JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
8 February 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark UNISKIN by Dr. Søren Frankild – Earlier national figurative mark UNICSKIN YOUR EFFECTIVE SOLUTION – Relative ground for refusal – Likelihood of confusion – Similarity of the goods and services – Distinctive character of the earlier mark – Similarity of the signs – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑787/21,
UniSkin ApS, established in Silkeborg (Denmark), represented by M. Hoffgaard Rasmussen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Unicskin, SL, established in Madrid (Spain),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov (Rapporteur), President, G. De Baere and D. Petrlík, Judges,
Registrar: E. Coulon,
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, UniSkin ApS, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 October 2021 (Case R 771/2021-4) (‘the contested decision’).
Background to the dispute
2 On 15 November 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The sign in respect of which registration was sought covers goods and services in Classes 3, 5 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, corresponding, for each of those classes, to the following description:
– Class 3: ‘Skin care preparations; skincare cosmetics’;
– Class 5: ‘Pharmaceutical preparations for skin care’;
– Class 35: ‘Retailing and online retailing of skin care preparations and cosmetic and pharmaceutical preparations for skin care’.
4 On 10 February 2020, Unicskin, SL 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 on, inter alia, the following Spanish trade mark No M 3 660 108:
6 That mark covers goods in Class 3 corresponding to the following description: ‘Cosmetic preparations for skin care; beauty masks’.
7 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).
8 On 2 March 2021, the Opposition Division upheld the opposition.
9 On 29 April 2021, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
10 By the contested decision, the Board of Appeal dismissed the appeal.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
14 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. That likelihood of confusion includes the likelihood of association with the earlier trade mark.
15 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).
16 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the signs 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).
17 In the contested decision, the Board of Appeal pointed out that, since the earlier mark was a Spanish trade mark, the relevant territory to be taken into consideration in assessing the likelihood of confusion was the territory of Spain. It also observed that the goods covered by the earlier mark and the goods and services covered by the mark applied for were aimed at the general public but also at a professional public with specific knowledge and that their level of attention would therefore vary from average to high. The applicant does not dispute that definition of the relevant public and the relevant territory.
The comparison of the goods and services at issue
18 The Board of Appeal found, in paragraphs 12 to 19 of the contested decision, that the goods in Class 3 covered by the mark applied for were identical to the goods in that class covered by the earlier mark and that the goods and services in Classes 5 and 35 respectively covered by the mark applied for were similar to an average degree to the goods covered by the earlier mark.
19 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
20 In the present case, as regards, in the first place, the comparison of the goods in Class 3 covered by the signs at issue, the applicant acknowledges, on the one hand, that the ‘cosmetic preparations for skin care’ covered by the earlier mark are identical to the goods covered by the mark applied for, namely ‘skin care preparations; skincare cosmetics’. On the other hand, it takes the view that the ‘beauty masks’ covered by the earlier mark are only similar to a low degree to the goods covered by the mark applied for since they are not of the same nature and are ‘inherently different’ from the goods covered by the mark applied for.
21 EUIPO disputes the applicant’s arguments.
22 In that regard, it must be stated, as is acknowledged by the applicant, that beauty masks are goods which consist of certain fluids in order to purify or moisturise the skin. Consequently, they are cosmetic preparations for skin care and are therefore identical to the ‘skin care preparations; skincare cosmetics’ covered by the mark applied for. The Board of Appeal did not therefore make any error of assessment in finding that the goods in Class 3 covered by the mark applied for and the earlier mark were identical.
23 In the second place, as regards the comparison between the goods in Class 5 covered by the mark applied for, namely ‘pharmaceutical preparations for skin care’, and the goods in Class 3 covered by the earlier mark, the Board of Appeal found, in paragraph 17 of the contested decision, that they shared the same distribution channels, were aimed in large part at the same public and were all intended to be applied to the skin. According to the Board of Appeal, the only difference between them was that the goods in Class 5 were medical products and the goods in Class 3 were non-medical products. On that basis, the Board of Appeal found that those goods were similar to an average degree.
24 The applicant submits that the goods in Class 5 covered by the mark applied for are only similar to a low degree to the goods covered by the earlier mark on the ground, first, that they do not have the same purpose and the same composition, since pharmaceutical preparations have the purpose of caring for the skin, whereas cosmetic preparations have the purpose of beautifying the skin, and, secondly, that those goods are not in competition with each other and are not aimed at the same relevant public.
25 EUIPO disputes the applicant’s arguments.
26 It must be stated, first of all, that the Court has already held that certain goods in Class 3, such as cosmetics, and certain goods in Class 5, such as pharmaceutical products, can have the same purpose, be sold through the same distribution channels, such as pharmacies or other specialist shops, and often be manufactured by the same companies and aimed at the same end users (see, to that effect, judgment of 24 March 2021, Laboratorios Ern v EUIPO – Sanolie (SANOLIE), T‑175/20, not published, EU:T:2021:165, paragraph 41 and the case-law cited). It must also be borne in mind that the Court has already held that the category of pharmaceuticals is a broad category which groups together goods whose intended purpose or benefits can be similar to those of cosmetics and that pharmaceuticals can have both medical and cosmetic properties. That is the case, in particular, as regards a medicated cream which can, like a cosmetic cream, have effects on the appearance of the skin by moisturising it or by soothing inflammation (judgment of 30 June 2021, Makk v EUIPO – Ubati Luxury Cosmetics (PANTA RHEI), T‑501/20, not published, EU:T:2021:402, paragraph 33).
27 In the present case, it is not disputed that the ‘pharmaceutical preparations for skin care’ in Class 5 covered by the mark applied for and the ‘cosmetic preparations for skin care’ in Class 3 covered by the earlier mark often share the same distribution channels. Furthermore, contrary to what the applicant claims, the goods in question are to a large extent aimed at the same public, namely the general public. Regarding the purpose of the goods in question, it is also common ground that pharmaceutical preparations for skin care treat health problems pertaining to the skin whereas the cosmetic preparations covered by the earlier mark are intended to improve the physical appearance of the skin. Furthermore, as EUIPO rightly submits, the goods in question can be used together or one after the other, which creates a close connection between them. Lastly, although the pharmaceutical preparations covered by the mark applied for have a different nature from that of the cosmetic preparations covered by the earlier mark, on account of their therapeutic indication, they are both intended to be applied to the skin in order to care for it.
28 It follows from the foregoing considerations that the Board of Appeal did not make any error of assessment in finding that there was an average degree of similarity between the ‘pharmaceutical preparations for skin care’ in Class 5 covered by the mark applied for and the ‘cosmetic preparations for skin care’ in Class 3 covered by the earlier mark.
29 In the third place, as regards the comparison between the services of ‘retailing and online retailing of skin care preparations and cosmetic and pharmaceutical preparations for skin care’ in Class 35 covered by the mark applied for and the goods in Class 3 covered by the earlier mark, the Board of Appeal pointed out, in paragraphs 18 and 19 of the contested decision, that those services related to the goods covered by the earlier mark. It also stated that those services were provided when those goods were sold and that, on account of that close connection, they were complementary and were offered to the same public. Consequently, it found that those services were similar to an average degree to the goods in Class 3 covered by the earlier mark.
30 The applicant submits that the services of ‘retailing and online retailing of skin care preparations and cosmetic preparations for skin care’ covered by the mark applied for are, at most, similar to a low degree to the goods covered by the earlier mark. It argues that there is no similarity between the services of ‘retailing and online retailing of pharmaceutical preparations for skin care’ covered by the mark applied for and the goods covered by the earlier mark, since ‘pharmaceutical preparations for skin care’ are not identical or even similar to an average degree to the ‘cosmetic preparations for skin care’ covered by the earlier mark.
31 EUIPO disputes the applicant’s arguments.
32 It must be borne in mind that the principles applicable to the comparison of goods also apply to the comparison between goods and services. It is true that, owing to their very nature, in particular the fact that goods are fungible and services are not, goods are generally different from services (judgment of 24 January 2019, Brown Street Holdings v EUIPO – Enesan (FIGHT LIFE), T‑800/17, not published, EU:T:2019:31, paragraph 25). Nevertheless, the fact remains that they can be complementary or that the services can have the same subject or purpose as the goods and therefore be in competition with them. It follows that, in some cases, goods and services can be found to be similar. In particular, it is apparent from the case-law that there is a similarity between goods and retail services which relate to those goods (see judgment of 5 July 2012, Comercial Losan v OHIM – McDonald’s International Property (Mc. Baby), T‑466/09, not published, EU:T:2012:346, paragraph 24 and the case-law cited).
33 In the present case, the Board of Appeal did not make any error of assessment in finding that there was an average degree of similarity between the services of ‘retailing and online retailing of skin care preparations and cosmetic preparations for skin care’ in Class 35 covered by the mark applied for and the goods covered by the earlier mark, since those services, as is apparent from their description, relate to those goods.
34 The same conclusion applies as regards the services of ‘retailing and online retailing of pharmaceutical preparations for skin care’, since those goods are similar to an average degree to the ‘cosmetic preparations for skin care’ covered by the earlier mark, as has been pointed out in paragraph 28 above.
35 Consequently, the applicant’s arguments regarding the comparison of the goods covered by the signs at issue must be rejected.
The comparison of the signs at issue
36 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).
The distinctive and dominant elements of the signs at issue
37 In paragraph 22 of the contested decision, the Board of Appeal found that the dominant elements of the signs at issue were ‘u uniskin’ with regard to the mark applied for and ‘unicskin’ with regard to the earlier mark. It also noted that, although the letter ‘u’ in the mark applied for would be perceived as such, it would be regarded as a repetition of the first letter in the term ‘uniskin’ and not as an independent element, with the result that its influence on the comparison of the signs had to be limited. Furthermore, it is apparent from paragraph 23 of the contested decision, that the Board of Appeal took the view that those dominant elements were the most distinctive elements in the signs at issue.
38 First, the applicant does not dispute the finding that the word element ‘unicskin’ is the dominant element in the earlier mark. However, it disputes the distinctive character of that element, stating that the relevant public will understand the English word ‘skin’ as meaning ‘skin’ and the element ‘unic’ as referring to the word ‘unique’, with the result that the word element ‘unicskin’ will be understood as meaning ‘unique skin’, which is descriptive of the goods covered by the earlier mark. Secondly, the applicant agrees with the Board of Appeal, first, that the dominant elements in the mark applied for are the figurative element ‘u’ and the word ‘uniskin’ and, secondly, that the word ‘uniskin’ is distinctive to a normal degree. By contrast, contrary to what the Board of Appeal found, it takes the view that the figurative element ‘u’ in the mark applied for must also be regarded as having a normal degree of distinctiveness and not as being of limited importance. Furthermore, it states that the word element ‘by Dr. Søren Frankild’, on account of its font emulating handwriting, must not be considered to be negligible.
39 EUIPO disputes the applicant’s arguments.
40 First, the Court notes that the earlier mark is a figurative mark which comprises the word element ‘unicskin’ in the centre of the sign in large upper-case letters in a rather standard font and the word element ‘your effective solution’ written in much smaller upper-case letters below that first element. The dominant nature of the first word element, because of its size and position in the earlier mark, is not disputed.
41 As regards its distinctive character, even if, as the applicant submits, the word ‘skin’ in English were understood by the relevant public, in the present case in the territory of Spain, as meaning ‘skin’, and the element ‘unic’ were understood by that public as referring to the term ‘unique’, the fact remains that the term ‘unicskin’, taken as a whole, is a fanciful term, which does not exist as such either in English or in Spanish. As EUIPO rightly points out, the segmentation of that word into two separate elements, namely ‘unic’ and ‘skin’, and the association of that first element with the word ‘unique’ and translation of that second element from English into Spanish requires some reflection, particularly because the word ‘unic’, which is supposed to refer to the term ‘unique’, is misspelt, irrespective of the language concerned, and the term ‘unicskin’ does not contain any space between the elements ‘unic’ and ‘skin’. Moreover, even if, as the applicant submits, a link between the word ‘unicskin’ and the expression ‘unique skin’ could immediately be established by the relevant public, that expression is not an expression with which the relevant public is familiar or which is used by it. It does not therefore, either in English or in Spanish, refer to any specific meaning.
42 The other word element in the earlier mark, on account of its size and its position in the sign, must be considered to be secondary, a point which is not disputed.
43 Consequently, the Board of Appeal did not make any error of assessment in finding that the word element ‘unicskin’ has a normal degree of distinctiveness and that it is the dominant element in the earlier mark.
44 Secondly, the Court notes that the mark applied for is a figurative mark which comprises the word element ‘uniskin’ written in large upper-case letters in a rather standard font in the centre of the sign and, below that first element, the word element ‘by Dr. Søren Frankild’ written in much smaller letters in a font that is difficult to read, as regards the part ‘Søren Frankild’, which is reminiscent of a handwritten signature. Furthermore, there is a figurative element consisting of a large upper-case letter ‘u’ in the background and in the centre of the sign.
45 The Board of Appeal rightly found that the dominant elements in the mark applied for are the word element ‘uniskin’ and the figurative element ‘u’, but that that latter element would have only a limited influence on the comparison of the signs at issue. The letter ‘u’ in the background of the mark applied for is likely to be perceived as a repetition of the first letter in the word ‘uniskin’ and not as an independent element.
46 As for the word element ‘by Dr. Søren Frankild’, that element must, as the Board of Appeal found in paragraph 23 of the contested decision, be regarded as being of less importance. It is sufficient to state that, on account of its size, its position in the sign and the fact that its font makes part of it difficult to read, it is of secondary importance in the assessment of the similarity between the signs at issue.
The visual similarity
47 The Board of Appeal found, in paragraph 23 of the contested decision, that the signs at issue were visually similar to an average degree. It took the view that the elements ‘uniskin’ in the mark applied for and ‘unicskin’ in the earlier mark would be the most eye-catching elements for the public. It noted in that regard that those two elements coincided in seven letters and that the signs at issue differed in elements of less importance, such as the middle letter ‘c’ in the earlier mark, the figurative element ‘u’ included in the mark applied for and the remaining secondary word elements in both of the signs at issue, and also differed in their typography.
48 The applicant submits that the earlier mark and the mark applied for comprise respectively four and five words, consisting in total of 29 and 25 letters, only seven of which they have in common, and that there is no complete similarity between those letters in common on account of the presence of the letter ‘c’ in the centre of the term ‘unicskin’ in the earlier mark. Furthermore, it observes that the figurative element ‘u’ in the mark applied for cannot be ignored because it is very noticeable. What is more, it contends that the secondary elements in the signs at issue differ, because the handwritten font used in the mark applied for creates a certain visual difference between it and the earlier mark. The applicant concludes that the signs at issue are visually similar only to a low degree.
49 EUIPO disputes the applicant’s arguments.
50 First, it must be pointed out that the Board of Appeal correctly determined the elements of similarity between the signs at issue. On the one hand, the dominant word elements in the signs at issue, namely the terms ‘unicskin’ and ‘uniskin’, coincide in almost all of the letters comprising them, with the exception of the letter ‘c’, which is placed in the middle of the dominant element in the earlier mark. On the other hand, the letters which coincide appear in the same order in both signs, which reinforces the visual similarities between the signs. Moreover, those terms are those which most attract the relevant public’s attention, as has been held in paragraphs 43 and 45 above. Lastly, as EUIPO correctly observes, those two elements are depicted in rather standard fonts.
51 Secondly, the Board of Appeal was also right in pointing out that the signs at issue differed, on the one hand, in the presence of a figurative element consisting of the letter ‘u’ in the mark applied for and, on the other hand, in their secondary word elements. However, the Board of Appeal found, without making any error of assessment, that those differences, as a whole, were not sufficient to offset the similarities which have been found to exist in paragraph 50 above. It is precisely on account of those differences that the Board of Appeal found that there was an average and not a high degree of visual similarity between the signs at issue.
52 Consequently, the Board of Appeal did not make any error of assessment in finding that the signs at issue were visually similar to an average degree.
The phonetic similarity
53 In paragraph 24 of the contested decision, the Board of Appeal found that there was a high degree of phonetic similarity between the signs at issue. In that regard, it noted that the dominant elements ‘uniskin’ in the mark applied for and ‘unicskin’ in the earlier mark would be the only elements which would be pronounced in the signs at issue, because the figurative element constituted by the upper-case letter ‘u’, which is represented in the mark applied for, would be perceived as a repetition of the initial letter in the term ‘uniskin’ and the other components in the signs at issue were of a secondary nature. The Board of Appeal also found that the two terms ‘uniskin’ and ‘unicskin’ differed only in the sound of the middle letter ‘c’ in the earlier mark.
54 The applicant does not dispute the Board of Appeal’s finding that only the elements ‘uniskin’ and ‘unicskin’ will be pronounced by the relevant public. By contrast, it submits that the letter ‘c’ in the earlier mark ‘creates an entirely different aural experience’, as a result of which the signs at issue are phonetically similar only to a very low degree.
55 EUIPO disputes the applicant’s arguments.
56 According to the case-law, where a composite sign consists of several word elements, it is quite conceivable that some of them may, because of their size, colour or position, for example, attract the consumer’s attention more, so that he or she, needing to refer orally to the sign, will be prompted to pronounce only those elements and to disregard the others. The visual impression created by the specific graphic features of the word elements of a composite sign is therefore liable to influence the sound representation of the sign (see, to that effect, judgment of 25 May 2005, Creative Technology v OHIM – Vila Ortiz (PC WORKS), T‑352/02, EU:T:2005:176, paragraph 44).
57 In that regard, it must be stated that it is common ground that the relevant public is likely to pronounce only the elements ‘uniskin’ and ‘unicskin’ in the signs at issue. Consequently, the phonetic comparison must focus on those elements, which are almost identical in length and consist of seven and eight letters respectively, seven of which are identical, placed in the same order (with the exception of the letter ‘c’ in the earlier sign) and pronounced in the same way. The elements to be compared therefore coincide in the syllables ‘uni’ and ‘skin’, which are pronounced in the same way in both marks and are separated only by the letter ‘c’ in the earlier mark, which constitutes merely a minor phonetic difference. The applicant’s argument seeking to claim the contrary is in no way substantiated.
58 Consequently, the Board of Appeal did not make any error of assessment in finding that there was a high degree of phonetic similarity between the signs at issue.
The conceptual similarity
59 The Board of Appeal pointed out, in paragraph 25 of the contested decision, that the comparison between the signs at issue was neutral from a conceptual standpoint, since those signs did not convey any specific meaning for the relevant public.
60 The applicant submits that the word element ‘unicskin’ in the earlier mark is a combination of the terms ‘unic’ and ‘skin’, which will be understood by the relevant public, according to the reasoning which has been set out in paragraph 38 above, as meaning ‘unique skin’. It adds that the expression ‘your effective solution’ in the earlier mark will be understood by the relevant public as ‘your successful means to solve a problem’ or ‘your successful liquid mixture to produce a desired result’. Furthermore, the applicant takes the view that the mark applied for consists of the figurative element ‘u’, which has no specific meaning, the word element ‘by Dr. Søren Frankild’, which means that the goods and services at issue are associated with the person Doctor Søren Frankild, and the word ‘uniskin’, which will not be dissected by the relevant public and therefore, unlike the earlier mark, has no conceptual meaning. It concludes that there is no conceptual similarity between the signs at issue.
61 EUIPO disputes the applicant’s arguments.
62 First, it must be stated that, as was found by the Board of Appeal, it is likely, on account of the Spanish public’s low degree of understanding of English (see judgment of 26 February 2016, Mederer v OHIM – Cadbury Netherlands International Holdings (Gummi Bear-Rings), T‑210/14, not published, EU:T:2016:105, paragraph 52 and the case-law cited), that a non-negligible part of the relevant public will not understand the meaning of the word ‘skin’ or, at the very least, will not identify that word within the signs at issue. In that case, the terms ‘unicskin’ and ‘uniskin’ will be perceived, as a whole, as fanciful terms which do not exist in Spanish and will not therefore have any conceptual meaning for that part of the relevant public, like most of the other secondary elements in the signs at issue. Consequently, for that part of the relevant public, the conceptual comparison of the signs at issue is neutral.
63 Secondly, it is also likely, as the applicant claims, that another part of the relevant public will understand the English word ‘skin’. In that case, that part of the relevant public will associate the signs at issue with the concept of skin. Contrary to what the applicant submits, it is not reasonable to assume that that part of the relevant public will identify the word ‘skin’ in the term ‘unicskin’ but not in the term ‘uniskin’, even though that word comes at the end of both signs.
64 It is also likely, as the applicant submits, that that part of the relevant public will understand the term ‘unic’ in the earlier mark as referring to the word ‘unique’, on account of the similarity between that term and its Spanish translation (‘único’). For the same reason, that part of the relevant public will also understand the term ‘uni’ in the mark applied for as referring to the word ‘one’ (‘un’ or ‘uno’ in Spanish). It is true that, unlike the element ‘uni’, which refers to the concept of oneness, the element ‘unic’ could also refer to the concept of uniqueness. However, the fact remains that those two concepts are similar.
65 Consequently, for the part of the relevant public which will understand both the meaning of the word ‘skin’ and those of the terms ‘unic’ and ‘uni’, the conceptual comparison of the signs at issue culminates in an average degree of conceptual similarity.
66 Lastly, as regards the other elements in the signs at issue, it must be stated that their impact on the conceptual comparison is merely limited, on account of their secondary nature (see paragraphs 42 and 46 above).
67 It follows from the foregoing that the conceptual comparison of the signs at issue is, for part of the relevant public, neutral, whereas, for another part of that public, those signs are conceptually similar to an average degree.
The distinctive character of the earlier mark
68 In paragraphs 26 to 28 of the contested decision, the Board of Appeal found that, since the earlier mark had no meaning with regard to any of the goods and services in question, its distinctiveness had to be considered to be normal.
69 The applicant, reproducing, in essence, the line of argument which has been set out in paragraphs 38 and 60 above, disputes the distinctive character of the earlier mark as a whole and submits that that mark has very limited distinctiveness, or even no distinctiveness.
70 EUIPO disputes the applicant’s arguments.
71 In that regard, it must be stated that, as has been observed in paragraphs 41 and 43 above, the term ‘unicskin’ has a normal degree of distinctiveness in the earlier mark. That finding is not called into question by the presence of the expression ‘your effective solution’ on account of its secondary importance in the earlier mark and, even if its meaning were to be understood by part of the relevant public, on account of the fact that that expression would be perceived as a mere promotional slogan. The Board of Appeal was therefore right in finding that the earlier mark, assessed as a whole, had a normal degree of distinctiveness.
The likelihood of confusion
72 In paragraphs 29 to 33 of the contested decision, the Board of Appeal found that there was a likelihood of confusion, in the light of the similarity, or even identity, of the goods and services at issue, the average degree of visual similarity and the high degree of phonetic similarity between the signs at issue and the normal degree of distinctiveness of the earlier mark.
73 The applicant relies in this respect on the ‘lack of similarities’ or, at the very most, the existence of ‘limited similarities’ between the marks at issue. Consequently, according to the applicant, there is no likelihood of confusion.
74 EUIPO disputes the applicant’s arguments.
75 It must be borne in mind that 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). The more distinctive the earlier mark, the greater the likelihood of confusion and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).
76 In the present case, it must be pointed out that, as has been held in paragraphs 22, 28, 33 and 34 above, the Board of Appeal was right in finding that the goods and services at issue were, in part, identical and, in part, similar. As has been stated in paragraphs 52 and 58 above, the Board of Appeal also found, without making any error of assessment, that the signs at issue were visually similar to an average degree and phonetically similar to a high degree. As regards the conceptual comparison of the signs at issue, as has been held in paragraph 67 above, that comparison is, for part of the relevant public, neutral, whereas, for another part of that public, those signs are conceptually similar to an average degree. In the light of the fact that the distinctiveness of the earlier mark is normal and the relevant public’s level of attention varies from average to high, and in the light of the interdependence between the similarity of the goods and services and the similarity of the marks, it must be held, in the context of a global assessment, that the Board of Appeal was right in finding that there was a likelihood of confusion.
77 In view of all of the foregoing considerations, the single plea must be rejected and, as a result, the action must be dismissed in its entirety.
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 form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders UniSkin ApS to pay the costs.
Delivered in open court in Luxembourg on 8 February 2023.