘a’. It also stated that the phonetic difference between the elements ‘prada’ and ‘rada’ was weak, since the letter ‘p’ was a voiceless letter, and that it was unlikely that the relevant public would pronounce the other elements in the mark applied for and the third earlier mark.
44 The applicant submits that the first letter of the earlier marks, namely the letter ‘p’, establishes a clear distinction between the signs at issue in that, in the earlier marks, that letter is ‘sonorous’ and that, followed by the consonant ‘r’, it transforms the element ‘prada’ into a ‘strong … word’. By contrast, the element ‘rada’, composed of two consonants and two vowels, appears, according to the applicant, as a ‘weak, but melodious word’.
45 EUIPO and the intervener dispute the applicant’s arguments.
46 First, as the Board of Appeal correctly pointed out, without being challenged on this point by the applicant, it must be held that the word element ‘perfumes’, present in the mark applied for, and the elements ‘milano’ and ‘dal 1913’ in the third earlier mark are unlikely to be pronounced by the relevant public, since they occupy a secondary position in relation to the elements ‘prada’ and ‘rada’, they are written in small-sized letters and they are descriptive of the goods and services in question.
47 Second, it must be held that, notwithstanding the difference linked to the presence of the letter ‘p’ at the beginning of the earlier marks, the sequence of letters ‘r’, ‘a’, ‘d’ and ‘a’, common to the signs at issue, is pronounced in the same way in those signs. In that regard, the applicant does not substantiate the argument that the letter ‘p’ transforms the element ‘prada’ into a ‘strong … word’, unlike the element ‘rada’, which is a ‘weak’ word. Nor does it explain what it means by a ‘strong … word’ or a ‘weak word’ and how the mere presence of the letter ‘p’ in the earlier marks is, in the applicant’s view, capable of counteracting the phonetic similarity resulting from the identical pronunciation of the sequence of letters ‘r’, ‘a’, ‘d’ and ‘a’. Consequently, it must be noted that the phonetic similarity between the elements ‘prada’ and ‘rada’ is high, the letter ‘p’ being a voiceless consonant.
48 The Board of Appeal did not therefore make an error of assessment in finding that there was a high phonetic similarity between the marks at issue.
(4) The conceptual comparison
49 The Board of Appeal stated, first of all, that the elements ‘prada’ and ‘rada’ were meaningless for the majority of the French-speaking public and that, to that extent, the conceptual comparison was not possible and remained neutral. It then added that the additional word element ‘perfumes’ of the mark applied for and the word elements ‘milano’ and ‘dal 1913’, together with the figurative elements representing a coat of arms and a banner, of the third earlier mark were descriptive and non-distinctive. Accordingly, it found that the conceptual differences based on those elements were not particularly important in the assessment of the overall likelihood of confusion.
50 The applicant claims that the element ‘prada’ refers to the name of the founder of the earlier marks, whereas the word ‘rada’ refers to the first name of the founder of the mark applied for. In that regard, it adds that the intervener is well known on the luxury market and that ‘rada’ is a common surname or first name in some European countries. The Board of Appeal’s assertion that the elements ‘prada’ and ‘rada’ are meaningless for the French-speaking public is therefore, according to the applicant, incorrect.
51 EUIPO and the intervener dispute the applicant’s arguments.
52 It must be pointed out, as the Board of Appeal states, that the element ‘prada’, present in the earlier marks, has no clear conceptual meaning for a significant part of the relevant public. Even though that element corresponds to the name of the founder of those marks, there is nothing to indicate that a significant part of the relevant public may associate that element with a family surname and that, in its perception, that element has a clear semantic content.
53 The same applies to the word element ‘rada’ of the mark applied for. The applicant has not established that the first name or surname Rada is common or known to the French-speaking public. Thus, it did not put forward any evidence to support the conclusion that a significant part of that public would associate the term ‘rada’ with the surname or first name of a person, still less with the first name of the founder of the mark.
54 Therefore, it must be held that the word element ‘prada’ of the earlier marks and the word element ‘rada’ of the mark applied for have no clear meaning for the relevant public. It follows that, in so far as the first two earlier marks consist solely of the word element ‘prada’, they have no semantic meaning from the perspective of the relevant public.
55 However, for the purposes of the conceptual comparison of the marks at issue, it is also necessary to take into consideration the other elements of the mark applied for and of the third earlier mark. Although the word element ‘perfumes’, included in the mark applied for, and the word elements ‘milano’ and ‘dal 1913’, included in the third earlier mark, are elements to which the relevant public will attach only little importance, those elements have an impact on the assessment of the conceptual comparison of the signs at issue and must therefore be taken into consideration (see, to that effect, judgment of 9 November 2022, Financiere Batteur v EUIPO – Leno Beauty (by L.e.n.o beauty), T‑779/21, not published, EU:T:2022:693, paragraph 50). In that regard, as the Board of Appeal found, the word element ‘perfumes’ is easily understood by the relevant public, on account of its proximity in spelling to the French term ‘parfums’. The element ‘milano’ is associated by the relevant public with the Italian city, while the element ‘dal 1913’ is easily understood by it as meaning ‘since 1913’.
56 Therefore, since the mark applied for has a certain semantic meaning because of its word element ‘perfumes’ and the earlier marks are either devoid of any meaning from the perspective of the relevant public or have a different semantic meaning as a result of the elements ‘milano’ and ‘dal 1913’, it must be held that the marks at issue are conceptually dissimilar (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).
(d) The overall assessment of the likelihood of confusion
57 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 low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
58 First, the applicant claims that, since the intervener is well known on the market, it is certain that the relevant public is aware of the fact that the earlier mark designates its founder and that the first name or surname Rada is common in some European countries. Therefore, any confusion between the marks at issue is, in its view, excluded. Second, the applicant submits, in essence, that the Board of Appeal deprived of legal effect the ‘fundamental right’ guaranteeing that a person can use his or her first name or surname in his or her business, in accordance with Article 4 and Article 14(1)(a) of Regulation 2017/1001. Third, the applicant claims that the Board of Appeal should have taken into consideration the fact that a word mark RADA had already been registered for Classes 35 and 43 at national level and had been used since 2015 and that that mark was well known in Romania. It also states that, at the time of registration of that mark in Romania, the intervener did not file a notice of opposition, even though it had already registered the earlier marks and those marks also benefited from protection in Romania.
59 EUIPO and the intervener dispute the applicant’s arguments.
60 In the present case, as the Board of Appeal correctly pointed out, the relevant public has at least an average level of attention, the goods and services at issue are identical, the degree of visual similarity between the marks at issue varies from average to high, while the degree of phonetic similarity between those marks is high. Furthermore, as has been stated in paragraphs 54 to 56 above, the marks at issue are conceptually different. In that last regard, it should, however, be noted that, on account of the degree of visual and phonetic similarity between those marks and the low level of distinctiveness of the differentiating elements, the conceptual differences between those marks are not sufficient to call into question the Board of Appeal’s assessment. The Board of Appeal therefore did not make an error of assessment in finding that there was a likelihood of confusion on the part of the relevant public.
61 That finding is not called into question by the applicant’s arguments.
62 In the first place, the applicant claims that no confusion can be envisaged as a result of the reputation of the earlier marks and, in particular, of the fact that they refer to the name of their founder.
63 In that respect, it is true that conceptual differences which distinguish the opposing marks may be such as to counteract to a large extent the visual and phonetic similarities between those marks. In order for there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that that public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (see judgment of 17 March 2004, El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 93 and the case-law cited; see also, to that effect, judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20).
64 However, as has been stated in paragraphs 52 and 53 above, the applicant has not established that a significant part of the relevant public was aware of the fact that the word element ‘prada’ in the earlier marks referred to the name of their founder and, still less, that such a meaning was clear and specific in the mind of that public, with the result that that public was capable of grasping it immediately. The same applies with regard to the meaning of the mark applied for.
65 In the second place, the applicant submits that any person is free to use his or her first name or surname in his or her business and that the ‘right to a name’ is a ‘fundamental right of the person’. Thus, in its view, by upholding the opposition, EUIPO deprived of legal effect Article 4 and Article 14(1)(a) of Regulation 2017/1001, which confer on any person the right to register his or her name as an EU trade mark.
66 In that regard, it must be borne in mind that, under Article 4 of Regulation 2017/1001, an EU trade mark may consist of any signs, in particular words, including personal names, provided, inter alia, that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
67 However, it is settled case-law that no unconditional right to register a surname or first name as an EU trade mark is provided for by Regulation 2017/1001 or by the case-law (see judgment of 16 December 2020, Production Christian Gallimard v EUIPO – Éditions Gallimard (PCG CALLIGRAM CHRISTIAN GALLIMARD), T‑863/19, not published, EU:T:2020:632, paragraph 131 and the case-law cited).
68 Furthermore, Article 14 of Regulation 2017/1001 provides that an EU trade mark ‘shall not entitle the proprietor to prohibit a third party from using, in the course of trade … [his or her] name or address …, where that third party is a natural person’, provided that such use is ‘in accordance with honest practices in industrial or commercial matters’. That provision is specifically intended to ensure that a trade mark cannot serve as a basis for prohibiting a natural person from using his or her name.
69 Thus, it is sufficient to note that it is clear from the wording of that provision, entitled ‘Limitation of the effects of an EU trade mark’, that it is intended only to enable, under certain conditions, the use by a third party of his or her family name, and not the registration of that family name as an EU trade mark (see judgment of 16 December 2020, PCG CALLIGRAM CHRISTIAN GALLIMARD, T‑863/19, not published, EU:T:2020:632, paragraph 130).
70 Accordingly, the refusal to register the mark applied for is without prejudice to the possibility for its proprietor to use his or her name in the course of trade, in compliance with the conditions set out in Article 14 of Regulation 2017/1001. However, such a possibility does not amount to permitting registration of that name as an EU trade mark conferring an exclusive right, in disregard of the earlier marks (see, to that effect, judgment of 16 December 2020, PCG CALLIGRAM CHRISTIAN GALLIMARD, T‑863/19, not published, EU:T:2020:632, paragraph 132).
71 In the third place, regarding the applicant’s argument relating to the registration in 2015 of a national word mark RADA, which is claimed to be well known in Romania, it should be noted that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, which apply independently of any national system. Accordingly, the registrability of a sign as an EU trade mark is to be assessed on the basis of the relevant legislation alone. Neither EUIPO nor, as the case may be, the EU Courts are bound – even if they may take them into consideration – by decisions adopted in a Member State, or indeed in a third country, and no provision of Regulation 2017/1001 requires EUIPO or, on appeal, the Court to come to the same conclusions as those arrived at by national administrative or judicial authorities in similar circumstances (see judgment of 15 July 2015, Australian Gold v OHIM – Effect Management & Holding (HOT), T‑611/13, EU:T:2015:492, paragraph 60 and the case-law cited).
72 The fact that the national word mark RADA was registered in Romania is therefore irrelevant to the question whether there is a likelihood of confusion, within the meaning of Regulation 2017/1001, between the marks at issue. Consequently, any reputation of that national mark in Romania is also irrelevant.
73 Lastly, the applicant states that it is the proprietor of the national word mark RADA, registered and used in Romania since 2015, that the intervener did not oppose the registration of that mark, although the earlier marks were already registered, and that the intervener’s ‘passivity’ supports its argument that there is no likelihood of confusion.
74 In that regard, it should be borne in mind that, although it cannot be ruled out that the coexistence of two marks on a particular market may, in certain cases, eliminate the likelihood of confusion on the part of the relevant public, certain conditions must also be satisfied (see, to that effect, judgments of 2 October 2013, Cartoon Network v OHIM – Boomerang TV (BOOMERANG), T‑285/12, not published, EU:T:2013:520, paragraph 55, and of 21 December 2021, Worldwide Spirits Supply v EUIPO – Melfinco (CLEOPATRA QUEEN), T‑870/19, not published, EU:T:2021:919, paragraphs 40 and 41).
75 That possibility can thus be taken into account only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, provided that the earlier marks concerned and the marks at issue are identical (judgments of 2 October 2013, BOOMERANG, T‑285/12, not published, EU:T:2013:520, paragraph 55, and of 21 December 2021, CLEOPATRA QUEEN, T‑870/19, not published, EU:T:2021:919, paragraph 42).
76 Accordingly, it is for the applicant to prove not only the coexistence of the trade marks, but also that that coexistence was due to the absence of a likelihood of confusion, and to have done so by adducing evidence such as opinion polls, declarations of consumers’ associations or other evidence (see, to that effect, judgment of 13 July 2017, AIA v EUIPO – Casa Montorsi (MONTORSI F. & F.), T‑389/16, EU:T:2017:492, paragraph 71). That demonstration may be made by way of a body of evidence (see judgment of 28 April 2021, West End Drinks v EUIPO – Pernod Ricard (The King of SOHO), T‑31/20, not published, EU:T:2021:217, paragraph 129 and the case-law cited). In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time at which the application for registration of the contested mark was filed is particularly relevant (see, to that effect, judgment of 21 December 2021, CLEOPATRA QUEEN, T‑870/19, not published, EU:T:2021:919, paragraph 44).
77 In the present case, the Court finds that the applicant did not produce, during the administrative procedure or before the Court, any evidence to show that the alleged coexistence was due to the absence of a likelihood of confusion on the part of the relevant public and not to other reasons. In that regard, the mere failure by the intervener to oppose the use of the applicant’s national trade mark could be explained by a variety of reasons not necessarily meaning, in the absence of evidence to that effect, that it believed there to be no likelihood of confusion on the part of the relevant public. It must therefore be held that the applicant has not shown that criterion to exist (see, to that effect, judgment of 5 May 2015, Skype v OHIM – Sky and Sky IP International (SKYPE), T‑183/13, not published, EU:T:2015:259, paragraph 62).
78 It follows from all of the foregoing considerations that the single plea in law relied on by the applicant in support of its claim for annulment of the contested decision and rejection of the opposition must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the plea of inadmissibility raised by the intervener and on its arguments relating to the reputation of the earlier marks based on the application of Article 8(5) of Regulation 2017/1001.
IV. Costs
79 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.
80 Since the applicant has been unsuccessful, it must be ordered to pay the intervener’s costs, in accordance with the form of order sought by the intervener. However, since EUIPO has applied for the applicant to be ordered to pay the costs only in the case where the parties are summoned to attend a hearing, it is appropriate, in the absence of such a hearing, to order EUIPO to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Rada Perfumery SRL to bear its own costs and to pay those incurred by Prada SA;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Delivered in open court in Luxembourg on 26 July 2023.