JUDGMENT OF THE GENERAL COURT (First Chamber)
11 October 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark CALIFORNIA Dreaming by Made in California – Earlier Benelux word mark CALIFORNIA DREAM – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑542/22,
Andres Carlos Martin Rodrigo, residing in Fuente el Saz de Jarama (Spain), represented by J. Donoso Romero, 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
Louis Vuitton Malletier, established in Paris (France), represented by J. Blanchard, lawyer,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni and M. Brkan (Rapporteur), 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 his action under Article 263 TFEU, the applicant, Mr Andres Carlos Martin Rodrigo, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2022 (Case R 2242/2021-5) (‘the contested decision’).
Background to the dispute
2 On 13 April 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 designated goods and services in, inter alia, Classes 3, 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, and corresponding, for each of those classes, to the following description:
– Class 3: ‘Cosmetics; make-up; make-up removing gels; soaps; essential oils; hair lotion; dentifrices; mascara; eyelid shadow; eyeshadow palettes; perfume; face packs; body masks; hair bleaching preparations; shampoo; shampoo; lip balms [non-medicated]; exfoliants; bath gel; cleansing gels; shampoo; dry shampoos; face and body creams; oils for cosmetic purposes; body oils [for cosmetic use]; bath oils for cosmetic purposes; cosmetic rouges; moisturising concentrates [cosmetic]; concealers; colour cosmetics for the skin; colour cosmetics for the eyes; nail cosmetics; nail polish; cosmetic preparations for the care of mouth and teeth; sun blocking preparations [cosmetics]; depilatory preparations’;
– Class 35: ‘Services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; Advertising and marketing; Business management; Business administration; Retail services in relation to cosmetics; wholesale services in relation to cosmetics; online retail services in relation to cosmetics; retail services in relation to makeup; wholesale services in relation to make-up; online retail services in relation to make-up; retail services in relation to make-up removing gels; wholesale services in relation to make-up removing gels; online retail services in relation to make-up removing gels; retail services in relation to soap; wholesale services in relation to soap; online retail services in relation to soap; retail services in relation to essential oils; wholesale services in relation to essential oils; online retail services in relation to ethereal oils; retail services in relation to hair lotion; wholesale services in relation to hair lotion; online retail services in relation to hair lotions; retail services in relation to dentifrice; wholesale services in relation to dentifrice; online retail services in relation to dentifrices; retail services in relation to mascara; wholesale services in relation to mascara; online retail services in relation to mascara; retail services in relation to eyelid shadow; wholesale services in relation to eyelid shadow; online retail services in relation to eyelid shadow; retailing of eyeshadow palettes; wholesaling of eyeshadow palettes; online retailing of eyeshadow palettes; retail services in relation to perfume; wholesale services in relation to perfume; online retail services in relation to perfumes; retail services in relation to face packs; wholesale services in relation to face packs; online retail services in relation to face packs; retail services in relation to body masks; wholesale services in relation to body masks; online retail services in relation to body masks; retail services in relation to hair bleaching preparations; wholesale services in relation to hair bleaching preparations; online retail services in relation to hair bleaching preparations; retail services in relation to shampoos; wholesale services in relation to shampoos; online retail services in relation to shampoos; retail services in relation to shampoos; wholesale services in relation to shampoos; online retail services in relation to shampoos; retail services in relation to lip balms [non-medicated]; wholesale services in relation to lip balms [non-medicated]; online retail services in relation to lip balms [non-medicated]; retail services in relation to exfoliants; wholesale services in relation to exfoliants; online retail services in relation to exfoliants; retail services in relation to bath gel; wholesale services in relation to bath gel; online retail services in relation to bath gel; retail services in relation to cleansing gels; wholesale services in relation to cleansing gels; online retail services in relation to cleansing gels; retail services in relation to shampoos; wholesale services in relation to shampoos; online retail services in relation to shampoos; retail services in relation to dry shampoos; wholesale services in relation to dry shampoos; online retail services in relation to dry shampoos; retail services in relation to face and body creams; wholesale services in relation to face and body creams; online retail services in relation to face and body creams; retail services in relation to oils for cosmetic purposes; wholesale services in relation to oils for cosmetic purposes; online retail services in relation to oils for cosmetic purposes; retail services in relation to body oils [for cosmetic use]; wholesale services in relation to body oils [for cosmetic use]; online retail services in relation to body oils [for cosmetic use]; retail services in relation to bath oils for cosmetic purposes; wholesale services in relation to bath oils for cosmetic purposes; online retail services in relation to bath oils for cosmetic purposes; retail services in relation to cosmetic rouges; wholesale services in relation to cosmetic rouges; online retail services in relation to cosmetic rouges; retail services in relation to moisturising concentrates [cosmetic]; wholesale services in relation to moisturising concentrates [cosmetic]; online retail services in relation to moisturising concentrates [cosmetic]; retail services in relation to concealers; wholesale services in relation to concealers; online retail services in relation to concealers; retail services in relation to colour cosmetics for the skin; wholesale services in relation to colour cosmetics for the skin; online retail services in relation to colour cosmetics for the skin; retail services in relation to colour cosmetics for the eyes; wholesale services in relation to colour cosmetics for the eyes; online retail services in relation to colour cosmetics for the eyes; retail services in relation to nail cosmetics; wholesale services in relation to nail cosmetics; online retail services in relation to nail cosmetics; retail services in relation to nail polish; wholesale services in relation to nail polish; online retail services in relation to nail varnish; retail services in relation to cosmetic preparations for the care of mouth and teeth; wholesale services in relation to cosmetic preparations for the care of mouth and teeth; online retail services in relation to cosmetic preparations for the care of mouth and teeth; retail services in relation to sun blocking preparations [cosmetics]; wholesale services in relation to sun blocking preparations [cosmetics]; online retail services in relation to sun blocking preparations [cosmetics]; retail services in relation to depilatory preparations; wholesale services in relation to depilatory preparations; online retail services in relation to depilatory preparations’;
– Class 44: ‘Human hygiene and beauty care; hygienic and beauty care, make-up services; beauty consultancy; beauty salons; beauty salons; services of a hair and beauty salon; nail care services; massage; aromatherapy services’.
4 On 10 September 2020, the intervener, Louis Vuitton Malletier, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to, inter alia, in paragraph 3 above.
5 The opposition was based, inter alia, on the earlier Benelux word mark CALIFORNIA DREAM, registered on 26 May 2020 under No 1412180, covering goods in Class 3 corresponding to the following description: ‘Perfumery products; perfumes; toilet water; scented water; cologne; air fragrancing; essential oils; room fragrance preparations; soap; perfumed soaps; shampoos; shower gels; bath gels; deodorants for personal use; perfumed body lotions and milks; perfumed body creams’.
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 10 November 2021, the Opposition Division upheld the opposition in part.
8 On 30 December 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, in so far as the opposition was upheld in respect of the goods and services in question.
9 By the contested decision, the Board of Appeal upheld the decision of the Opposition Division and dismissed the appeal on the ground that there was a likelihood of confusion on the part of the relevant Netherlands public in respect of the goods and services referred to in paragraph 3 above. It held that, in so far as the signs at issue shared their distinctive and dominant initial parts ‘california dream’, the differing elements were unable to outweigh the overall similarity of those signs.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition and grant the application for registration of the mark applied for in respect of all the goods and services in question;
– order EUIPO and the intervener to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in case an oral hearing is convened.
12 The intervener submits, in essence, that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The jurisdiction of the General Court
13 By his second head of claim, the applicant asks the Court to reject the opposition and grant registration of the mark applied for. Thus, that head of claim 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 ought to have taken, in accordance with the provisions of that regulation. The competent bodies of EUIPO do not 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. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to 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).
14 On the other hand, it is apparent from the second sentence of Article 71(1) of Regulation 2017/1001, that the Board of Appeal may annul the contested decision and exercise any power within the competence of the department which was responsible for the decision appealed, in the present case to rule on the opposition and reject it. That measure falls within the measures which may be taken by the Court in the exercise of its power to alter decisions, laid down by Article 72(3) of Regulation 2017/1001 (see, to that effect, judgment of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 25 and the case-law cited).
15 Consequently, the applicant’s second head of claim must be rejected in so far as it seeks to have the application for registration of the mark applied for granted on the ground of a lack of jurisdiction whereas the Court has jurisdiction to reject the opposition in the exercise of its power to alter judgments.
Substance
16 In support of the action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. He disputes the Board of Appeal’s assessment relating to the similarity of the goods and services in question and the similarity of the signs at issue.
17 EUIPO and the intervener dispute the applicant’s arguments.
18 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, or, in the case of Belgium, Luxembourg or the Netherlands, at the Benelux Office for Intellectual Property, with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
19 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. 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).
20 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).
21 In the present case, the Board of Appeal found that the relevant public consisted of both the general public and professionals in the Benelux whose level of attention was likely to vary from average to higher than average. Furthermore, it followed the Opposition Division’s approach of comparing the signs at issue from the perspective of the Netherlands public, whose level of knowledge of the English language enabled it to grasp the meaning of the basic English terms which compose those signs.
22 The parties do not dispute those findings.
23 It is in the light of those considerations that the Court must examine whether the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
The comparison of the goods and services in question
24 In the present case, the Board of Appeal upheld the Opposition Division’s assessment and found that the goods and services in question were either identical or similar to varying degrees to the goods covered by the earlier mark. Furthermore, it noted that the applicant had not disputed the assessment made by the Opposition Division in that regard before the Board of Appeal.
25 The applicant complains, first, that the Board of Appeal endorsed the Opposition Division’s incorrect findings without itself stating that the services in Classes 35 and 44 covered by the mark applied for were dissimilar to the goods in Class 3 covered by the earlier mark, as he had relied on in his response to the opposition.
26 Second, the applicant submits that there are similarities only between the goods in Class 3 covered by both the mark applied for and the earlier mark. In his view, the services in Class 44 covered by the mark applied for are not similar to the goods in Class 3 covered by the earlier mark because, in the absence of a connection between them, the relevant public is unlikely to attribute a common origin to them. He claims that the services in Class 35 covered by the mark applied for and the retail services are similar to the goods in Class 3 covered by the earlier mark only if they relate to goods in that class.
27 EUIPO and the intervener dispute the applicant’s arguments. In addition, the intervener claims that the applicant has not disputed the Opposition Division’s assessment of the similarity of the goods and services in question and is therefore no longer entitled to do so before the Court.
28 In the first place, it is necessary to examine the intervener’s claim that the applicant’s challenge to the comparison of the goods and services in question is, in essence, inadmissible.
29 In the present case, in the statement of reasons before the Board of Appeal, the applicant merely stated that, even if the goods and services were regarded as similar, the likelihood of confusion had to be assessed globally by reference to the perception of the relevant public and taking into account all the relevant factors.
30 It must therefore be stated, as EUIPO and the intervener did, that the Board of Appeal correctly found that the applicant had not disputed the Opposition Division’s assessment, given the absence of arguments in that regard.
31 However, it must also be borne in mind that, as the Court of Justice has held (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 57), by the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 20).
32 In that regard, it must be stated that opposition to the registration of an EU trade mark, where it is based on Article 8(1)(b) of Regulation 2017/1001, requires EUIPO to adjudicate on whether the goods and services covered by the marks at issue are identical or similar and whether those marks are identical or similar (judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 41; see also, judgment of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 21 and the case-law cited).
33 Consequently, the fact that the applicant did not dispute the similarity of the goods and services in question before the Board of Appeal cannot in any way divest EUIPO of the power to adjudicate on whether those goods and services covered by the marks at issue were identical or similar (see, to that effect, judgment of 13 September 2010, OFTEN, T‑292/08, EU:T:2010:399, paragraph 42 and the case-law cited). Likewise, therefore, that fact cannot deprive a party of the right to challenge before the Court, in the factual and legal context of the dispute before the Board of Appeal, the findings of that body on that point (see, to that effect, judgments of 18 October 2007, AMS v OHIM – Advanced Medical Services (AMS Advanced Medical Services), T‑425/03, EU:T:2007:311, paragraph 29 and the case-law cited, and of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 23 and the case-law cited).
34 Therefore, the arguments put forward by the applicant before the Court to dispute the comparison of the goods and services in question are admissible.
35 In the second place, it is necessary to examine, in the light of the applicant’s arguments, whether the Board of Appeal was right to uphold the Opposition Division’s findings in that the goods and services covered by the mark applied for are either identical or similar to varying degrees to the goods covered by the earlier mark.
36 In assessing the similarity of the goods or services in question, 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 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
37 First, the applicant erred in finding that the Board of Appeal had confined itself to endorsing the findings of the Opposition Division without assessing the similarity of the goods and services in question.
38 As is apparent from paragraph 24 of the contested decision, the Board of Appeal endorsed the Opposition Division’s findings that the goods and services in question were either identical or similar to varying degrees, referring to the reasons set out on pages 4 to 6 of the Opposition Division’s decision, which are summarised in paragraph 6 of the contested decision.
39 Therefore, it cannot be held that the Board of Appeal failed to assess the similarity of the goods and services in question.
40 Second, the applicant expressly acknowledges the similarities between the goods in Class 3 covered by the mark applied for and the goods in the same class covered by the earlier mark. Therefore, it does not dispute the findings of the Opposition Division, endorsed by the Board of Appeal, concerning those goods, which, in any event, were correctly found to be either identical or similar to varying degrees to ‘perfumes; essential oils; soaps; shampoos; bath gels; perfumed body creams’ covered by the earlier mark.
41 Third, as regards the services in Class 35 covered by the mark applied for, according to Article 33(7) of Regulation 2017/1001, goods and services are not to be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification.
42 In the present case, the Board of Appeal found that the services in Class 35 covered by the mark applied for concerned the same goods as those listed in Class 3 covered by that mark, the latter having been found to be identical or similar to varying degrees to the goods in Class 3 covered by the earlier mark. Consequently, all those services covered by the mark applied for were at least similar to a low degree to ‘perfumes; essential oils; soaps; shampoos; bath gels; perfumed body creams’ covered by the earlier mark.
43 In that regard, the applicant rightly acknowledges that the retail services relating to goods are similar to the goods in Class 3 covered by the earlier mark, where those services cover goods in that class (see, to that effect, judgments 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, and of 16 October 2013, El Corte Inglés v OHIM – Sohawon (fRee YOUR STYLe.), T‑282/12, not published, EU:T:2013:533, paragraph 37).
44 By contrast, by merely stating that the other types of services in Class 35 covered by the mark applied for are not similar to the goods covered by the earlier mark, the applicant does not put forward any evidence to support the conclusion that only retail services relating to the same goods in Class 3 as those covered by the earlier mark are similar to those goods, to the exclusion of the retail services in Class 35 and the online retail services covered by the mark applied for relating to those same goods in Class 3.
45 Nor does the applicant substantiate why he claims that the Board of Appeal erred in finding that the same principles specific to retail services applied to services rendered in connection with other types of services which consist exclusively of activities revolving around the actual sale of goods, such as wholesale services and online retail services.
46 It has been held that the relationship between the services provided in connection with the wholesaling, retailing and mail order sales and the goods covered by the earlier trade mark is close in the sense that the goods are indispensable to or, at the very least, important for the provision of those services, which are specifically provided when those goods are sold (see judgment of 20 March 2018, Grupo Osborne v EUIPO – Ostermann (DONTORO dog friendship), T‑390/16, not published, EU:T:2018:156, paragraph 30 and the case-law cited).
47 Therefore, the applicant cannot validly call into question the Board of Appeal’s finding that the services in Class 35 covered by the mark applied for are at least similar to a low degree to ‘perfumes; essential oils; soaps; shampoos; bath gels; perfumed body creams’ covered by the earlier mark, given that the goods concerned by those services are generally offered for sale in the same places as the goods covered by the earlier mark.
48 Fourth, it should be noted that the applicant merely asserts, in essence, that the services in Class 44 covered by the mark applied for are not complementary to the goods covered by the earlier mark.
49 The Board of Appeal was right to find that the ‘aromatherapy services’ covered by the mark applied for were similar to the ‘essential oils’ covered by the earlier mark. It rightly noted that those goods were required for the provision of those services, meaning that they were complementary, and that those goods and services had the same purpose, the same end users and the same distribution channels.
50 Similarly, the Board of Appeal correctly held that the other services in Class 44 covered by the mark applied for were at least similar to a low degree to the ‘perfumed body creams’ covered by the earlier mark. The services of ‘human hygiene and beauty care; hygienic and beauty care; make-up services; beauty consultancy; beauty salons; beauty salons; services of a hair and beauty salon; nail care services; massage’, which relate to different beauty or body care services, have the same purpose, namely to enhance the body’s appearance, the same end users and the same distribution channels as the goods covered by the earlier mark, given that the establishments providing those services may also offer cosmetics, such as ‘perfumed body creams’. Furthermore, it rightly found that there was a complementary connection between ‘perfumed body creams’ and certain services covered by the mark applied for, such as ‘beauty consultancy’, ‘shampoos’ and ‘services of a hair … salon’ or even between ‘soaps’ and ‘hygienic and beauty care’.
51 In the light of the foregoing, the Board of Appeal did not make an error of assessment in finding that the goods and services in question were either identical or similar to varying degrees to the goods covered by the earlier mark.
The comparison of the signs
52 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).
53 In the present case, the earlier mark is a word mark composed of the terms ‘california’ and ‘dream’.
54 The mark applied for is a figurative mark composed of three lines of word elements. The first line contains the word ‘california’, written in bold in a standard font in elongated black uppercase letters. The second line contains the word ‘dreaming’, slightly smaller in size and written in a stylised handwritten font in black italic letters. The third line contains the word element ‘by made in california’, even smaller in size and written in a standard font in black letters. Thus, in view of its size and position, that third word element occupies a secondary position in the mark applied for.
– Visual similarity
55 In the contested decision, the Board of Appeal found, first of all, that the signs at issue had in common their first word ‘california’ and the first part ‘dream’ of their second word, with the result that the earlier mark was included in its entirety in the mark applied for. Next, noting that the differences between those signs were limited to the ending ‘ing’ of the second word of the mark applied for, the residual word element ‘by made in california’ and the slight ornamental stylisation of the word elements of the mark applied for, it found that the impact of those elements was insufficient to offset the overall visual similarity resulting from the identity of the initial part ‘california dream’. Therefore, it concluded that those signs were similar to at least an average degree.
56 The applicant claims that the signs at issue are visually different. He claims that the graphic element of the mark applied for, which uses three different types of lettering and word elements spread over three lines, is distinctive and dominant in the overall impression created by that mark. According to the applicant, the relevant public will more easily remember the visual composition of that mark, which is not similar to that of the earlier mark.
57 EUIPO and the intervener dispute the applicant’s arguments.
58 Contrary to the applicant’s assertion, the distinctive and dominant element of the mark applied for cannot consist solely of the visual composition of that sign, consisting of three lines of word elements written in different types of lettering.
59 In that regard, it must be borne in mind that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter because the average consumer will more easily refer to the goods in question by quoting the name of the mark than by describing its figurative element (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
60 It must be stated, as the Board of Appeal did, that the word elements of the mark applied for are only slightly stylised and that displaying them on three lines is unlikely to hold the attention of the relevant public. On the contrary, the graphic aspect of that mark is purely ornamental and cannot have a significant impact on the overall impression produced by that mark.
61 The Board of Appeal therefore did not make an error of assessment in finding that the signs at issue were similar to an average degree.
– Phonetic similarity
62 In the contested decision, the Board of Appeal found that the pronunciation of the signs at issue coincided in view of their initial part ‘california dream’ and differed in view of the ending ‘ing’ of the second word of the mark applied for and the word element ‘by made in california’ of that mark. Therefore, it found that a non-negligible part of the relevant public would pronounce that mark as ‘california dreaming’, with the result that those signs were then phonetically highly similar. It added that those signs were at least similar to an average degree when the mark in question was pronounced in its entirety.
63 The applicant submits, first of all, that the term ‘dream’ in the earlier trade mark differs phonetically from the term ‘dreaming’ of the mark applied for. The pronunciation of the term ‘dreaming’ is broken down into two syllables, namely ‘drea’ and ‘ming’, whereas the earlier mark is pronounced as one syllable, namely ‘dream’. Next, the applicant claims that the mark applied for is read in its entirety, with the result that the word element ‘by made in california’ is still pronounced despite its smaller size. Consequently, the signs at issue, which coincide only in their term ‘california’, are, in its view, similar to a low degree.
64 EUIPO and the intervener dispute the applicant’s arguments.
65 It should be noted that, even though the word element ‘dream’ of the earlier mark and the word element ‘dreaming’ of the mark applied for differ in the ending ‘ing’ and the mark applied for also contains the word element ‘by made in california’, the fact remains that the pronunciation of the signs at issue coincides in view of their initial part ‘california dream’.
66 In that regard, it has been held that signs are phonetically similar where the earlier mark is included in its entirety in the mark applied for (see judgment of 2 February 2012, Almunia Textil v OHIM – FIBA-Europe (EuroBasket), T‑596/10, not published, EU:T:2012:52, paragraph 38 and the case-law cited). That is the case here.
67 Furthermore, although the additional word element ‘by made in california’ of the mark applied for remains perceptible by the relevant public, the fact remains that, in addition to the natural tendency of consumers to abbreviate long signs (see judgment of 4 May 2016, Bodegas Williams & Humbert v EUIPO – Central Hisumer (BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN), T‑193/15, not published, EU:T:2016:266, paragraph 60 and the case-law cited), the relevant public will probably not pronounce that word element, given its smaller size and secondary position in the sign.
68 Consequently, the Board of Appeal was right to find that the signs at issue were very similar for a non-negligible part of the relevant public and similar to an average degree if that public were to pronounce the mark applied for in its entirety.
– Conceptual similarity
69 In the contested decision, the Board of Appeal found that, even if the word element ‘by made in california’ introduced the indication of business origin as an additional concept, the word element ‘california dream’ of the earlier mark and the word element ‘california dream’ of the mark applied for conveyed the same concept. According to the Board of Appeal, those word elements conveyed the concept of ‘dreaming of California’ and the underlying meaning or meanings usually associated with that concept, such as a particular mindset focused on feeling good or optimistic about the future. Consequently, it concluded that the signs at issue were conceptually similar to a high degree.
70 The applicant submits that the word element ‘california dreaming’ of the mark applied for would be perceived as an allusion to the popular song ‘California Dreaming’ or to the US film ‘California Dreaming’, whereas the earlier mark evoked, for the relevant public, the California Gold Rush of the mid-19th century. He adds that the word element ‘by made in california’ of the mark applied for will be perceived as an indication of business origin, whereas the word element ‘california dreaming’ of that mark will be perceived as a particular experience offered by ‘made in california’. Therefore, the signs at issue are not, in his view, conceptually similar.
71 EUIPO and the intervener dispute the applicant’s arguments.
72 According to the case-law, conceptual similarity means that the signs at issue convey analogous semantic content (see, to that effect, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
73 In the present case, it is necessary to uphold the Board of Appeal’s finding that, notwithstanding the fact that the word element ‘california dream’ of the earlier mark contains the word ‘dream’, whereas the word element ‘california dreaming’ in the mark applied for contains the present participle of the verb ‘to dream’, those two word elements refer to the concept of ‘dream’ or to the fact of ‘dreaming of California’.
74 Furthermore, although the word element ‘by made in california’ of the mark applied for may refer to an additional concept of an indication of business origin, as the applicant also submits, the fact remains that, in view of their inherent semantic content, the elements ‘california dream’ and ‘california dreaming’ of the signs at issue refer to the same concept.
75 Furthermore, irrespective of whether the relevant public may also perceive the word element ‘california dream’ of the earlier mark as a reference to the California Gold Rush of the mid-19th century and the word element ‘california dreaming’ of the mark applied for as a reference to a song or to a particular film, as the applicant claims, it is sufficient, according to the case-law, for there to be conceptual similarity in one of the meanings of the signs at issue (see, to that effect, judgment of 13 April 2011, United States Polo Association v OHIM – Textiles CMG (U.S. POLO ASSN.), T‑228/09, not published, EU:T:2011:170, paragraph 47, and of 10 March 2021, Hauz 1929 v EUIPO – Houzz (HAUZ LONDON), T‑66/20, not published, EU:T:2021:125, paragraph 45).
76 In any event, it must be stated, as observed by EUIPO and the intervener, that the applicant has not shown that the relevant public would perceive the signs at issue as evoking that gold rush, song or film respectively and, a fortiori, has not shown that that perception will be so strong in the mind of that public that any conceptual similarity resulting from the presence of the words ‘california’ and ‘dream’ or ‘dreaming’ can reasonably be ruled out.
77 Consequently, the Board of Appeal did not make any error of assessment in finding that the signs at issue were conceptually similar to a high degree.
The likelihood of confusion
78 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).
79 In the contested decision, the Board of Appeal found that, in view of the similarity of the goods and services in question and the similarity of the signs at issue, there was a likelihood of confusion on the part of the relevant Netherlands public. It took the view that the differences between those signs were not such as to outweigh the overall similarity resulting from the fact that those signs shared their distinctive and dominant initial parts ‘california dream’.
80 The applicant, recalling the case-law which holds that a global assessment of the likelihood of confusion must be based on the overall impression created by the marks at issue, with each considered as a whole, submits that the difference between the signs at issue should be sufficient to preclude a likelihood of confusion.
81 EUIPO and the intervener dispute the applicant’s arguments.
82 It should be noted that the applicant merely points out that there is no similarity between the signs at issue without further substantiating his argument regarding the global assessment of the likelihood of confusion.
83 In so far as the applicant has not succeeded in calling into question the finding that there are various degrees of similarity between the goods and services in question (see paragraph 51 above) and between the signs at issue (see paragraphs 61, 68 and 77 above), the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
84 In the light of all of the foregoing considerations, since the single plea in law relied on by the applicant in support of his claims must be rejected, the action must be dismissed in its entirety.
Costs
85 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.
86 Since the applicant has been unsuccessful, he must be ordered to bear his own costs and to pay those of the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, it must, since no hearing has been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Andres Carlos Martin Rodrigo to bear his own costs and to pay those incurred by Louis Vuitton Malletier;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Spielmann | Mastroianni | Brkan |
Delivered in open court in Luxembourg on 11 October 2023.
V. Di Bucci | | S. Papasavvas |