JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
25 October 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark HPU AND YOU – Earlier EU and national figurative marks representing three hexagons – Earlier EU figurative mark OLIMP– Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Family of marks – Legitimate expectations – Legal certainty)
In Case T‑511/22,
Olimp Laboratories sp. z o.o., established in Dębica (Poland), represented by M. Kondrat, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sonja Schmitzer, residing in Teltow (Germany), represented by D. Breuer, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, P. Zilgalvis and E. Tichy-Fisslberger, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 10 May 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Olimp Laboratories sp. z o.o., seeks the annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 June 2022 (Case R 1888/2021-4) (‘the contested decision’).
I. Background to the dispute
2 On 3 January 2020, the intervener, Ms Sonja Schmitzer, filed an application with EUIPO for registration of the following figurative sign as an EU trade mark:
3 The goods and services in respect of which registration was sought were in Classes 5, 35 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.
4 On 15 April 2020, the applicant filed a notice of opposition to registration of the mark applied for in respect of all of the goods and services referred to in paragraph 3 above.
5 The opposition was based, after restriction by the applicant, on the following earlier marks:
– the EU figurative mark registered on 15 January 2020 under No 18 120 020, for goods in Classes 5, 29 and 30, reproduced below:
– the EU figurative mark registered on 21 June 2017 under No 16 250 607, for goods in Classes 5, 30 and 32, reproduced below:
– the Polish figurative mark registered on 31 March 2016 under number R 283459, for goods and services in, inter alia, Classes 5, 29, 30 and 35, reproduced below:
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) 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 23 September 2021, the Opposition Division rejected the opposition in its entirety.
8 On 10 November 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
II. Forms of order sought
10 The applicant claims, in essence, that the Court should:
– annul the contested decision and refer the case back to EUIPO for reconsideration;
– alter the contested decision by stating that there are relative grounds for refusal of registration of the mark applied for and that that mark is refused registration;
– make an order for costs in its favour.
11 At the hearing, in reply to the Court’s questions, the applicant explained that its first head of claim should be interpreted as seeking only the annulment of the contested decision and its second head of claim as equivalent to a claim for alteration in accordance with Article 72(3) of Regulation 2017/1001.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event of the parties being summoned to attend an oral hearing.
13 The intervener contends that the Court should dismiss the action.
III. Law
A. Admissibility of the evidence produced for the first time before the Court
14 EUIPO submits that Annexes A.5 to A.8, A.11, A.12 and A.14 to the application are produced for the first time before the Court and, therefore, must be declared inadmissible.
15 Annexes A.5 to A.8, A.11, A.12 and A.14 to the application correspond to printouts of pages from websites following a search for the expression ‘hpu disease’ using the Google search engine (A.5 to A.8), a printout of the ‘image’ results following a search for ‘Chemical structural formulas of pharmaceuticals’ using that search engine (A.11), a printout of a page from the applicant’s website ‘olimpsport.com/eu’ (A.12) and a printout of a page from the applicant’s website ‘olimp-labs.pl’ (A.14).
16 The applicant confirmed at the hearing that Annexes A.5 to A.8, A.11, A.12 and A.14 to the application had not been produced in the course of the proceedings before EUIPO, but that they nevertheless supported the facts and arguments put forward during those proceedings.
17 As the applicant acknowledged, the documents referred to in paragraph 16 above were not part of the administrative file it submitted during the proceedings before EUIPO.
18 It should be borne in mind that the purpose of actions before the Court is to obtain a review of the legality of decisions of the Boards of Appeal of EUIPO in accordance with Article 72 of Regulation 2017/1001, with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, 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).
19 The mere fact that the documents in question support only the facts and arguments raised during the proceedings before EUIPO cannot allow the Court to re-examine the facts in the light of evidence adduced for the first time before it, since the legality of a decision taken by a Board of Appeal must be assessed in the light of the information available to it (judgment of 10 March 2021, Kerry Luxembourg v EUIPO – Ornua (KERRYMAID), T‑693/19, not published, EU:T:2021:124, paragraph 34).
20 Accordingly, Annexes A.5 to A.8, A.11, A.12 and A.14 to the application must be excluded without it being necessary to assess their probative value (see, to that effect, judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19, and of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 17).
B. Substance
21 In support of the action, the applicant relies, in essence, on two pleas, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of the principles of the protection of legitimate expectations and of legal certainty.
1. The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
22 In the first plea, the applicant raises, in essence, three complaints, concerning, first, a lack of distinctive character of the word element of the mark applied for, secondly, an incorrect comparison of the signs at issue and an infringement of the ‘principle of trademarks similarity assessment’ and, thirdly, a failure to take into consideration its family of trade marks.
23 EUIPO and the intervener dispute the applicant’s arguments.
24 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. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
25 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).
26 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
27 It is in the light of the abovementioned principles that the present plea must be examined.
28 As a preliminary point, the Court considers it appropriate, as the Board of Appeal did in the contested decision, to start examining the first plea by the opposition based on the earlier mark No 18 120 020 and on the earlier Polish mark, taking into account the likelihood of confusion, which is a priori more significant between those purely figurative earlier marks and the mark applied for.
(a) The opposition based on the earlier mark No 18 120 020 and on the earlier Polish mark
(1) The relevant public and the comparison of the goods and services concerned
29 In the first place, as regards the relevant public, the Board of Appeal found, in paragraphs 19 to 23 of the contested decision, that it consisted both of the public at large and of the public of medical professionals, with a higher than average level of attention. In addition, as regards the relevant territory, it determined that, since the earlier marks are, first, an EU trade mark and, secondly, a Polish trade mark, the relevant territory was that of the European Union, which encompasses all its Member States, including Poland.
30 In the second place, in respect of the comparison of the goods and services concerned by the marks at issue, the Board of Appeal found, in paragraph 24 of the contested decision, that all the contested goods and services were identical to those covered by the earlier marks, which was the most favourable situation in which the opposition can be examined.
31 Those findings, which are not, moreover, disputed by the parties, do not contain any error of assessment and must be upheld.
(2) The comparison of the signs at issue
32 According to the case-law, 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).
33 It should be borne in mind that assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 43).
34 In the present case, the signs to be compared are the following:
– the mark applied for corresponds to the following figurative sign:
– the earlier mark No 18 120 020 corresponds to the following figurative sign:
– the earlier Polish mark corresponds to the following figurative sign:
35 Before addressing the question of the visual, phonetic and conceptual similarity of the marks issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the mark applied for.
(i) The distinctive and dominant elements of the mark applied for
36 In paragraph 33 of the contested decision, the Board of Appeal found, first, that, irrespective of whether the word ‘hpu’ is understood as an acronym of a genetic disorder by a part of the relevant public, the expression, ‘hpu and you’ formed the most distinctive and dominant element of the mark applied for and, secondly, that the figurative element representing three hexagons was secondary and is merely perceived as a decorative element.
37 The applicant submits that the expression ‘hpu and you’ is descriptive of the goods and services covered by the mark applied for and, therefore, has no distinctive character. First, the element ‘hpu’ has a descriptive character and is non-distinctive since it would be understood by the relevant public as a reference to haemopyrrollaktamuria, a metabolic disorder. Secondly, the expression ‘and you’ is non-distinctive in that it consists of some of the most common English words and the relevant public would understand it as a reference to consumers who suffer from haemopyrrollaktamuria. In those circumstances, the applicant takes the view that the most distinctive element of the mark applied for is the figurative element representing three hexagons.
38 EUIPO and the intervener dispute the applicant’s arguments.
39 In the first place, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited).
40 In the present case, the mark applied for is made up of a word element and a figurative element, as is clear from paragraph 34 above. As regards the figurative element of that mark, it consists of three white hexagons with a black border. That combination of three simple and basic geometric shapes of unremarkable colour does not appear to be original or very elaborate. Moreover, according to the case-law, basic geometric figures which include, in addition to basic shapes such as triangles or circles, structures such as ellipses or sickles, display a weak distinctive character (see, to that effect, judgment of 8 November 2017, Oakley v EUIPO – Xuebo Ye (Representation of a discontinuous ellipse), T‑754/16, not published, EU:T:2017:786, paragraph 78 and the case-law cited).
41 Therefore, it must be held that the figurative element of the mark applied for will be perceived by the relevant public as a decorative element of secondary importance and that, accordingly, it has a weak distinctive character.
42 In respect of the word element of the mark applied for, it must be stated, as the Board of Appeal did, that the expression ‘hpu and you’ is unclear and vague. It cannot be accepted that the element ‘hpu’ has any meaning for the relevant public since an understanding of that element as being an acronym of the word ‘haemopyrrollaktamuria’ does not constitute a well-known fact and the applicant has not proved that the relevant public would immediately perceive the term ‘hpu’ as referring to that genetic disorder, and even less that that same public would grasp the meaning of that reference.
43 Since Annexes A.5 to A.8 are not admissible, as is apparent from paragraph 20 above, the only admissible evidence which the applicant submits concerning the meaning of the element ‘hpu’ are Annexes A.4, consisting of a printout of a search results page for the expression ‘hpu disease’ using the search engine Google, and A.9, consisting of a printout of a page from the intervener’s website ‘hpuandyou.de/en’. However, the reference to haemopyrrollaktamuria on a website and on a results page using the search engine Google in the context of a search for an expression including the element ‘hpu’ and not that element alone, is insufficient to find, first, that the relevant public will perceive the term ‘hpu’ alone as referring to haemopyrrollaktamuria and, secondly, that that public is familiar with that reference in such a way that it will immediately understand its scope without further thought.
44 Consequently, the applicant has not succeeded in establishing that the relevant public will perceive the element ‘hpu’ of the mark applied for as a common designation of haemopyrrollaktamuria and that it will understand the meaning of the term ‘haemopyrrollaktamuria’ with the result that it will establish a sufficiently specific and direct link with the goods and services concerned to enable that public immediately to perceive, without further thought, a description of those goods and services.
45 Accordingly, the applicant’s argument that the element ‘hpu’ is the acronym of haemopyrrollaktamuria and descriptive of the goods and services covered by the mark applied for must be disregarded. Given the lack of meaning of the element ‘hpu’, the meaning of the expression ‘hpu and you’ must be regarded as vague and unclear for the relevant public. Therefore, the word element of that mark, namely ‘hpu and you’, has an average distinctive character since it has no semantic relationship with the goods and services in respect of which registration of that mark is applied for.
46 In addition, according to the case-law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
47 In the second place, as regards the assessment of the dominant character of one or more given components of a composite trade mark, it is true that, in the case of such a mark, the figurative element may rank equally with the word element (judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 37). However, it also follows from the case-law that the figurative elements of a figurative mark are not necessarily the dominant components of that mark (see, to that effect and by analogy, judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 36). Account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of that mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
48 In the present case, the figurative element of the mark applied for is located in the top left corner of the sign and occupies less space than the word element placed in the centre and in the bottom left corner of that sign. Moreover, the lines making up the geometric shapes are finer, and therefore less likely to attract the relevant public’s attention, than those which make up the letters of the word element.
49 It follows that the figurative element is of secondary importance in the sign applied for and is not likely to convey a message that would enable the relevant public to memorise it easily. By contrast, the relevant public’s attention will be drawn to the word element ‘hpu and you’ on account of its larger size, its central positioning in the sign and its readability.
50 In the light of all of the foregoing, the relevant public will perceive the word element ‘hpu and you’ as being the most distinctive and dominant element in the overall impression produced by the mark applied for, but will pay only a secondary level of attention to the figurative element of that mark.
51 It follows that the Board of Appeal did not make an error of assessment in finding that the word element ‘hpu and you’ was the most distinctive and dominant element in the mark applied for.
52 The applicant’s first complaint, alleging a lack of distinctive character of the word element of the mark applied must therefore be rejected as unfounded.
(ii) The visual comparison of the signs
53 In paragraph 35 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to a low degree. First, it made clear that those signs differed in the word element present in the sign applied for, which forms the most distinctive and dominant part of it. Secondly, it acknowledged that those signs coincided in the depiction of three hexagons, which are only secondary in the sign applied for and, in any event, are not depicted in the same manner.
54 The applicant argues that the Board of Appeal should have restricted the comparison of the signs at issue to the only figurative element of the mark applied for. According to the applicant, those signs coincide in the depiction of three hexagons, which are positioned identically, side by side, and, therefore, are visually very similar.
55 EUIPO and the intervener dispute the applicant’s arguments.
56 First of all, it should be noted that applicant’s argument is based on an incorrect premiss, since, as has been stated in paragraph 33 above, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. Therefore, the Board of Appeal was correct in comparing the marks at issue in their entirety by taking into consideration both the figurative element and the word element of the mark applied for.
57 Next, as has been established in paragraph 51 above, the most distinctive and dominant element of the mark applied for is the word element ‘hpu and you’. As the intervener correctly contends, that word element has no counterpart in the early marks. That fact accentuates the difference between the signs at issue.
58 Lastly, even though the signs at issue all contain a combination of three hexagons, it must be stated that those combinations of three hexagons differ in their orientation, their position and their colour. First, the hexagons of the earlier signs have the same orientation and the same position in those signs, whereas those present in the sign applied for are sloped at an angle of approximately 15 degrees compared with the hexagons of the earlier signs. That inclination has an equal impact on the position of the hexagons in the sign applied for. Secondly, the hexagons are dark grey and white in the earlier sign No 18 120 020, white, yellow and grey in the earlier Polish sign and white in the sign applied for. Moreover, the combination of three hexagons is only secondary in the mark applied for.
59 Therefore, taking into account the differences between the signs at issue, correctly observed by the Board of Appeal, its finding concerning their weak degree of visual similarity must be upheld.
(iii) The phonetic comparison of the signs
60 It should be recalled that, according to the case-law, a phonetic comparison is not relevant in the examination of the similarity of a figurative mark without word elements with another mark (see, to that effect, judgments of 25 March 2010, Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 67, and of 7 February 2012, Dosenbach-Ochsner v OHIM – Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 45).
61 Consequently, as the Board of Appeal correctly noted in paragraph 36 of the contested decision, there is no need to make a phonetic comparison of the signs at issue, given that the earlier mark No 18 120 020 and the earlier Polish mark have no word elements, as is apparent from paragraph 34 above. Moreover, that finding is not disputed by the applicant.
(iv) The conceptual comparison of the signs
62 In paragraph 37 of the contested decision, the Board of Appeal found that no conceptual comparison could be carried out in view of the lack of conceptual meaning of the earlier marks.
63 The applicant claims that conceptually, the figurative elements of the signs at issue, besides the fact that they all depict a hexagonal shape, also refer to the independently identifiable concept of chemical compounds’ structural formulae used in, inter alia, the composition of pharmaceuticals. The signs at issue are consequently very similar.
64 The intervener disputes the applicant’s argument.
65 In the present case, first, as regards the earlier marks, it is sufficient to state that the applicant has not established to the requisite legal standard that the link between those marks and the concept of chemical compounds’ structural formulae used in, inter alia, the composition of pharmaceuticals is evident for the relevant public. The only element of proof that the applicant submits in that regard, namely Annex A.11, is inadmissible, as is clear from paragraph 20 above. Accordingly, it must be held that the earlier marks do not convey any concept.
66 Secondly, the elements which make up the mark applied for, taken both individually or as a whole, are devoid of semantic content. As is clear from paragraph 45 above, the word element ‘hpu and you’ has no meaning, whereas the figurative element, consisting of three hexagons, does not convey any concept, for the same reasons as those set out in paragraph 65 above. Moreover, the applicant has not established that the mark applied for has a conceptual meaning.
67 It must therefore be held that the signs at issue have no clear and specific meaning that the relevant public would be capable of grasping immediately.
68 According to well-established case-law, where none of the signs at issue taken as a whole has any meaning, it must be found that the conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).
69 The Board of Appeal was therefore correct in finding that no conceptual comparison of the marks at issue was possible.
70 In addition, even if the earlier marks referred to the concept of a chemical compound’s structural formulae, as the applicant asserts, the signs at issue differ conceptually, given that the mark applied for, taken as a whole, has no meaning, as has been established in paragraph 66 above.
71 As follows from the case-law, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks in question 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).
72 Therefore, the applicant’s second complaint, alleging an incorrect comparison of the signs at issue and an infringement of the ‘principle of trademarks similarity assessment’ must be rejected as unfounded.
(3) The global assessment of the likelihood of confusion and the existence of a family of marks
73 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).
74 The Board of Appeal found that there was no likelihood of confusion even taking into account identical goods and services, given that the relevant public’s level of attention, which consists of the public at large and medical professionals in the European Union, varied from higher than average to heightened, that the signs at issue were visually similar to a low degree, that no phonetic and conceptual comparison could be carried out on account of the purely visual aspect of the earlier marks and that the distinctive character of those marks was below average. Furthermore, it found that the applicant’s claim of a family of marks could not be upheld on the ground that the applicant had not adduced any evidence of the existence of that family of marks in which the common element is the specific combination of three hexagons.
75 The applicant argues, first of all, that it owns a family of trade marks containing the specific combination of three hexagons, which undoubtedly has a high degree of distinctiveness. Consequently, the relevant public knows those marks and directly associates goods marketed with the specific combination of three hexagons with one brand originating from the same undertaking. Next, the applicant submits that it has proved that all its marks belonged to the same series of marks and that it used the marks forming a family of trade marks on the market. Lastly, the applicant claims that there is a very high likelihood that the mark applied for will be associated with its goods, primarily due to the high visual similarity of the signs at issue and the identity of the goods and services concerned. According to the applicant, those circumstances lead to the finding that the sign applied for belongs to the applicant’s family of marks.
76 EUIPO and the intervener dispute the applicant’s arguments.
77 First, it follows from the foregoing considerations that the signs at issue are visually similar only to a low degree and that no phonetic and conceptual comparison can be carried out. Therefore, notwithstanding the identity of the goods and services concerned by the marks at issue, it cannot be concluded that there is a likelihood of confusion between those marks, all the more so in respect of a relevant public with a higher than average level of attention.
78 It must therefore be held that the Board of Appeal did not make an error of assessment in finding that there was no likelihood of confusion on the part of the relevant public between, on the hand, the earlier mark No 18 120 020 and the earlier Polish mark and, on the other, the mark applied for.
79 Secondly, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of a series, where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and, therefore, that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods and the services covered by those marks, may exist even where, as in this case, the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion. In such a case, the likelihood that the relevant public may mistake the commercial origin of the goods or services in question does not result from the possibility of its confusing the trade mark applied for with one of the earlier marks in a series, but from the possibility of its considering that the trade mark applied for forms part of the same series (see, to that effect, judgment of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 124).
80 However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied. Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series (judgment of 23 February 2006, BAINBRIDGE, T‑194/03, EU:T:2006:65, paragraphs 125 to 127).
81 In the present case, as is clear from the file and as the Board of Appeal correctly found, the applicant has not adduced any proof of use of its alleged series of marks, which is not sufficient in order for the first cumulative condition, set out in paragraph 80 above, to be satisfied.
82 Without it being necessary to examine whether the second cumulative condition set out in paragraph 80 above is satisfied, it must therefore be held that, since the applicant has not established to the requisite legal standard that its alleged family of marks had been put to use, the Board of Appeal correctly disregarded the arguments by which the applicant claimed entitlement to the protection due to ‘families of marks’.
83 The applicant’s third complaint, alleging a failure to take into consideration its family of trade marks must therefore be rejected as unfounded.
84 In the light of all of the foregoing considerations, it must be held that the Board of Appeal did not make an error of assessment in ruling out the existence of a likelihood of confusion between, on the one hand, the earlier mark No 18 120 020 and the earlier Polish mark and, on the other, the mark applied for.
(b) The opposition based on the earlier mark No 16 250 607
85 In paragraph 48 of the contested decision, the Board of Appeal found that the earlier mark No 16 250 607 consisted of the word element ‘olimp’, which further differentiated it from the mark applied for. Accordingly, it noted that the opposition on the basis of that other earlier mark also had to be rejected.
86 The applicant has adduced no element seeking specifically to dispute that finding and the Board of Appeal’s assessments which support it.
87 The Board of Appeal’s finding set out in paragraph 48 of the contested decision must, in any event, be upheld, to the extent that, as is clear from paragraph 5 above, the earlier mark No 16 250 607 differs further from the mark applied for on account of the additional word element ‘olimp’. Although the Board of Appeal correctly found that there was no likelihood of confusion between, on the one hand, the earlier mark No 18 120 020 and the earlier Polish mark and, on the other, the mark applied for, such a likelihood of confusion cannot, a fortiori, exist on the part of the relevant public as regards the earlier mark No 16 250 607 relied on in support of the opposition.
88 Accordingly, the Board of Appeal was correct in ruling out the existence of a likelihood of confusion on the part of the relevant public as regards the earlier mark No 16 250 607.
89 It follows that the first plea must be rejected as unfounded.
2. The second plea, alleging infringement of the principles of the protection of legitimate expectations and of legal certainty
90 The applicant argues that EUIPO is infringing the principles of the protection of legitimate expectations and of legal certainty by failing to refuse registration of the mark applied for when the applicant has rights relating to marks very similar to that mark. It submits that the marks containing the combination of three hexagons are widely used in trade and are recognisable by consumers. In those circumstances, registration of a mark which is visually similar to such a level and which incorporates the distinctive hexagon characteristic of the applicant’s family of trade marks in its entirety, for similar and identical goods and services, would completely defeat the point of obtaining the right to register a trade mark and investing further in the protection of that mark. The applicant also claims that, in ten earlier decisions of EUIPO, registration was refused in respect of figurative marks applied for subsequently on the ground that those marks were regarded as visually similar.
91 EUIPO disputes the applicant’s arguments.
92 In that regard, it must be stated, in the first place, that, according to settled case-law, the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal 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 (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 26 March 2019, Parfümerie Akzente v EUIPO (GlamHair), T‑787/17, not published, EU:T:2019:192, paragraph 36 and the case-law cited).
93 It follows that EUIPO’s earlier decisions cannot give rise to legitimate expectations (judgments of 7 October 2015, The Smiley Company v OHIM (Shape of a smiley with heart-shaped eyes), T‑656/13, not published, EU:T:2015:758, paragraph 48, and of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 72).
94 In the second place, it follows from the case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76, and of 17 September 2019, Grupo Bimbo v EUIPO – Rubio Snacks (Tia Rosa), T‑464/18, not published, EU:T:2019:607, paragraph 70).
95 In the present case, to the extent that the Board of Appeal has carried out a full and specific examination of the existence of a likelihood of confusion between the marks at issue in order to reject the opposition, the applicant cannot reasonably rely on earlier decisions of EUIPO in order to cast doubt on the finding that such a likelihood of confusion exists between those marks, all the more so because it has not explained how those decisions were relevant in respect of the examination of the facts in the present case.
96 In any event, that finding cannot be called into question by the applicant’s argument that the mark applied for includes the distinctive hexagon characteristic of the earlier marks and is visually similar to such an extent that its registration would completely defeat the point of obtaining the right to register a trade mark and investing further in the protection of that mark. As is clear from paragraphs 58 and 59 above, the combination of three hexagons in each of the signs at issue differs in position, colour and orientation of those hexagons and those signs are visually similar only to a low degree. Accordingly, the premiss on which the applicant’s argument is based is incorrect and that argument must be disregarded.
97 Therefore, in the light of all of the foregoing, the second plea must be rejected.
98 In view of all of the foregoing considerations, since neither of the pleas relied on by the applicant in support of the form of order sought by it can be upheld, the applicant’s first head of claim, seeking the annulment of the contested decision and, consequently, its second head of claim for alteration of that decision must be rejected.
IV. Costs
99 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.
100 As a hearing took place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
101 Since the intervener has not applied for costs, she must be ordered to bear her own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Olimp Laboratories sp. z o.o. to pay the costs;
3. Orders Ms Sonja Schmitzer to bear her own costs.
Costeira | Zilgalvis | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 25 October 2023.
V. Di Bucci | | S. Papasavvas |